South Korea: Trademarks (contentious) Q&A

Experts from the country’s Cho & Partners provide a practical checklist of South Korea’s contentious trademark law rules.

Q1. What types of legal proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark?

In terms of civil proceedings, a trademark owner may file a preliminary injunction and a formal litigation to enforce its rights. The district court is the court of first instance for both types of actions.

An injunction can be sought in a preliminary injunction action, and an injunction, damages, and an order for destruction can be sought in a formal litigation.

In addition, a preliminary attachment (an ex-parte proceeding) can also be filed with the district court which, if granted, will freeze assets of the infringer, which can be used as leverage in negotiations or a means to preserve the infringer’s assets prior to filing a formal litigation.

In addition, a criminal complaint can be filed with the legal authorities (the police, the Special Judicial Police, etc) for trademark infringement and acts of unfair competition in violation of the Unfair Competition Prevention Act (UCPA).

Once a criminal complaint is filed, the authorities will investigate the case and, if they find that there was a crime, pass the case on to the Prosecutor’s Office, which will review it and decide on the indictment of the infringer.

Are there specialised courts or other tribunals? Are there any provisions in criminal law regarding trademark infringement?

Yes, there are specialised bodies for handling intellectual property cases: the Intellectual Property Tribunal (IPT) and the Patent Court.

The IPT, which is part of the Korean Intellectual Property Office, is responsible for adjudicating matters related to the registration and scope of rights for patents, utility models, designs, and trademarks.

For instance, appeals against trademark registration rejections, trials for cancellation or invalidation of trademark registrations, and trials to confirm the scope of rights must be filed with the IPT.

The Patent Court is a specialised court that handles appeals of cases dealing with intellectual property issues, specifically: (1) appeals of IPT decisions, and (2) appeals of district court decisions (courts of first instance) concerning intellectual property issues. The Patent Court decision may be appealed to the Supreme Court.

As mentioned earlier, trademark infringement and unfair competition are both subject to criminal penalties. The penalties are not provided under the Criminal Act but are stipulated in the Trademark Act and the UCPA.

Under the Trademark Act, infringement of a trademark right is subject to criminal penalties of up to seven years’ imprisonment or a fine of up to 100 million Korean Won ($72,399).

And under the UCPA, an act of unfair competition is subject to criminal penalties of up to three years’ imprisonment or a fine of up to 30 million Korean Won.

Q2. What is the timing and format of the infringement procedure? How long does a typical infringement or dilution action, preliminary injunction, trial and appeal take, for example?

The duration of each action can vary significantly depending on various factors such as the workload of the courts/relevant authorities and how actively the opposing party defends itself, which makes it difficult to predict the exact timeline.

Generally speaking, in an infringement case filed with a district court, it takes around 8-18 months from the filing of the complaint to the decision.

For a preliminary action (such as an injunction) filed with a district court, it usually takes around 3-6 months from the filing of the complaint to the decision.

An appeal of a district court decision in an infringement case can be filed with the Patent Court, and it generally takes about 8-16 months from appeal to decision.

A further appeal can be filed with the Supreme Court, and it usually takes around 4-18 months (or more) from appeal to decision. This is because appeals to the Supreme Court can only be based on legal issues, and challenges to factual findings are not permitted.

If the Supreme Court determines that the appeal is not based on a legal issue, it can dismiss the appeal without substantive review within four months of the date when the case records were received from the Patent Court.

The format is generally similar in most cases. First, the party alleging infringement submits a complaint to the court, and the opposing party is given an opportunity to respond.

After that, both parties may submit as many briefs they wish until the conclusion of the hearings. Generally, there is at least one hearing held, and more, if the judges find that there are additional issues that should be discussed.

A complaint alleging infringement must include the (i) relief sought (the specific judgment or order the plaintiff wishes to obtain), and (ii) grounds for the claim (the factual background and the specific legal basis supporting the requested judgment).

Q3. What is the burden of proof to establish infringement or dilution?

In an infringement lawsuit, the burden of proof regarding the elements required to establish infringement or dilution lies with the plaintiff, ie, the trademark owner. However, the Trademark Act includes provisions that alleviate this burden of proof for the trademark owner.

For instance, the Trademark Act provides relaxed evidentiary requirements for the trademark owner concerning the infringer's negligence, the occurrence of damages, and the calculation of the amount of damages.

Specifically, infringers are presumed to have acted intentionally or negligently, and if infringement is found, it is presumed that some damage occurred to the trademark owner, which in turn allows the court to award damages even without direct proof of harm.

Q4. How much does it cost to bring an infringement or dilution action, including trial preparation and appeal?

The legal fees depend on a number of different factors, such as the nature of the action, the underlying facts, and how much of a defence that the other side raises.

Generally, for an infringement or dilution action, the preliminary work entails making sample purchases and providing legal analysis, preserving evidence of infringing activities, conducting a consumer survey, etc.

Once a complaint is filed, both parties may submit as many briefs as they wish until the conclusion of the case, and at least one hearing is held. The legal fees at the district court level generally range round USD$60,000-$120,000 depending on how active the litigation is.

As for the appeal to the Patent Court, the legal fees would range between USD$20,000-$30,000 from preparing and filing the appeal brief to decision, assuming a similar level of defence by the other side.

For an appeal to the Supreme Court, the legal fees would range between USD$20,000-$30,000.

Q5. What remedies are available to a successful infringement or dilution action?

As mentioned above, the remedies available in an infringement lawsuit include a claim for an injunction, damages, and/or destruction of the infringing goods.

The trademark owner may also claim measures necessary to restore their business reputation, which may include remedies such as publishing a summary of the judgment in a newspaper or issuing a public apology.

Q6. Are there any specific jurisdictional considerations to be aware of?

As Korea’s evidentiary discovery system in Korea is extremely weak, it is very difficult to obtain relevant and honest sales information from infringers, and infringers often simply lie about their sales to avoid payment of damages. For this reason, damages awarded in Korean courts are quite modest, especially in comparison to those awarded by U.S. courts.

The Trademark Act was amended to allow five times the actual damages, and it is due to take effect on July 22, 2025. However, until the weak evidentiary discovery system is addressed, this amendment is not likely to have much real-life impact.

In fact, before the amendment, the Trademark Act allowed three times the actual damages (from October 2020), but courts have recognised enhanced damages in only two of the requested 46 cases, and in one case, all damages were eliminated on appeal, and in the other, damages were reduced to just double the actual damages on appeal.

Ik Hyun Seo is a partner at Cho & Partners. He can be contacted at: ihseo@cholaw.com

Kathryn Lee is a partner at Cho & Partners. She can be contacted at: kslee@cholaw.com

Hyun-Ryung Jeong can be contacted at hrjeong@cholaw.com