Trademark Act to be amended following Korea-US FTA

Proposed amendments to the Trademark Act have been submitted to the National Assembly and are awaiting enactment.

The United States and the Republic of Korea - the United States' seventh-largest trading partner - successfully reached a historic free trade agreement (FTA) in April 2007. The FTA represents a milestone in elevating the relationship between the two countries to a higher level and has had a far-reaching impact on the Korean economy.

As the economy is increasingly knowledge driven, intellectual property was one of the key considerations in the FTA. Clauses of the FTA provide for high standards of protection and enforcement of IP rights - including trademarks, copyrights and patents - consistent with US standards.

Following the conclusion of the FTA, proposed amendment to the Trademark Act were put before the National Assembly on August 3 2007.

The proposals are as follows:

• Non-traditional trademarks will now include sound and smell marks. The United States has long recognized sound and smell marks (eg, the roaring of a lion at the start of MGM films, the Intel jingle sound, the yodel of Yahoo! and the distinctive lemon scent of laser printer toners). Under the proposed bill, sounds and smells that can be represented graphically by symbols, figures or characters may be protected. Several issues ranging from sample submission, publication and registration to maintenance must now be examined.
  
  
• It will be possible to register certification marks. A 'certification mark' shall be defined as a symbol used by a person other than its owner to certify the quality, regional origin, mode of manufacture, distribution, accuracy or other characteristics of the person's goods or services.
  
  
• It will no longer be necessary to register exclusive licensing agreements with the Korea Intellectual Property Office for these to be effective.
  
  
• During the negotiations for the FTA, the Unites States requested that Korea adopt a statutory damages system to deter infringers. Under the proposal, rights holders will be compensated up to a certain amount; they will be able to choose the amount of compensation between the actual loss suffered and the amount of damages calculated by the court.
  
  
• Courts will be able to issue orders to protect the confidentiality of trade secrets during proceedings.

Yoon Bae Kim, Kims and Lees, Seoul