October 29, 2020

Duk Yeul BAEK/Patent Attorney

Patent 100 SIPPT

In order to strengthen the protection of trademark, design and patent rights, the Trademark Act, Design Protection Act and Patent Act were amended and enforced on October 20, 2020. The summary of the amendments is as follows:

1. TRADEMARK ACT

    The court may decide the damage compensation amount within the scope of three times of the amount of damage recognized by Paragraphs 1 to 6 of Article 110 to a person who has infringed a trademark right or an exclusive license intentionally by using a trademark which is identical with or similar to a registered trademark of the trademark holder or the trademark licensee on goods which are identical with or similar to the designated goods of the registered trademark.  In this case, as the intention of an infringer is presumed by the law, the infringer bears the burden of proof.  When deciding punitive damage compensation, (i) a degree of intention or damage on the distinctiveness or reputation of a trademark by an infringing act, (ii) an intention or a degree of recognition on the likeness of occurrence of a damage, (iii) the scope of damage suffered by a trademark holder or an exclusive licensee due to an infringing act, (iv) the economical benefits obtained by the infringer, (v) the period and numbers of infringing acts and etc., (vi) a penalty following an infringing act, (vii) the status of property of an infringer and (viii) the degree of an infringer’s effort to relieve a damage should be considered.

  B. Change of Standard for Deciding the Amount of Royalty

.   Where a trademark right holder or an exclusive licensee claims damages under Article 109 (Royalty), he/she may claims damages by estimating an amount equivalent to that he/she may reasonably (not normally) receive from the use of the registered trademark as the amount of damages he/she has incurred.

C. Increase of Maximum Amount of Claim for Legal Damage Compensation

  (1) A trademark right holder or an exclusive licensee may claim compensation for a reasonably (not normally) receivable amount to the extent not exceeding Korean Won 100 million (Korean Won 300 million in case of an intentional infringement)), in lieu of claiming damages under Article 109 (Claim for Damage Compensation) against a person who has intentionally or negligently infringed his/her trademark right or exclusive license by using a trademark identical or similar to the registered trademark he/she uses on goods identical or similar to the designated goods. In such cases, the court may recognize a reasonable amount of damages in consideration of the meaning of all pleadings and the result of the examination of evidence.

  (2) A trademark right holder or an exclusive licensee who has filed a claim for damage compensation against infringement may change such claim into the claim for legal damage compensation until the court closes pleadings.

2. DESIGN PROTECTION ACT

    The court may decide the compensation amount within the scope of three times of the amount of damagerecognized by Paragraphs 1 to 6 of Article 115 of the Design Protection Act to a person who has infringed a design right or an exclusive license intentionally.  In this case, as the negligence, rather than the intention, of an infringer is presumed by the law, a design right holder or an exclusive licensee must establish the intention of the infringer.  When deciding punitive damage compensation, (i) whether or not the infringer’s status is superior, (ii) an intention or a degree of recognition on the likeness of occurrence of a damage, (iii) the scope of damage suffered by a design holder or an exclusive licensee due to an infringing act, (iv) the economical benefits obtained by the infringer, (v) the period and numbers of infringing acts and etc, (vi) a penalty following an infringing act, (vii) the status of property of an infringer and (viii) the degree of an infringer’s effort to relieve a damage should be considered.

  B. Change of Standard for Deciding the Amount of Royalty

    Where a design right-holder or an exclusive licensee claims compensation for any loss incurred by a person who infringed the design right or exclusive license by intention or negligence, the design right-holder or the exclusive licensee may claim the amount that he/she would usually receive for working the registered design as the loss that he/she sustained.

3. PATENT ACT

Changing Patent Infringement Crimes from An Offence subject to Complaint to a Crime not Prosecuted against Objection

   Any person who has infringed a patent right or an exclusive license shall not be prosecuted against an objection from a patent right holder or an exclusive licensee. Accordingly, without a complaint and even after the 6 months limitation of complaint, the infringer comes to be prosecuted.