The owner of an unregistered mark which has become well-known in Korea may take action against counterfeiters on the grounds of their violation of the Unfair Competition Act, but such an action usually takes longer and entails more expense than an action on the basis of trademark rights under the Trademark Act, since in an unfair competition action the owner must demonstrate the well-known status of his mark. Furthermore, if the counterfeiter has already obtained his own trademark registration, it is generally understood that the owner will be unable to prevail in an unfair competition action. Moreover, the counterfeiter could take action against the owner on the basis of his registered trademark right unless and until such trademark registration has been invalidated or canceled. Marks which are identical with or similar to another person's mark well-known in Korea cannot be registered, but such marks are sometimes registered because the standards for the determination of either the familiarity between marks or the well know status of a mark in Korea vary between Patent Office Examiners.

   Therefore, obtaining the registration of a trademark pursuant to the Trademark Act is essential to the protection of the trademark in Korea.

Importance of Precise Designation of Goods

   It is requirement that the goods on which the trademark is to be used should be designated in the trademark application (hereinafter, the goods so designated are referred to as the "designated goods"). Precise designation of goods is very important to the maintenance of trademark registrations, since in a cancellation action on the grounds of non-use or in a renewal application, only the use of the trademark on one of the designated goods is accepted as proper use of the trademark.

Classification of Goods

   Korea has not yet adopted the International Classification (Nice Classification), but instead adopts its own Classification of Goods, which comprises 53 classes. Each class has several sub-classes, and the goods specifically listed in one sub-class are presumed, for the convenience of trademark examination, to be similar to each other (The similarity between goods is finally determined by comparison of their use, nature, selling place and consumers, etc.) The Korean Classification of Goods is not an exhaustive list but simply a list of examples, and so goods which are not actually listed in the Classification may also be designated.

   One trademark application may cover the goods of only one class.

   For example, if a certain applicant wanted to file an application for the trademark CYGNUS with respect to electrocardiograph, medical ultrasonic scanner, hearing aids, antacid, antibiotics, and hormone preparations. In this case, two separate trademark applications should be filed, since electrocardiograph, medical ultrasonic scanner and hearing aids fall into Korean class 11, while the remaining goods, antacid, antibiotics and hormone preparations fall into Korean class 10.

Method of Designation of Goods

   Designation of goods is the most difficult point in trademark applications, and so a detailed explanation of current Patent Office practice in relation to designation of goods will be given, taking as an example a trademark application in class 25. Class 25 lists the goods as follows:

Class 25:     SACKS AND OTHER CONTAINERS; EXCLUDING THOSE BELONGING TO ANY OTHER CLASS.

 

1. Bags and packing case: brief case; hand bag; opera bag; satchel; trunk; suitcase; boston bag; rucksack; wallet; name card case; rucksacks for mountaineering; packing rucksack; wallet; name card case; rucksacks for mountaineering; packing bag; key case; credit-card cased; passport case; shaving utensil case; check holder; gas range bag; passenger ticket case; diaper bag; poly-bag.
2. Packing containers: barrel; tin can; drum can; high pressure gas cylinder.
3. Boxes: boxes; metal boxes; wooden boxes; corrugated cardboard boxes; paper boxes.
4. Packing bags: packing bags; gunny bags; cotton bags; chemical fiber bags; packing bags made of plastic.
5. Straw bags.
6. Closures and covers of packing container: cover for packing container; closure for packing container.
7. Bottles.

  The most important rule in designating goods is that in general the Patent Office does not accept general or comprehensive terms as proper descriptions of goods. The title of a class or sub-class, such as "Bags and packing cases or packing containers" is regarded as being a general or comprehensive term. In addition, goods must usually specified in terms of the exact names of specific items of goods such as the examples listed in the Korean Classification. For example, since "bags" is listed in sub-class (1) of class 25, "bags" on its own would be regarded as being a comprehensive term and must be divided into "brief case", "hand bag", "boston bag", etc. As mention above, the goods listed in the Korean Classification are only examples, and it is possible to designate other items provided that they are described in the exact names of the specific items of goods. If "bags" was designated for a trademark application, the Examiner would issue a Preliminary Rejection ordering subdivision of "bags". If the applicant concerned did not comply with this order, then the trademark application would be nullified.

