The latest amendment to the Unfair Competition Prevention and Trade Secret Protection Act introduced a new provision prohibiting unfair competition in connection with 'idea theft' – the unfair use of the ideas of another that were acquired as part of a business negotiation or transaction. The purpose of the amendment is to provide additional protection for creative business ideas that may not be as easy to protect as typical forms of intellectual property, such as patents, copyright or trademarks.
The Korea Customs Service recently issued an announcement regarding proposed amendments to the Korea Customs Guidelines for Import and Export Customs Clearance Procedures for Intellectual Property Rights. Of note for brand owners is the fact that the customs recordation term is set to increase from three years to 10 years. Further, the process for recording patent and design rights will be simplified and the bond for small importers and exporters that challenge detainments of goods will be reduced.
Under the amendment to the Court Organisation Act, certain courts handling IP cases have been given authority to establish international panels of judges to review cases in languages other than Korean as a way of making South Korea a more attractive venue for foreign litigants to bring IP litigation cases. To provide further details on the implementation of the amendment, the Supreme Court promulgated its Rules on the Establishment and Operation of International Panels, which are now in effect.
According to data recently published by the Korean Intellectual Property Office, the number of non-use cancellation actions filed in South Korea has significantly increased in recent years, resulting in nearly double the number of registrations being cancelled in 2017 compared with previous years. As such, trademark owners with portfolios which include marks not currently active in South Korea should seek legal advice to determine the most effective strategy for protecting their trademark rights.
The Supreme Court recently ruled en banc that the AMERICAN UNIVERSITY trademark was sufficiently distinctive among South Korean consumers to be registered in connection with university education services, instruction services and other designated services. The court's reasoning is notable because it appears to hold that consumer awareness evidence can be used to prove the inherent distinctiveness of a mark in South Korea.
In a recent case, the Supreme Court appears to have essentially broadened the doctrine of equivalents to emphasise that structures in an accused product that are very different from claimed elements can still be 'equivalent', provided that the differences are conventional and the basic purpose of the invention is still achieved. The patent at issue related to a device for lifting a 'gang form' – a type of external scaffolding used in construction.
An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act will come into effect in July 2018. This amendment specifies the protection to be given to trade dress belonging to service providers in South Korea and introduces a new type of prohibited unfair competitive activity.
Numerous generics have filed challenges to the validity of patent term extensions in South Korea in the past few years, raising various issues of first impression. In November 2017 the Supreme Court rejected two of the major validity issues raised by the generics. Since then, the Patent Court and Intellectual Property Trial and Appeal Board have addressed various other legal issues.