South Korea

In South Korea, amendments to the Unfair Competition Prevention and Trade Secret Protection Act – which took effect in July 2018 – did away with the narrow interpretation of the act to afford protection to trade dress. The Design Protection Act was also revised, extending the novelty grace period to 12 months. In other news, non-use cancellation actions experienced a substantial increase following the amendment of the Trademark Act in 2016. On the enforcement side, the Korean Intellectual Property Office and the courts are taking a more favourable stance towards bona fide rights holders.

Firms: enforcement and litigation

  • Cho & Partners 
  • Kim & Chang
  • Yulchon LLC
  • Bae, Kim & Lee LLC
  • Lee & Ko 
  • Yoon & Yang LLC
  • Darae Law & IP Firm
  • Lee International IP & Law Group

Firms: prosecution and strategy

  • Cho & Partners 
  • Kim & Chang
  • Bae, Kim & Lee LLC
  • FirstLaw PC
  • Lee International IP & Law Group
  • Yoon & Yang LLC
  • YOU ME Patent & Law Firm
  • YP Lee Mock & Partners
  • KBK & Associates
  • Lee & Ko 
  • Wooin Patent & Law Firm
  • YS Chang & Associates

Bae, Kim & Lee LLC

The 12-partner IP group at Bae, Kim & Lee always stays ahead of the competition and is “in great form”. The recent elevation of homegrown talent Hwan Kim Chang to the partnership and the recruitment of former Patent Court judge and Supreme Court IP research judge Ki Jooon Kang bear testament to the firm’s foresight and determination to succeed. When it comes to trademark work, the firm serves up a forward-thinking prosecution advisory, registration and trademark watch service supported by a “formidable” contentious unit. Executing multi-jurisdictional, large-scale mandates is something that the country’s 2nd largest law firm does remarkably well; for example, Bae, Kim & Lee bears the global branding burden for Samsung Electronics. Instead of running a simple registrations practice, the firm’s prosecution unit is distinguished by its steadfast investment in the success of its clients; its involvement often begins at the nascent stages of a brand. Recently, Jeonghyun Kim and Jihyun Kim promptly came up with an alternative trademark when Hyundai Home Shopping Network Corporation’s CIENTO mark was rejected by the Korean IP Office (KIPO). Having studied design and worked in the fashion industry, Jeonghyun Kim heads up the trademark and design practice with verve, while Jihyun Kim captains the IP legal team. She is a repository of trust for both Korean and foreign brand owners. Thanks to its own foreign attorneys and Chinese practice group, the firm ably tackles contentious mandates regardless of whether the dispute is in Korea or overseas; for example, recently it has been involved in Chinese and US litigation matters. Like Jihyun Kim, Taeck Soo Kwon is a former judge. He is an eminent figure in the Korean IP litigation community.

Cho & Partners 

The vast majority of clients that Cho & Partners represent are “big-name” foreign multinationals in the automotive, fashion, retail, food and beverage and IT sectors. Best known for its “consistent track record in masterminding wins to achieve the business goals of clients”, the “perennially responsive” enforcement practice is the firm’s crown jewel. Innovative to the core, the set has been called in to enforce Croc’s three-dimensional (3D) trademark and the dazzling use of market survey evidence to obtain favourable results is a signature of the firm; it also runs online and physical enforcement programmes for a long list of household names – including Apple – whose programme has been recently focusing on unauthorised iPhone repair shops using counterfeit parts and components. The prosecution practice is not the biggest, but still commands a respectable client base of 700 clients that entrust 6,000 applications with the firm at any one point. As the only Korean firm to have secured a pure 3D handbag trademark, it attracts clients with a fine appreciation of the set’s technical dexterity. The “pre-eminent” Tae-Yeon Cho and Ik-Hyun Seo jointly oversee this practice and its “team of gifted and excellent associates”. Cho has accumulated many landmark decisions throughout his 30-year career as a formidable IP litigator. His partner Seo is a “creative and meticulous problem solver who draws on his experience practising in the United States and Korea to offer astute insights into the needs of foreign brand owners”; one US technology client says he is “instrumental in the protection of their key brands”.

Darae Law & IP Firm

Founded by two trailblazing attorneys who first occupied the Patent Court bench, Darae Law & IP Firm is a firm fixture on the Korean IP scene. Providing an A-to-Z trademark service, it is most renowned for the representation of Korean clients in prosecution matters. Having served as a trademark and design examiner at the KIPO, Kook-Hyun Cho is an important contact for prosecution instructions.

FirstLaw PC

With a team of 11 professionals, FirstLaw moves nimbly and assuredly to handle an assortment of trademark and design work originating from Korea and abroad. The management of large portfolios is a forte of the firm, given the diligence and responsiveness of its practitioners. FirstLaw attorneys receive regular training in a multitude of Asian and European languages, which is incredibly useful for the counselling of international clients on brand adoption decisions. Fluent in English and Japanese, Jeong Won Lee is a consummate trademark counsel who guides brand owners throughout the brand lifecycle. “An active member at the Asian Patent Attorney Association’s Trademark Committee, she frequently shares her knowledge with the industry.”