   "Parts", "accessories" or "components" are regarded as being comprehensive terms, and so they must be specified individually as mentioned above.

   It should be noted that when an applicant designates certain specific items of goods which are not actually listed in the Korean Classification, the Examiner will sometimes issue a Preliminary Rejection demanding explanation of what those goods are, due to his own unfamiliarity with them. In such a case, evidence, such as catalogue showing the nature of the items, must be submitted.

   However, if an applicant wishes to cover all the items listed in a particular class, then it is possible to designate the title of that class, such as "packing containers and other containers, excluding those belonging to any other class" which is the title of class 25. It should, however, be noted that even this kind of designation would extended only to the items actually listed in the class and not to any items which fall in the same class but are not actually listed therein.

   If such a designation is made, all the items actually listed in the class would be counted for the purposes of calculation the official fees payable both on application and on registration.

   In practice, if the goods designated in respect of tow similar marks are in different sub-classes then, even if the two marks are identical or closely similar in sound and outer appearance, the Patent Office Examiner may grant a registration for the later filed trademark provided that he considers it not likely to cause general consumers to be misled and/or confused with regard to the origin of the goods. Therefore, it should also be noted that the designation of at least one item of goods from each sub-class in one application is very important to fully protect your trademark in Korea.

Official Fees Payable to Patent Office

   The official fees payable to the Patent Office for a trademark application are affected by the number of designated goods. At the time of writing, the basic official fees for a trademark application designating up to ten items of goods are US$ 65, 00 on application and US$ 240,50 on registration. There is an additional fee of US$8.00 for each additional item of goods over the basic ten, and this fee is payable both on application and on registration.

• Class 101:     Advertising Services.
• Class 102:     Financial Services.
• Class 103:     Insurance Services.
• Class 104:     Civil Engineering and Construction Industry.
• Class 105:     Repair Service.
• Class 106:     Communication Service.
• Class 107:     Broadcasting Service.
• Class 108:     Transport Industries.
• Class 109:     Warehousing Service.
• Class 110:     Special Processing Service.
• Class 111:     Entertainment Service.
• Class 112:     Other services, not included in Class 101 to 111.

What marks can be registered

   Article 2 of the Trademark Act defines a trademark as "signs, characters, figures or a combination thereof which are used on goods by a person who produces, manufactures, processes, certifies or sells goods in order to distinguish his goods from those of another". Any mark which falls within this definition can be registered, provided that it is not in one of the categories prohibited by the Trademark Act. In this regard, discussion about some points of the marks which are deemed unregistrable pursuant to Articles 8 and 9 will follow.

Color

   Under the Trademark Act, color is not a registrable element of a trademark. Trademark applications must depict the trademark in black and white, and the scope of the trademark registration will extend to the use of the trademark in any combination of colors, so that an infringer cannot avoid infringement of a registered trademark by merely changing the color scheme.

External Appearance of an Article

   In some foreign jurisdictions, the concept of a trademark has been somewhat extended so that in certain circumstances it may be possible to obtain trademark registration for the external appearance of the goods themselves. In Korea, however, it is still generally considered that a trademark is something which is separate from the article (goods or packaging) on which it is to be used. There have been some cases in which applicants have obtained a trademark registration for a pictorial representation of the external appearance of an article, for example, a distinctive bottle bearing a word trademark. It has, however, yet to be established by means of infringement cases in the courts whether such a trademark registration will protect the bottle itself, or only the use of a picture of the bottle as a trademark. In others words, it has not yet been established whether such a trademark registration can be used to prevent a third party from using the bottle itself. Nevertheless, it is to be expected that eventually it will be settled that such a registration does not protect the bottle itself but only prevents a third party from using the picture of the bottle as a trademark. To interpret otherwise would be to blur the distinction that presently exists between the separate systems for registration of trademarks and registration of industrial designs.

