Enactment of EU-Korea Free Trade Agreement triggers amendments to IP laws

The EU-Korea Free Trade Agreement (FTA) came into effect on July 1 2011. As a result, a number of acts that directly relate to intellectual property have been amended.
First, based on the new FTA, 162 European geographical indications (GIs) can now be protected in South Korea - these include Chianti, Toscana, Cognac, Scotch whisky, Gorgonzola and Feta. The Trademark Act prevents the registration of trademarks that are similar or identical to GIs for wines, spirits and agricultural products protected under bilateral or multilateral FTAs with South Korea.
Second, under the amended Unfair Competition Prevention and Trade Secret Protection Act, a third party may not use a protected GI:
  • for any other purpose aside from identifying the true origin;
  • in translated or transliterated form; or
  • accompanied by expressions such as 'kind', 'type', 'style', 'imitation' and so on for goods that do not originate from the place indicated by the GI in question.
This rule does not apply if prior use of the mark began before July 1 2011, and the mark has become recognised by consumers.
Third, the definition of 'working' was amended in the Design Protection Act to include acts of 'exporting', in addition to manufacturing, using, assigning, leasing, importing or offering for assignment or lease the article to which the design has been applied. Thus, the act of exporting itself can be deemed design infringement if it has not been authorised by the owner.
Fourth, the term of copyright protection under the Copyright Act has been extended to:
  • 70 years after the author's death; or
  • 70 years from the date of publication.
The amended provision will take effect on July 1 2013, two years after the effective date of the EU-Korea FTA.
The act grants public performance rights to broadcasters for broadcast performances in publicly accessible places, where admission fees are collected from the audience. Further, the act sets forth the exemptions for fair use by online service providers, including:
  • mere conduit;
  • caching;
  • hosting; and
  • information search.
The act also clarifies the definition of 'technical protection measures' to the effect of encompassing the access-control technical protection measures and enumerates the grounds for the exceptions to the prohibition against circumvention of technical protection measures.
Fifth, the amended Customs Act expands the scope of border protection to prohibit the import or export of goods that infringe GIs protected under a treaty or agreement, patent registration or design registration, in addition to trademarks and copyrights. The customs protection for GIs came into effect on July 1 2011; the protection for patents and designs will come into effect two years later on July 1 2013.
Finally,the Act on Investigation of Unfair International Trade Practices and Remedy against Injury to Industry regulates infringing activity, namely:
  • the distribution, import or sale of infringing goods; and
  • the export or manufacture for export of goods that infringe GIs protected under treaties or agreements.
Such activities are subject to legal remedy before the Korea Trade Commission (KTC). Thus, as of July 1 2011, it is possible to seek legal remedy based on the GIs protected under the EU-Korea FTA before the KTC.
Jason J Lee, Kim & Chang, Seoul

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