I just participated as a panelist for the United States Commercial
Service Trade Winds-Asia Seminar for U.S. companies considering
investing and/or exporting to Korea, China, the Philippines, Japan and
Taiwan. The Seminar brought together over 150 U.S. investors and
exporters of products and services. The U.S. Commercial Service did a
wonderful job bringing together some of the leading experts on doing
business in Korea. I was impressed.
At the event,
the most frequent question I was asked was related to protecting
companies trademarks and other intellectual property. Additional posts
will be written on this topic by myself and Tom Coyner - Senior Commercial Advisor
for IPG Legal and head of Soft Landing Korea.
TOP TEN THINGS TO DO TO PROTECT YOUR BRAND IN KOREA
1. Do a Complete Intellectual Property Audit
Form a team to audit all your intellectual property including your
patents, trademarks, service marks, books, manuals, videos, software,
know-how, and trade secrets.
The team should include, at a minimum, a senior manager experienced in
the internal workings of the company and an experienced Korean-savvy international consultant (attorney
or intellectual property consultant) who is experienced in creating
inventories.
The team should send a tailored questionnaire to the heads of all your
company's departments. From the questionnaire and other ascertained
information, the team
should produce a complete intellectual property inventory that details
what intellectual property the company possesses and evidences how much
the intellectual property is worth to the company. (Protecting Your Intellectual Property in Korea)
2. Register your Trademarks and other IP in Korea
Yes,
your international filings are not good enough for Korea and much of the
rest of the world. As the U.S. Commercial Service notes: ``protection
of intellectual property and the laws governing enforcement of these
protections exist but are not necessarily extra-territorial. What is
understood and practiced in the United States is not always practiced in
Korea. . . .U.S. companies wishing to sell their products or services
in Korea
should first and foremost register their intellectual property rights
(copyrights, trademarks and/or patents) in Korea.''
3. Educate Korean Customs on What is your Product and What is Not your Product
A
few professionals in Korea, including professionals at IPG, do
presentations to Customs informing them of how to spot counterfeit
products. Some fakes are very difficult to spot and, also presentations
by your professionals will go a long way in getting the positive
attention of Customs of your seriousness of enforcing your IP rights.
4. Draft an Intellectual Property Protection Plan
The plan should include an internal monitoring and worldwide
registration and licensing scheme; an action plan to deal with
intellectual property violators and trolls; forming of a team
that is responsible for maintaining and fostering intellectual property
rights and making sure that intellectual property is properly reflected
in the company's financials.
5. Actively Engage Customs and the Prosecution
Us all
administrative avenues available to protect you products. Companies
that are perceived weak are companies that are more likely to be
targeted by counterfeiters, patent trolls and the like.
6. Actively Engage your Sales Channels
So much information can be garnered from those that are competing against counterfeiters and pirates.
7. Track the Importers of Counterfeit Products into Korea
The
Prosecution, generally, does a decent job. However, often it is
advisable to employ a professional to obtain the necessary information
and present the information to the Prosecution and Customs.
8. Integrate the Home Office with the Korean Entity
All too often the
Korean branch is totally out of the loop and hence unaware of
developments at the home office. The Korean branch, in not only
intellectual property, but in other company areas should at least be
near the loop.
9. Don't Forget Trade Secrets
I wrote an article on protecting trade secrets in Korea that may be found at: Protecting your Trade Secrets in Korea: Top 5 Things to Know Before Subjecting your Business to the Korean Market.
10. Get Professional Assistance
This speaks for itself. If you
don't have an experienced in-house team of Korean-based attorneys (and
often even if you do), you need assistance from professionals in Korean
IP law who have high-level contacts with the Prosecution and Customs.
___
info@ipglegal.com
Sean Hayes may be contacted at: SeanHayes@ipglegal.com. Sean is co-chair of the Korea Practice Team and Entertainment Law Team at IPG Legal.
Sean is the first non-Korean attorney to have worked for the Korean court system (Constitutional Court of Korea) and one of the first non-Koreans to be a regular member of a Korean law faculty.