   In principle, protection for the external appearance of an article itself can be obtained by registration of the design under the Design Act. However, the Design Act requires that in order to be registrable the design must be novel and must meet certain other requirements at the time of filing of the application for design registration. If it was ruled that the appearance of the article itself could indeed be protected by registration under the Trademark Act, which imposes no such requirements, this would allow applicants to avoid the novelty requirements, etc. of the Design Act by filing for registration of the appearance of the article itself under the Trademark Act.

Combination of Foreign Characters and Corresponding Korean Version

   As well as marks which consist of foreign characters alone, marks consisting of combined foreign and Korean versions are registrable under the Trademark Act. For the reasons explained below, however, it may be difficult to maintain the registration of such a combined mark.

   First, in the case of such a combined trademark, under current Patent Office practice the use of either the foreign version alone or the Korean version alone is not regarded as proper use of the combined trademark for any purposes under the Trademark Act. Even in cases where the foreign and Korean versions have been used separately on one side or on different sides of a package of the product concerned, most examiners do not accept such separate use as proper use of the combined trademark. Furthermore, it is doubtful whether such separate use can be accepted as proper use for the purpose of defending a trademark registration against a cancellation action filed on the basis of non-use.

   For these reasons, unless a combined trademark has been used in the combined form, that registrant of the combined trademark has been used in the combined form, the registrant of the combined trademark may encounter a situation in which he feels unable to take action against infringers because of the fear that the infringers might bring cancellation action against the registration of the combined trademark on the basis of non-use. Therefore, if a Korean version is to be used separately, it is advisable to obtain separate registrations for the two versions.

   Article 6 (1) of the Trademark Act enumerates the following as unregistrable. A trademark registration may not be obtained in any of the following cases:

1. where the mark consists solely of a sign indicating, in a common way, the usual name of the goods;
2. where the mark is customarily used on the goods;
3. where the mark consists solely of a sign indicating, in a common way, the origin, quality, raw materials, efficacy, use, quantity, shape or price of the goods, or the method or time of manufacturing, processing or using them;
4. where the mark consists solely of a sign indicating a geographical name, and abbreviation thereof or a map;
5. where the mark consists solely of a sign indicating, in a common way, a commonplace surname or name of a legal entity;
6. where the mark consists solely of a very simple and commonplace sign;
7. in addition to the cases mentioned in subparagraphs (I) to (vi), where the mark does not enable consumers to recognize the goods bearing the mark as being connected with the business of the owner of the trademark.

   Marks enumerated in Article 6 of the trademark Act are ones which are thought to be descriptive or non-distinctive. The rule in Article 8 of the trademark Act is to meet the public need that trademark consisting only of marks which are descriptive of the common name, quality, effect, shape, well-known geographical name etc. and whose description is made in such manner as is normally and commonly used by general consumers cannot be exclusively monopolized by a single person and that further, such trademarks cannot distinguish one persons good from those of others in actual transactions (Supreme Court Case 83 Hu 4). Further, the issue of whether a trademark retains distinctiveness should be determined not by analyzing its components but by observing the trademark as a whole (Supreme Court Case 79 Hu 53). In addition, whether a certain expression indicates the quality of goods should not be determined by a mere literal interpretation, but should be determined in view of public interest giving full consideration to its relationship with the goods and the realities of the business circle concerned.

A Supreme Court case has upheld this view, stating in substance that whether a trademark merely indicates the quality of the goods should be determined according to the actual circumstances of dealing in the goods (Supreme Court Case 82 Hu 31).

   Even a mark falling under one of the above categories (iii), (v) and (vi), may be registrable if, as a result of use prior the application therefor, it has became well-know among consumers as a mark representing the goods of a particular person (Article 6(2)).

