IP Marking in Korea: Risks and Benefits
There is no obligation to mark your IP rights on products in South Korea. Whether to do so is at the discretion of the IP owner, and there are no direct negative legal consequences arising from failure to indicate IP rights.
Patentees, for example, can seek damages from the patent grant date regardless of whether their patent is indicated, and any person who infringes a patent shall be presumed negligent regarding such infringement no matter whether the patent is marked on the product or not.
Nevertheless, indicating IP rights does grant some legal benefits, which will be discussed below. Also, from a practical sense, it may be a useful advertisement or marketing tool, e.g., to show the public that the company is innovative, deter competitors from copying, persuade the public that the article has government approval, or even lead the public into thinking the article is better than others.
1. What are the legal benefits of IP marking?
The most obvious benefit of indicating IP rights has to do with proving willfulness or allowing for a presumption of willfulness in infringement cases.
In trademark infringement cases, willfulness is presumed. Specifically, any person who has infringed trademark rights or an exclusive license of another person who indicates that the trademark is registered shall be presumed to have been aware that the trademark was already registered, in relation to their infringement.
In patent infringement cases, willful infringement is found when the conduct is deliberate and intentional, and with knowledge of the patent. If so, the court may increase the damages by up to three times the amount calculated or assessed (see here for a discussion of the treble damage system).
In terms of punishment, any person who willfully infringes a patent shall be punished by imprisonment with labor for not more than 7 years or by a fine not exceeding 100 million Korean won (approx. $85,000 USD at current exchange rates). To prove the willfulness of patent infringement, the first requisite is that the infringer acknowledges the existence of IP rights. IP markings could come into play in this situation, and under certain fact-specific scenarios, the indication of patent rights may be useful to prove the knowledge or intention of the alleged infringer.
2. How should IP rights be marked on products?
A patentee/licensee may indicate that their products are patented by using the wording “Patented” together with the patent number. For pending applications, an applicant may use the wording “Patent Pending (Under Examination)” with the application number. For inventions relating to a process for manufacturing a product, “Process Patented” or “Patent Pending for Process (Under Examination)” shall be marked on the product. Such wordings may also be used on the container or package of the product.
A design right-holder may also place wording indicating their design registration on products covered by the registered design or containers or packaging materials of such products. Acceptable wordings are “Design Application” or “Design Under Examination” for pending applications, and “Registered Design”, “Design”, “Design Registration” or “Design Right” for registered designs.
Likewise, where a trademark right holder or licensee uses a registered trademark, they may indicate that the trademark is registered. Examples of acceptable wordings are “Trademark Application” or “Trademark Under Examination” for pending applications, and “Registered Trademark”, “Trademark”, “Trademark Registration”, “Trademark Right” or the “®” symbol for registered trademarks.
The indications of patent, design, or trademark rights may be expressed in English (including English abbreviation) or Chinese as well as Korean.
Indication via internet links is also allowable. As an example, IP holders may mark a product with a link to a website showing a list of applicable patents, designs or trademarks. This also includes bar codes, QR codes, or other forms of electronic display means.
3. Should patent-marked products be identical to the claimed elements of the patent?
The technical composition of a product marked as being patented must be the same as that of the patented invention. However, it may not always be deemed false marking even if the composition of the product only partially corresponds to the patented invention.
Specifically, if the difference between the product and patented invention is merely an addition/deletion/modification of the technical composition that would be commonly carried out by those in the relevant technical field with ordinary knowledge, there is no practical difference in the effect of the invention, and the difference is not of an extent that would mislead the public, the conduct would not be considered false marking (Korean Supreme Court: Decision 2013Do10265).
In addition, if the manufacturing of the patentee’s product embodies the core technical idea of the patent, so long as the difference between the product and patented invention is not of an extent that would mislead the public by exploiting either the commercial advantages afforded by the patent or the public’s trust in patents, it would not likely be deemed ‘false or exaggerated labeling or advertising’ prohibited under the Act On Fair Labeling And Advertising (Seoul High Court: Decision 2013Nu9931)
4. What are the consequences of false marking?
False marking is a criminal offense.
No person shall indicate “Patented”, “Patent Pending” or any similar misleading wording on any unpatented thing, anything for which no patent application has been filed, anything manufactured by any unpatented process or by any process for which no patent application has been filed, or any container or packaging of such thing. Any person who violates this rule shall be punished by imprisonment for not more than three years, or by a fine not exceeding 30 million Korean won (approx. $25,000 USD at current exchange rates).
The same applies identically to false marking of design and trademark rights, with the same punishments.
If IP rights are extinguished while products still remain in the market, this fact should be indicated accordingly unless there is already a clear indication of the IP term of protection.
5. What can be done if it is found that somebody else is falsely marking?
If any IP markings considered to be false or improper are located, this fact can be notified to the Center for Prevention of False IP Marking (www.ip-navi.or.kr) which is operated in conjunction with the Korea IP Protection Agency (“KOIPA”) and the Korean IP Office (“KIPO”). If it is found that the markings are indeed false or improper, KOIPA or KIPO may recommend appropriate corrective measures such as deletion and modification of the markings. Should the offender not comply with the corrective measures, KOIPA or KIPO may then file a criminal complaint in accordance with the Criminal Procedure Act.
Written by Ben YUU