December 4, 2007
Fairclough Visits Chery Factory
Gordon Fairclough of the Wall Street Journal visited Chery's main auto plant in Wuhu City in Anhui Province. As you may recall, Chery was -- remains? -- a focus of intellectual property disputes and safety concerns (crash test pix here; video, here). Rather surprisingly, Fairclough was allowed to video the main production line. Then again, perhaps not. Chery's deal with Chrysler to sell cars under the Dodge name in the U.S. is ample reason to garner positive publicity. Here's the WSJ video, courtesy of the WSJ site:
Posted by Richard at 1:24 PM | Comments (0)September 25, 2007
Announcement: IP Rights in China Roundtable
Event: ROUNDTABLE DISCUSSION ON
INTELLECTUAL PROPERTY RIGHTS IN CHINA
Date: October 23-24, 2007
October 23: Evening Reception
October 24: IPR Roundtable
Place: Grand Hyatt Beijing
From the event website:
Ambassador Clark T. Randt will host the Sixth Annual Roundtable Discussion on Intellectual Property Rights (IPR) in China on October 23-24, 2007 at the Grand Hyatt Hotel in Beijing, China. This is a unique opportunity for United States companies to spend the day with the Ambassador, and hear from industry and trade association representatives with in-depth knowledge and experience speak on IPR protection and enforcement issues in China. The Roundtable discussion will also facilitate direct engagement between United States companies and senior United States officials from both Washington, DC and the United States Mission in China.
Register here.
Posted by Richard at 12:01 PM | Comments (0)August 14, 2007
Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part 3)
[Editor's Note: We continue from Part 2.]
Quicksand and Other Surprises
First, a present surprise, again contrary to reputation due to the past: Korea’s IP system is largely free of corruption or domestic favoritism. In my five years of working in this field, both in and outside the Korean Intellectual Property Office, the number of times when I suspected there was something nefarious I could count on one hand. Most allegations boil down to either tough calls or a disagreement with the practice and administration of IP law.
One of those disagreements is what constitutes a famous trademark under Korean or International Law. In a nutshell, if your mark is sufficiently famous, you have a de facto defendable trademark. The crux however is what is “sufficiently famous”. Korea sets a very high bar in determining what’s famous. In addition, Korea is strict as well as to the type of goods.
I was involved in a case regarding a very famous copyrighted character with multiple derivative movies, TV shows, and cartoons (some of which did multi-million dollars worth of business in Korea). Yet we were unable to prevent the unauthorized registration of the mark for pet toys and novelties since KIPO determined the character was famous, but not sufficiently so for pet toys.
Since Rich mentioned it in his original post, I think it’s a good idea to bring it up here. Remember Korea is in Asia. This means any contract you may have to ensure confidentiality, like any other contract in Asia, is not in stone. Be sure to keep this in mind as you meet to discuss technical issues. There are trade secret laws, but as always they are hard to prove and may upset your business relations.
Finally, a topical grey area: domain names. Korea is still grappling with the legal and administrative means to resolve national level domain names (e.g. “co.kr”). To be honest, I do not know exactly what to recommend in a general sense, other than saying expect this to be a problematic area.
Posted by Richard at 12:49 PM | Comments (0)August 9, 2007
Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part 2)
[Editor's Note: We continue from Part I)]
Basic Overview of IP Enforcement Mechanisms
The first thing I can say about enforcing your IP in Korea is “forget civil courts and damages.” Such cases can be long, expensive, long, tedious, long, and can have anticlimactic rulings (oh, did I mention they were long?). For the latter, courts usually only award compensatory damages that can be meticulously accounted for and they almost never give punitive damages. To give you a time frame, an initial decision can take at least a year, and usually you can add another year or so for the appeals process to work out, and the latter makes the reward for patience rarely worth it. To make these options even more unattractive, while you may be able to recover legal fees, they are limited by law and rarely match the actual cost.
However, I actually should not be so dismissive. Civil courts can be a weapon in your arsenal. You will find your Korean lawyers treat it as a weapon of last resort. So should you.