   According to the guidelines of the Patent Office in order to meet the above requirements, the following should be verified: first, the trademark must have been continuously used for more than three (3) years with respect to goods in Korea; second, as a result, the average consumer should recognize it well-know trademark representing the goods of a particular person. This is the so-called obtaining of a secondary meaning. It has been the experience, however, that there are few cases which have been allowed by the Patent Office on this basis.

   Against a registration granted in violation of Article (6) of the Trademark Act, an interested party may bring an invalidation action at the Patent Office at any time.

     Once the trademark application is filed, the Application Section of the Patent Office will issue the Notification of the filing number to the applicant. If the Power of Attorney is not attached to the trademark application, it can be supplemented by late filing within two months from the filing date. Then the Application Section of the Patent Office transfers the trademark application to the Examination Section, who will determine whether the substantive requirements for registration have been met. If the Examiner finds no reason to reject it, he makes a decision to publish the application. Upon such decision, the Patent Office serves a transcript of the decision on the applicant and then publishes the application by describing the application in the Trademark Gazette. Anyone may file an opposition to a trademark application within 30 days from the publication date.

   If no opposition is filed during that period, the examiner will send the decision for the registration of the trademark after the period of the opposition has lapsed. The applicant must pay the registration fee within 30 days from the date of such decision.

   If the examiner recognizes that the application should not be registered under the Trademark Act, he must make an official rejection. The examiner, however, must notify the applicant of the reason for which the application is to be rejected prior to making his official rejection and must designate a period during which the applicant's response may be submitted (usually two months from the date of the official rejection). If the examiner judges the response to be not persuasive, he will send a final rejection of the trademark application. If the applicant objet to the examiner's final rejection, he may appeal to the appellate trail board of the Patent Office within thirty days from the date of the final rejection. An applicant who objects to an appellate trial judgment may appeal to the Supreme Court, but only on the grounds that the trial judgment was made in violation of acts and regulations.

    The duration of a trademark right is ten years from the date of its registration. This term, however, can be renewed for further period of ten years by means of a renewal application filed during the year preceding the expiration of the registered trademark right.

   A renewal application must be accompanied by evidence establishing that the mark to be renewed was used in Korea by the owner or its recorded licensee during the three-year period immediately preceding the filing of the renewal application.

   Pursuant to a set of Patent Office Guidelines with regard to the evidence of use for renewal applications, the following evidence will be accepted if it clearly demonstrates the use of the mark on the designated goods, and if the use of the mark has a business purpose:

  At least one photograph in which the mark and the goods are clearly shown must be submitted as part of the Exhibit. When it is, however, not possible to identify the mark clearly from a single photograph of the entire goods due to the relatively large size of the goods, an additional enlarged photograph showing the part of the goods on which the mark is affixed must be submitted. If the mark is not directly affixed to the goods, but affixed to a package or container, a photograph will be acceptable if it shows the goods contained within the package or container. If the goods cannot be identified in the picture of the package or container, a photograph showing the goods without the package. If it is not possible to attach the mark to the goods since they are sold by piece or by weight, or if the mark is attached only to price lists or price tags, a photograph showing the goods and the mark will satisfy the photograph requirement;

  Any catalogues or advertising materials may be submitted as part of the Exhibit. The catalogues and advertising materials must clearly show the goods bearing the mark and must be accompanied by the following information:

      (i) the title of the printed materials (catalogue, pamphlet, newspaper, magazine, etc.)
      (ii) the date on which they were published; and
      (iii) the name and address of the company which printed the catalogues or advertising materials;

   If it is not possible to submit catalogues or advertising materials as part of the Exhibit, a photograph showing these materials together with a statement of contents must submitted.
   The mark and the goods must be clearly shown in the photograph. The statement must also demonstrate that the use of the mark has a business purpose.
   Trading documents such as invoices, statements of delivery of goods, etc. may be submitted as part of the Exhibit. The trading documents must clearly show the mark used on the goods and demonstrate that the use of the mark has a business purpose.

