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
A. Introduction
of Punitive Damage Compensation System
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
A.
Introduction of Punitive Damage Compensation System
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.