Relying on KIPO to combat infringement

Introduction
KIPO SJP: statistics
Where to file criminal complaints?

​Introduction

The Korean Intellectual Property Office (KIPO) operates a special judicial police (SJP) unit, under which officials belonging to the KIPO can take charge of criminal cases relating to the infringement of IP rights (eg, trademarks (counterfeit products), patents, trade secrets and designs). In South Korea, there are SJP units for a number of fields in which specialist expertise is required to conduct an investigation (eg, Customs, railways and agriculture). On receiving a report concerning a potential IP infringement, the KIPO SJP:

• specify the infringement based on the reporter's statement and submitted data;
• collect and review evidence; and
• determine as to whether there has been an infringement based on the full investigation data.

A report is prepared and delivered to the Prosecution Service.

KIPO SJP: statistics

The KIPO has recently released statistics about the SJP's achievements which show that over the past 10 years:

• it has handled approximately 45,000 cases;
• close to 3,500 criminal charges have been made; and
• approximately 12 million counterfeit products have been confiscated (with the corresponding value of genuine goods being over W500 billion or $425 million).

KIPO SJP achievements (January 2011 to August 2020. Source: KIPO)

The KIPO SJP has actively investigated the large-scale distribution of counterfeit products, with cases including:

• a counterfeit health food distributor (May 2015: the corresponding value of the genuine goods was approximately W65.2 billion or $55 million); and
• counterfeit mask pack manufacturers and distributors (July 2019: the corresponding value of the genuine goods was approximately W20 billion or $17 million).

Aside from such examples relating to public health and safety, the scope of the SJP's activities has even extended to K-pop, with a crackdown in 2019 focusing on BTS-related counterfeit products (BTS being a Korean boy band that has achieved global fame in recent years).

Until March 2019, the scope of the SJP's duties was limited to trademark cases, but has since expanded to include patents, trade secrets and design infringement cases. By utilising investigators with relevant technical experience, more rapid and reliable determinations on infringement have become possible and in the past 18 months alone (from March 2019 to August 2020), 276 technical cases have been handled and 438 infringers have been criminally charged.

Where to file criminal complaints?

Any party whose IP rights have been infringed may file a complaint with the prosecution or police, or alternatively file a report with the KIPO directly.

The prosecution has a dedicated prosecutor for IP-related cases at each local and branch office across the country, although they also handle general criminal cases at the same time, and most police stations have no dedicated department for IP rights. Further, due to the rotation of specialist staff, the prosecution and police may have fewer opportunities to accumulate expertise. For these reasons, criminal complaints relating to IP infringement may not be given such full and prompt investigation if filed with the prosecution or police.

On the other hand, reports filed with the KIPO can be investigated by SJP officers with IP expertise who may rely on compulsory investigation rights such as arrest to efficiently handle cases. The SJP also has a target of dealing with cases within three months, meaning that the turnaround time is also comparatively fast.

In short, given the KIPO's active response to IP infringement cases, the SJP is now a good alternative to the traditional avenues of police or prosecution for IP right holders filing criminal complaints.

For further information on this topic please contact Jae-Sang Lim at NAM & NAM by telephone (+82 2 753 5477) or email (jslim@namlaw.co.kr). The NAM & NAM website can be accessed at www.nampat.co.kr.