Proposed amendments to IP and unfair competition laws

Korea and the European Union concluded negotiations for a bilateral free trade agreement on July 13 2009 and the two parties formally signed the agreement on October 5 2010. Both sides have agreed to refer it to their respective parliaments for consent, and the agreement will then come into effect on July 1 2011. In June 2010 legislation was proposed to amend Korea's IP and unfair competition laws in order to conform with the agreement. The proposed amendments will need to be ratified by Parliament. Some of the major proposed changes are highlighted below.

First, the current Trademark Act proscribes the registration of a trademark designating wines or spirits, if it is composed entirely or partially of a geographical indication with regard to the origin of the wines or spirits from a member nation of the World Trade Organisation.

The proposed amendment to the act expands this provision further by preventing the registration of trademarks that are similar or identical to geographical indications for wines, spirits and agricultural products protected under the agreement. Specifically, a mark that is similar or identical to a geographical indication that is protected under a treaty with Korea for identical goods (or what could be seen as an identical good) will not be granted registration.

Second, while the amendments to the act regulate the registration of geographical indications, the amendments to the Unfair Competition Prevention and Trade Secret Protection Act regulate the unauthorised use of geographical indications identified in the annex of the agreement.

According to the proposed changes, a third party may not use geographical indications:
  • for any other purpose aside from identifying true origin;
  • that are translated or transliterated; or
  • that are accompanied by expressions such as 'kind', 'type', 'style', 'imitation' or the like on goods that do not originate from the place indicated by the geographical indication in question.
In addition, a third party may not assign or deliver products bearing the above-mentioned indications or display, import or export such goods for the purpose of assignment or delivery. The owner of a geographical indication can seek injunctions, damages or other civil remedies, such as the destruction of infringing products, or take necessary measures to restore its business reputation.

However, a third party may continue to use its mark even if it is identical or similar to the geographical indication on identical goods (or what could be seen as identical goods), provided that the prior user started to use its mark, without any unfair competitive intent, before protection commenced for the geographical indication in Korea, and such use resulted in consumer recognition of the mark as belonging to a specific entity.

Finally, the current Design Protection Act defines the 'working of a design' as manufacturing, using, assigning, leasing, importing or offering for assignment or lease an article to which a design has been applied. A proposal has been submitted to include 'exporting' in this definition.

Joo-Young Moon and Nayoung Kim, Kim & Chang, Seoul

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