 Under the Trademark Act, three kinds of trials are recognized: the invalidation trial, the cancellation trial, and the scope of right trial.

Invalidation Trial
   The trademark right will be established when it is registered with the Korean Patent Office. If a trademark, however, is registered in violation of any one of the below, it would be subject to invalidation by a trial brought by the examiner or an interested party:


(a) Articles 6 (Lack of distinctiveness) and 7 (Unregistrable trademarks);
(b) Article 11 (Requisite to be registered as an associated trademark);
(c) Article 13 (First-to-file-rule);
(d) When the registration has been effected in violation of a treaty; and
(e) When the owner of the registered trademark is not the true assignee of the trademark right.

   An interested party means a person who has a direct legal interest in a trademark invalidation trial. Trials in the Korea Patent Office are administered by the trial department. In principle the Korean Patent Office usually conducts hearings for the trials through documents unless an oral hearing is required to clarify conflicting facts and is requested by the parties. The evidence for the trials is not limited. Examination and/or preservation of evidence may be made, based on request of the parties or ex officio. Also, the trial department may examine issues which have not been brought or were withdrawn.
   In case a trial judgment invalidating a trademark registration becomes final and conclusive, the trademark right is deemed never to have existed. Also, renewal registration may be subject to an invalidation trial brought by an interested party or the examiner if it has been effected in violation of Article 6 and Article 7, Paragraph 1 Items (i) to (v), (x) and (xi).

Statutory Limitation

   An invalidation trial can be brought within five (5) years from the date of registration of the trademark only by an interested party if the trail is brought on the grounds of Article 7, Paragraph 1 Items (vi) to (ix) of the Trademark Act. These grounds are relative to private interest.

Cancellation Trial

   A trademark registration may be subject to cancellation in a trial brought by an interested party if grounds for cancellation exist under Article 45. According to the precedents of the Supreme Court, an interested party means a person who uses or has been using a trademark identical with or similar to the registered trademark, and therefore has a direct interest in the cancellation. The Supreme Court tends to interpret the scope of an interested a party narrowly. Under Article 45, a trademark registration may be subject to a cancellation trial if any of the following occurs:

(a) Where the owner of a trademark right tacitly tolerates the use by another of a trademark identical with or similar to his own registered trademark for goods identical with or similar to his own designated goods or tacitly causes such use to be made;

   The provision of cancellation on this ground is not only a punitive provision, but a provision for the protection of public interest; therefore, if the owner of the registered trademark tolerates another person's use of his trademark without registering a trademark license, this is grounds for cancellation of the registration thereof regardless of motive or objective. Further, it should be noted that the illegal user of a trademark, that is the illegal licensee himself can take action for the cancellation of the registration concerned on the grounds of his own illegal use.

(b) Where the owner of a trademark right deliberately uses a mark similar thereto on goods similar to the designated goods when this is liable to cause confusion as to the origin of goods when this is liable to cause confusion as to the origin of goods or to mislead as to the quality of the goods; (c) Where the owner of a trademark right fails to use the registered trademark for more than one year on the designated goods in Korea without just cause; however, this provision shall not apply to associated trademarks if any one of the registered marks has been used on at least any one of the designated goods;

   The meaning of "use" is somewhat complex and open to different interpretations. As a departure from former practice, where use was restricted to distribution, in 1971 the Supreme Court held that displaying or distributing advertisements or price lists is sufficient to constitute use. Following such decisions the Act was changed in 1973 to specifically provide that the following acts constitute use of the trademark (Trademark Act, Art 2, par. vi ):

  Applying the mark to the goods or their packaging;
  Transferring or delivering, or displaying, importing or exporting, for the purpose of transfer or delivery, goods on which or on the packaging of which the mark has been applied; or
  Displaying or distributing advertisements, price lists, business papers, signboards or labels relating to the goods on which a mark has been applied.

