An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act (UCPA), which will come into force on July 18 2017, was recently published. Under the new amendment, infringers that violate the 'dead copy' provision of the UCPA may be subject to imprisonment for up to three years or a fine of up to KRW30 million (approximately $24,000). Additionally, the amendment permits the Korean Intellectual Property Office or local government offices to investigate potential dead copy violations on their own initiative, even in the absence of a complaint from a competitor.
Under the dead copy provision, the act of selling, leasing, displaying for sale or lease or importing or exporting a product which imitates the appearance of another's product (eg, the shape, pattern, colour or a combination of such attributes) is prohibited as an unfair competitive act, provided that:
- the imitation product is sold, leased, displayed for sale or lease or imported or exported within three years of the date on which the original product was first created; and
- the appearance of the imitation product is not common to products of the same type.
This provision came into effect on July 21 2004 and has since played an important role in protecting unregistered designs in South Korea, as there is no requirement that the original product design be famous or that the product design be a source identifier (unlike other UCPA or trademark causes of action). To date, many court decisions have effectively stopped the manufacture and sale of dead copies in the context of product packaging, textiles, bedding, fashion products (eg, footwear, clothing and sunglasses), electronic devices (eg, fans) and other consumer goods. However, the provision previously allowed for only civil remedies, which have been an insufficient deterrent in some cases and also require parties to engage in costly civil litigation to enforce their rights.
By introducing criminal penalties for violations of the dead copy provision, this amendment will make it less arduous and expensive for parties – particularly first market entrants – to enforce their rights against infringing products.
For further information on this topic please contact Sung-Nam Kim or Angela Kim at Kim & Chang by telephone (+822 3703 1114) or email ([email protected] or [email protected]). The Kim & Chang website can be accessed at www.kimchang.com.