A “dispute” could cover a variety of laws. It could be your standard patent or trademark case. In some cases, however, it may be better to proceed under fair trade laws, called anti-competition or unfair competition laws locally.
If you have an IP dispute, the first move you should normally make is to send a Cease and Desist letter to the infringer. An attempt to settle the manner amicably is seen as a good faith gesture by either the courts or prosecutors office (depending upon your route). It is also incidentally a good internal springboard for the next step, since in a C&D you have to explain what law was violated, how it was violated and show what evidence of the of the infringement you have collected. (You can always add violations and evidence later however if you need to).
The next normally recommended step would be to file a criminal complaint. While cases vary, you usually assert criminal offense based on the Patent Act, the Trademark Act, the Anti-Competition Act, or others (you can find the text at the Ministry of Legislation website). A criminal complaint is usually a statement made in person to the police covering much the same content as the C&D. The filing process for a criminal complaint can be rather involved, so do not be surprised at the cost quoted by local attorneys. Be assured the cost is to cover this time, not the enforcement itself as some erroneously conclude.
In a way, this is partly a negotiating step since it can be withdrawn. Being indicted in Korea is considered a social black eye, thus you may find people more willing to settle once an official criminal complaint is filed. As part of any settlement, you may ask for damages. However, my tip is to keep it minimal, if not a token.
Ultimately you will get an indictment, which is pretty much a conviction. Oddly the penalty the court will give will usually be slight, due to the Korean courts' penchant for lenience for first time offenders. (The conviction itself is usually seen as the big deterrent).
I have come across a few who think is an easy thing to conduct police raids (why, I do not know). In order to conduct a police raid, you need to have complied enough evidence and have a compelling argument to convince the Public Prosecutor’s Office to go before the court, and enough for a court authorize the police raid. I personally have never found a need to conduct one, but have heard that the burden of proof is quite high. A final note here, the cost for a raid is quite small, or even none, when conducted in conjunction with a criminal complaint.
And the last, but by no mean least, tool is the Korean Customs Service. Over the past few years the Customs Service has taken vigorous role in policing counterfeit goods going in and out of the country. If you have a suspicion your IP is being infringed either by import or export, you can inform the Korean Customs Service and they will do the best they can. You can approach them with a general concern, but obviously the more specific you are the more likely catch the goods. Such evidence can be used in a later criminal or civil action.
Posted by Richard at 12:30 PM | Comments (1)August 6, 2007
Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part I)
[Editor's Note: My scant treatment of Korea on this blog has not been intentional. Occasionally, I've dealt with the topic, blogging on fruitless plans to build highway and rail lines across the DMZ into the DPRK (North Korea); the now imprisoned flower-baron Yang Bin's involvement in resort casinos in Shinuiju across the border from Dandong （丹东）; and, if I remember correctly, something about bibimbap.
Alas, my mind has been elsewhere: in China, the case for these past 25 years. That is not to say that I am a sinophile. I am not. No - China made me a skeptic in the 1980s and I remain so, by experience, not by text. Nevertheless, the idea of it continues to tug gently at me. If ever there was a cauldron of fascination for those who seek to peer into it...
But readers of our next post will find somewhat more of Asia in Asia Business Intelligence than just China. Our next author prefers to remain anonymous, going by the happy epithet, Drambuie Man. You will find his bio in the first three paragraphs of his post. Those who may wish to contact him should contact me first.]
Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part I)
I first would like to thank Rich Kuslan for the honor of contributing this piece. His blog is one of my regular reads. I was asked by Rich to contribute something on IP law in Korea. As with anything you know a lot about, its tough to limit yourself to what is essential. Thankfully, one of the previous posts here as Chinese IP Law overview provides a good framework. Many parts of that post, particularly the discussion on business practices, goes for the Korean side as well.
The exact position I am in is somewhat unique, given I am not a Korean lawyer nor admitted to the bar anywhere. I started in the IP field on the practical end, first via working with high-tech companies in the US on Korea. While obstensibly doing marketing, I found my at the heart of matters relating to contracting, patents, IP valuations and IP transfers between companies.