   Of course, to meet the requirements for use the mark must be used as a trademark and be used on goods or something of exchange value. Use, however, is not required to be public, and it is generally accepted that intra-business transactions, e.g. sale of goods between company departments or to employees, is regarded as use.

   Of course, to meet the requirements for use the mark must be used as a trademark and be used on goods or something of exchange value. However, use is not required to be public, and it is generally accepted that intra-business transactions, e.g. sale of goods between company departments or to employees, is regarded as use.

   If cases against local owners, findings of non-use have occurred where required administrative permits to produce certain goods, e.g. pharmaceuticals, agricultural chemicals, cosmetics, beverages, medical supplies, etc., have not been obtained or business licenses have not been issued and thus no business tax was levied. (Supreme Court Judgment 74 Hu 16 case; Patent Office Trial Ruling Trial No. 75-255, 256 cases; Patent Office Trial Ruling Trial No. 75-278 case; and Patent Office Trial Ruling Trial No. 75-320 case). Curiously, in these cases it was not discussed whether any advertising constituted as use.

   In recent practice, the Patent Office determined that a foreign owner of a trademark uses the trademark when he distributes in Korea a public relations magazine containing an advertisement of the trademark. Thus, if a trademark owner does not intend to distribute trademarked goods in Korea for the present, he should at least advertise the trademark in Korea to prevent cancellation due to non-use.

   Although a trademark must generally be used to prevent cancellation due to non-use, non-use is excused if, as mentioned above, there is a justifiable reason. The Supreme Court has held that in addition to other acts of force majeure, such as disease, acts of God, and the like, where non-use occurred due to a justifiable reason (77 Hu 4 case). Commentators interpret justifiable reason production facilities and the above restriction due to governmental action. Although restriction due to governmental action or other force majeure cause justifies non-use of a trademark, it might still be a good idea for the trademark owner to advertise, etc. the trademark in Korea during the period of such restriction or other force majeure cause to prevent any argument of non-use being raised.

   The burden of proof of non-use is borne by the plaintiff. However, the difficulty of establishing this negative proof is considerably relieved by the provision in Article 73 Paragraph 3, that it shall be a presumption that, if the owner of the trademark right has not used his registered trademark in respect of the designated goods in the city, gun - county, a ward of the city of Seoul, or the administrative district of the residence or place of business of the owner in Korea as registered in the Trademark Register (or in the district where the Patent Office is located if the owner has no residence or place or business in Korea and no registration has been made on his behalf by an agent), the trademark has not been used on the goods concerned.

(d) Where the owner of a trademark right fails to apply the registration of the transfer of the trademark to another where the transfer was not registered with the Patent Office within one year following the transfer, except in the case of inheritance;

   Further, in case a trademark whether registered or not, has been transferred not together with business relevant thereto, or in case associated trademarks have been transferred separately, or in case a share of a trademark has been transferred without the consent of all the co-owners, the trademark shall be subject to cancellation.

(e) Where a trademark falling under Article 23, Paragraph 1, Item (iii), (that is, an application for a trademark registration identical or similar with a trademark registered in the territory of a country party to a treaty is made by the person who was, within the one year period prior to the application, an agent or a representative of the proprietor of the trademark concerned, without such proprietor's authorization) has been registered, the proprietor of the original trademark demands a trial for cancellation within 5 years from the date of registration of the trademark.

   In case a trial decision to cancel a trademark registration becomes final and conclusive, the trademark is deemed to be extinguished from that time. Where a trial decision canceling a trademark registration pursuant to the above (a), (b), (c), has become final and conclusive, the owner of the trademark right or any other person using the said trademark may not obtain a trademark registration for the same or a similar mark until three years have elapsed from the date of such decision.

