Cho & Partners
You are experienced in practising IP law in both South Korea and the United States. What are the key differences for brand owners protecting trademarks in these jurisdictions?
In my opinion, the tools and options available to brand owners are quite different. Litigation is a good example. While the costs of litigation are significantly lower in South Korea than in the United States, thereby making it a more viable option in many situations, the processes and procedures in South Korea are less robust, particularly with respect to discovery and evidence gathering. This in turn greatly affects preparation strategies and the expected goals of litigation.
As a specialist in anti-counterfeiting matters, how has the fight against fakes in South Korea changed for rights holders in the past decade, and what improvements can still be made?
The counterfeiting situation in South Korea has improved steadily over the past 20 years and there is clearly less visibility – both in physical markets and on mainstream online platforms. That said, there is still a sizeable trade in counterfeit goods in the country. These are moving to more segmented venues and platforms, requiring increasing efforts from rights holders to address. For long-term improvement, increasing the criminal penalties for counterfeiting activities would help to further enhance deterrence.
What challenges are being raised by clients most frequently at the moment, and how can these be tackled effectively?
One concern that clients frequently raise is the lack of access to the personal details of counterfeiters, as this makes follow-up enforcement difficult. Because of the strict personal information protection landscape in South Korea, it is often difficult to obtain counterfeiters’ details from the government agencies or online platforms. It would be helpful if details could be shared with the rights holder, since it stands in the position of the victim when its brand has been counterfeited.
What qualities make for an elite-level IP attorney, and how can they be better developed?
In addition to basic legal competence, I believe that the two most important qualities are pragmatism and creativity. Ultimately, it is our goal to solve the client’s problem in the best way possible (eg, through legal results and business impact). Therefore, thinking outside the box to find non-obvious solutions is an advantage. Nothing is more important to develop this than having a combination of diverse experience and the right clients – ones that have the resources and the will to try new things.
Finally, in what ways do you think the brand protection landscape will change globally in the next five years, and how should rights holders prepare?
While I am optimistic that the situation will continue to improve, experience has shown that counterfeiters are resourceful and always find new ways to maintain business. For example, a large number of counterfeiters have migrated from mainstream e-commerce platforms to individual blogs and social media. Large shipping containers full of counterfeit goods are becoming rarer, while small-quantity postal shipments have increased. As such, a sustained enforcement effort will require vigilance and nimble strategies to adjust to whatever changes occur.