KBK & Associates

Renowned for its trademark practice among Korean peers, KBK & Associates garners excellent client feedback from high-ranking foreign associates and thus earns a place in this year’s WTR 1000. “KBK & Associates already enjoys a substantial domestic client base, nevertheless it has grand ambitions to attract more inbound work. This is coming to fruition as the firm rises to prominence in the prosecution space, evidenced by its awe-inspiring representation of LG Electronics and other LG divisions, which the firm services spectacularly well.” The portfolios the side deals with are sprawling and complex. A distinguished figure in Korean intellectual property, In-Gyung Baek is not just experienced but also incredibly approachable and helpful.

Kim & Chang

South Korea’s most distinguished law firm, the “highly successful” Kim & Chang sets the benchmark in service standards with its excellent craftsmanship and lightning-fast response times. The team also attracts effusive praise for its stability and “consistency in providing prompt and pertinent advice in excellent English that meets client needs and budgets”. Jay (Young-June) Yang heads the IP and entertainment groups with aplomb. “Highly responsive, he is easy to work with and his advice is always pragmatic. Always up-to-date with the latest court decisions, he possesses a phenomenal gift for distilling complex issues into simple language”. His colleague Ann Nam-Yeon Kwon has been a repository of trust for top international brands such as Apple, LVMH and Hermes for more than two decades. “She is often sought after because she prioritises clients.” One of the professionals consulted by the KIPO on the amendment of the Trademark Act from 2004 to 2010, Sung-Nam Kim frequently crafts arguments that lead to successful outcomes in complex administrative proceedings. Recently, she teamed up with Alex Hyon Cho to represent an originator pharmaceutical company and successfully thwarted a generic company from registering a trademark similar to his client’s. Qualified in California, Cho forms an integral part of the firm’s legion of foreign attorneys alongside Californian Jason Lee and Quebecois Alexandra Bélec; they advise clients on the full spectrum of trademark matters.

Lee & Ko 

Lee & Ko turns heads with its well-formed trademark offering characterised by “top-notch responsiveness and pragmatism”. Its headcount of IP professionals stands at 75, having recently been boosted by the arrival of almost 20 new US and Korean-qualified attorneys. The prosecution unit – although it is relatively new – does not lack for quality and secures rights for brand owners in over 50 countries with dexterity. With extensive experience enforcing and litigating patent matters, the firm does not disappoint on the trademark front; it is currently handling a slew of litigations involving the newly enacted Unfair Competition Act and Vera Eun Woo Lee is handling one of them. She is a courtroom sharpshooter and anti-counterfeiting ace. Jae Hoon Kim leads the squad by example; research respondents laud his speedy response times and “thorough and thoughtful approach to trademark work”. “He also communicates with great clarity.” Un Ho Kim draws on his 15-year experience on the IP bench at the Seoul High Court and Supreme Court to tackle challenging mandates with poise. Steeped in technology transfer work, Sun Chang is the set’s licensing guru.

Lee International IP & Law Group

Known for the prodigious number of trademark applications it files every year, Lee International’s “large and strong” team of US and Korean-qualified trademark professionals makes light work of even the most complicated and large-scale filing programmes. The prosecution practice is the jewel in the Lee crown, but the firm offers an all-encompassing trademark service. Young-Hwan Na is one of the team’s most recognisable names. He draws on over four decades of IP wisdom. Japanese speaker Seo-Young Im prosecutes trademarks with alacrity, but will also fight tooth and nail in court if needed.

Wooin Patent & Law Firm

Wooin Patent & Law Firm is a “small but highly-acclaimed trademark outfit. One of the most popular firms among Korean companies, it is renowned for its trademark prosecution practice and wealth of experience dealing with complex prosecution matters. Its attorneys are experts in interpreting trademark law and the enforcement practice is buoyed by a steady stream of work.” A famous figure among Korean peers, Sung-Woo Choi’s is known as the author of numerous key trademark texts and for his engagement in a variety of KIPO and industry associations.

Yoon & Yang LLC

The trademark squad at full-service law firm Yoon & Yang comprises three partners – Ted Kwon, Doug Jay Lee and Young Joo Song – a formidable team that acquires, protects and monetises intellectual property to spectacular effect. The prosecution practice is in great form; the trio recently prevailed in opposition proceedings on behalf of MCM and Reebok and also recorded a success in appealing a rejected trademark application at the Patent Court. Ted Kwon heads up the trademark practice and provides clients with time-tested advice on portfolio management and trademark disputes. Doug Jay Lee is the firm’s managing partner and serves as a commissioner to the KIPO’s Trademark Policy Advisory Committee and IP Rights Dispute Resolution Centre. Trademark and domain name maven Young Joo Song is known for her client-oriented approach and excellent communication skills in English, Chinese and Korean.

YOU ME Patent & Law Firm

A stalwart on the Korean IP landscape, YOU ME serve up the full spectrum of trademark service. With dedicated international, Chinese and Japanese teams in place, rights holders from around the world make use of its excellent trademark prosecution practice. Opportunities for commercialisation are never missed thanks to the team’s business-focused approach to protecting intellectual property. Sunghwan Kim and Kyungsook Lee are the names to note.