Statutory Limitation

A trial for cancellation of trademark registration pursuant to the above (a), (b), and (c), may not be demanded more than three years after the date on which the alleged facts have ceased to exist.

Scope of Trademark Right Trial

   The scope of trademark right trial is used to confirm whether or not a mark infringes on a registered trademark right. This trial may be filed by an interested party. The effect, however, of this trial shall bind only the parties. Notwithstanding that a trademark right represents the monopolized use of trademark by the trademark owner, there are many limitations to the exercise of such right in various aspects. The following are limitations on the exercise of trademark right.

   The effect of the trademark right does not extend to a trademark falling under any one of the items listed below:

(a) Those indicating in a common way one's own name, title portrait, signature, seal, famous pseudonym, professional name or pen name, or a famous abbreviation thereof, the use of such names for the purposes of unfair competition being prohibited;
(b) Those indicating in a common way the common name, place of origin, place of sale, quality, raw materials, efficacy, use, quantity, shape, price or method of either manufacture or use; and
(c) Those which are in customary use on goods identical with or similar to the designated goods, and those which consist of eminent geographical names or those consisting of a map.

Article 66 of the Trademark Act

   The following acts shall be deemed to be infringing a trademark right or an exclusive license:

(i) using a trademark identical with the registered trademark of another person on goods identical with, or similar to, the designated goods, or using a trademark similar to the registered trademark of another person on goods identical with, or similar to, the designated goods;
(ii) acts of delivering, selling, counterfeiting, imitating or possessing a trademark identical with, or similar to, the registered trademark of another person for the purposes of using or causing a third party to use such trademark on goods identical with, or similar to, the designated goods; and
(iii) acts of manufacturing, delivering, selling or possessing instruments for the purposes of counterfeiting or imitating a registered trademark of another person or causing a third party to counterfeit or imitate such trademark.

In practical cases, it is not easy to determine whether or not a trademark is similar to a registered trademark. According to court precedents, "to be similar" means that the trademarks, when compared, are similar overall, including appearance, pronunciation, concept, such as to cause consumers to misconceive or be confused as to the origin of products.

Burden of Proof

   In common law countries, since the causes of action are basically based on prior use, it is difficult to prove, to the satisfaction of the court, that the mark has been used to a sufficient extent such that it indicates a source of origin.

   In Korea, where a registration policy is adopted, the plaintiff may be relieved from this difficulty of proving the fact or prior use. The owner, however, of a trademark must stand to prove the fact of infringement, such as the acts of infringement, the knowledge of the fact of registration by an infringer, the amount of damage. There is, however, a provision that is helpful to the plaintiff in the difficulty or proof such as presumption of willfulness. Article 68 of the Trademark Act provides that an infringer shall be deemed to have had knowledge of registration of the trademark in case there exists an indication of "Registered Trademark" when the trademark is used. There is also another provision regarding presumption of the amount of damage. Article 67, Paragraph 2, provides that the profit gained by the infringer is presumed to be the amount of damage sustained by the trademark owner. This provision also relieves the burden of proof on the plaintiff to a considerable extent.

   It provides as to the burden of proof that the owner of a trademark is required to prove wrongful user's sales only, while the wrongful user is required to prove all elements of costs or deductions claimed.

   The damage may be calculated on the basis of profit that the owner of a trademark would have gained if there had been no sales of goods by the illegal user of the trademark. In the case of trademark infringement, it is also possible for the trademark owner to claim damage to goodwill.

   In the damage claim, the amount of profit gained by the infringer is presumed to be that of damage sustained by the trademark owner. To this extent, the burden of proof is removed from the plaintiff. The trademark owner can claim, in addition to the amount of damage thus calculated, compensation for an amount equivalent to the profit normally obtainable through the use of compensation on the basis of proved amount of damage. The entire amount, however, may not exceed three times the amount of damage.