For the past five years I have worked roughly as a paralegal (Korean has no exact analogous word in my experience) for the Law Offices of Book Chon, a Korean law firm specializing in all areas of Intellectual Property Law. Within that time, I have also worked for the Korean Intellectual Property Office, the Korean government office responsible for the review and registration of IP in Korea. While with the government, I worked on cooperative projects between KIPO, other national IP offices and multilateral groups, such as the World Intellectual Property Office, due to my knowledge of Korean IP law and the unique perspective I have as non-Korean. When I have time, I blog on Korean IP news at Dram Man, and on things in general at the Marmot’s Hole.
Below I may give what could be inferred as specific advice. It is not. Rather it is my unfortunately blunt style combined with my over eagerness to help when I can. If you have any practical concerns, contact Korean counsel. Your case is unique and special, and should be considered as such.
Rich’s original post found a US company in a problem. Somebody in Korea was counterfeiting its parts and shipping them to China. For obvious reasons, the story stopped there. However, I can give a practical conclusion for that story. First, an overview.
Korea has a certain reputation for bias against foreign intellectual property applicants and rights holders; sometimes that reputation is deserved in individual cases, but on the whole not true. Things in Korea have radically changed with respect to IP Law, and today Korea boasts one of the more advanced IP legal systems.
Korean patent documents are considered so essential that they were included as Patent Cooperation Treaty (PCT) minimum documentation last year, a distinction shared with the US, EU, and Japan. As part of the PCT minimum documentation, Korean patent information must be searched for all PCT applications (method for gaining early recognition of certain rights and later patents worldwide).
Also last year, the Korean Intellectual Property Office became an International Search Authority for the USPTO, an ability shared with the EU. This designation intends to relive some of the workload for the USPTO. PCT applicants can now indicate that their initial international search for a US filed application can be done by KIPO, thus giving confirmation that the quality of patent examination done by KIPO in this area is on par with US and the EU.
IP Registration: Promise, Despite Pitfalls
Unlike China, Korea has one main office handling IP registration, the Korean Intellectual Property Office (KIPO). KIPO handles the registration of patents, trademarks, and designs, but not copyrights. Korea is also part of the Patent Cooperation Treaty and the Madrid Protocol, allowing international applicants to gain early priority.
A pitfall, however, is the seductive similarity of KIPO and its procedures on paper when compared to the US and Europe. For example, drug companies have a hard time with patents because, among many other things, molecules cannot be patented. Korean trademark examiners read English language marks quite closely, and may fail to see a turn of a phrase or unique wording.
For the latter, consider the booming use of the “e” prefix by marketers today (eFile, eBay, eFriend, etc.). Under Korean law a simple letter is considered to be non-distinct. So if you combine it another descriptive or non-distinct word, a KIPO examiner will likely fail to grasp the coinage of the word and reject the mark for being two non-distinct or descriptive words. So for example, consider proposing the mark “e-Pet Quality Pet Shops” for pet shops. A native speaker grasps the uniqueness of the mark, but to a typical KIPO examiner there is little more than the descriptive “Pet Quality Pet Shops” components and a non-distinct common letter “e,” making the mark unregisterable in Korea.
This is not to say necessarily that you will definitely have these problems in trying to register your IP. However, if problems do arise, take a deep breath and realize that Korea is not the US, the EU or even Japan.
If any problems cannot be resolved with written arguments to the initial examiner, you will find you can appeal a decision to the Intellectual Property Tribunal (a KIPO appeals board), then to the Patent Court and finally to the Korean Supreme Court. (A brief note, the Korean Supreme Court is really the highest appellate court circuit; it is not a “Supreme Court” in an American judicial sense.)
Copyrights fall under the Ministry of Culture and Tourism. The system is remarkably similar to the US. There is no requirement to register your gain a copyright, but you can if you wish.
Read Part 2 here.
Posted by Richard at 12:49 PM | Comments (0)