YP Lee Mock & Partners

A titan of an IP firm with over 300 IP professionals, YP Lee Mock & Partners is a force to be reckoned with on the trademark front, especially when it comes to the fashion and cosmetics industries. The side operates a substantial prosecution practice and has recently diversified its offering by building up a litigation arm consisting of attorneys at law and trademark and patent attorneys. Blending technical acumen with astute litigation tactics, the YP Lee trademark squad recently worked its magic for a well-known fashion house by persuading a counterparty to destroy infringing goods following negotiations which lasted multiple months. Intimately familiar with all forms of intellectual property, Younggi Hong knows all about maximising the value of IP portfolios. A trademark policy adviser to the KIPO, Yong Lee is also an authority on domain name disputes. A fluent German speaker who studied IP law in Munich, he is a key contact for German clients. Yoon-Kyung Cho’s understanding of European cultures is particularly appreciated by her clients – including a slew of fashion houses.

YS Chang & Associates

“Commanding a significant market share in the trademark prosecution market,” clients of YS Chang & Associates are in good hands. The firm is meticulous in the maintenance and renewal of existing marks and conducts thorough searches on behalf of its clients; its trademark service also extends to the resolution of intractable disputes. Sang-Bae Ahn and Jung-Yeon Choe are key contacts.

Yulchon LLC

The 29-strong IP team at contentious powerhouse Yulchon LLC has 66 years of bench experience combined. Replete with an investigations team, on-premises high-tech training and 22 attorneys at law, the firm is often called on to tackle high-stakes litigations. Making use of the results from a comparative study on unfair competition legislation in Korea and abroad, the set broke new ground representing Kumkang Shoes in a lawsuit against Regal Corporation by successfully dismissing unfair competition allegations. The mastermind behind this case was Dong Soo Han. An external adviser to the Korean Intellectual Property Tribunal on Examination and Quality Evaluation, he is a former court judge who has written opinions prescribing the legal criteria and tests in landmark IP cases. Cheol Hwan Kim is another former judge; he also serves as chair of the Korea Patent Law Society. With 20 years of experience on the bench, IP practice leader Jeong Yeol Choe taught many of the country’s judges and is an authority on commercial arbitration.

Other recommended experts

Clients of Myung-Shin & Partners have ready access to Myung-Shin Kim’s 46 years of trademark know-how. Young-Chol Kim at Kim, Choi & Lim provides “prompt, comprehensive and cost-effective advice”. Former trademark examiner Sang-Yong Lee plies his trade at Yoon & Lee International Patent & Law Firm. A senior IP statesman, Ho-Hyun Nahm is the face of Barun IP & Law.

Individuals: anti-counterfeiting

Individuals: enforcement and litigation

  • Tae-Yeon Cho - Cho & Partners 
  • Jeong Yeol Choe - Yulchon LLC
  • Jae Hoon Kim - Lee & Ko
  • Ik-Hyun Seo - Cho & Partners 
  • Jay (Young-June) Yang - Kim & Chang
  • Alexandra Bélec - Kim & Chang
  • Sun Chang - Lee & Ko
  • Alex Hyon Cho - Kim & Chang
  • Dong Soo Han - Yulchon LLC
  • Jihyun Kim - Bae, Kim & Lee LLC
  • Myung-Shin Kim - Myung-Shin & Partners
  • Sung-Nam Kim - Kim & Chang
  • Un Ho Kim - Lee & Ko
  • Young-Chol Kim - Kim, Choi & Lim
  • Ann Nam-Yeon Kwon - Kim & Chang
  • Taeck Soo Kwon - Bae, Kim & Lee LLC
  • Vera Eun Woo Lee - Lee & Ko
  • Young-Hwan Na - Lee International IP & Law Group
  • Young Joo Song - Yoon & Yang LLC

Individuals: prosecution and strategy

  • Sung-Nam Kim - Kim & Chang
  • S Ted Kwon - Yoon & Yang LLC
  • Doug Jay Lee - Yoon & Yang LLC
  • Jeonwon Lee - FirstLaw PC
  • Ho-Hyun Nahm - Barun IP & Law
  • Ik-Hyun Seo - Cho & Partners 
  • In-Gyung Baek - KBK & Associates
  • Alexandra Bélec - Kim & Chang
  • Yoon-Kyung Cho - YP Lee Mock & Partners
  • Sung-Woo Choi - Wooin Patent & Law Firm
  • Younggi Hong - YP Lee Mock & Partners
  • Seo-Young Im - Lee International IP & Law Group
  • Jeonghyun Kim - Bae, Kim & Lee LLC
  • Myung-Shin Kim - Myung-Shin & Partners
  • Nayoung Kim - Kim & Chang
  • Sunghwan Kim - YOU ME Patent & Law Firm
  • S Yong Lee - YP Lee Mock & Partners
  • Sang-Yong Lee - Yoon & Lee International Patent & Law Firm
  • Young Joo Song - Yoon & Yang LLC
  • Jay (Young-June) Yang - Kim & Chang