   The court may, in the assessment of damage, take into consideration the fact that the infringer has no willful intent or gross negligence. Once again, there is a provision regarding assumption of proof, namely Article 68 of the Korean Trademark Act which provides that an infringer is presumed to have had a knowledge of the fact of registration in case there is an indication of "Registered Trademark" in the use of trademark. Under this presumption, the infringer is presumed to have had a willful intent unless he presents proof to the contrary. Within this scope, the trademark owner is put in an advantageous position with regard to the burden of proof.

   According to Article 69 of the Korean Trademark Act, the courts may order proper measures to recover the credit or good-will of business together with or instead of compensation of damages, upon request by the trademark owner for example, the publication of an apology in a newspaper.

Criminal Procedure

   Article 93 of Korean Trademark Act provides that any person who has infringed a trademark right shall be liable to imprisonment for a term not exceeding five years or to a fine not exceeding 20,000,000 won.

    Aside from the protection of trademark registered pursuant to the Trademark Act, some protection for unregistered foreign trademarks, trade-names and business names which are well know in Korea is available pursuant to the Unfair Competition Prevention Act. The provision of this Act are largely self-explanatory. It must be, however, borne in mind that the Courts have put strict interpretation on the meaning of "recognized widely in this country" and will grant relief pursuant to this statute only in cases where it can be clearly established that the mark in question has attained well know status among general Korean consumers.

   Article 1 (Purpose)

   The purpose of this Act is to maintain a good order of commercial trade by preventing the competition by means of unfair methods in commerce.

   Article 2 (Definition)

   The term "unfair competition act" as used in this Act means any of the following acts regardless of its intent:

1. An act causing confusion with another person's goods by selling, distributing, importing or exporting the goods which use, or by using, that which is identical with, or similar to, another person's name, trade name, or trade-mark or container or packaging for goods, or an indication representing another person's goods, which is recognized widely in this country;
2. An act causing confusion with another person's business facilities or activity by using that which is identical with, or similar to, another person's name, trade name, or mark, or an indication representing another person's business, which is recognized widely in this country;
3. An act causing confusion with respect to sources of origin by marking a false indication of the source of origin on goods or trade documents or communications by advertisement of the goods, or the method perceived by the public, or by selling, distributing, importing or exporting the goods marked with such an indication;
4. An act of marking on goods or trade documents or communication by advertisement of the goods, or the method perceived by the public, the indication which cause confusion as if the goods might be produced or processed in other than the place where the goods were produced, manufactured or processed, or of selling, distributing, importing or exporting the goods marked with such a indication; and
5. An act of misrepresenting another person's goods, making on goods or advertisement thereof a statement or an indication which causes confusion with respect to quality, contents, process, use or quantity of the goods, or selling, distributing, importing or exporting the goods by such ways or indications.

1. No person shall use as a trademark that which is identical with, or similar to, the flag or coat of arms or other insignia of any Contracting State to the Paris Convention for the protection of Industrial Property (hereinafter referred to as "Paris Convention"), or an emblem of an international organization, unless authorized by such Contracting State or international organization.
2. No person shall use as a trademark that which is identical with, or similar to, any indication for inspection or certification of the government of any Contracting State to the Paris Convention unless authorized by the government of the Contracting State concerned.

1. Any person recognizing that his business interests are likely to be injured by any act under Article 2 may request the court to suspend such an act.
2. Any person whose business interests were injured by any act under Article 2 may request the court to award him damages.
3. Any person whose business interests were injured by any act under Article 2 may request the court to take actions to retrieve his business goodwill in lie of, or in addition to, the damages when requesting the damages under Paragraph 2.

1. The Unfair Competition Deliberation Council (hereinafter referred to as "Council") shall be established in the Patent Office to advise the Commissioner of the Patent Office (hereinafter referred to as "Commissioner") on the matters concerning prevention of unfair competition acts under this Act.
2. The matters necessary for organization and operation of the Council shall be prescribed by the Presidential Decree.

1. Commits an unfair competition act under Article 2; or
2. Violates the provision of Article 3.