The Korea Customs Service (KCS) issued an announcement on 19 November 2018 regarding important proposed amendments to some of the articles in the Korea Customs Guidelines for Import and Export Customs Clearance Procedures for Intellectual Property Rights. The proposed amendments are expected to be approved and go into effect in December 2018. Here are three amendments which may have the greatest impact on brand owners.
Currently, a registered trademark, copyright, patent or design right may be recorded with the KCS for a term of only three years from the recordation date. Once the three years have passed, the rights holder must file a renewal request in order to maintain its recordation for an additional three-year period. If the underlying IP right expires before the end of the recordation period, the recordation will also expire.
However, under the recent amendments, the customs recordation term will be increased from the current three years to 10 years, meaning it will no longer be necessary to renew KCS recordations every three years. However, the recordation will still expire if the underlying IP right expires.
The KCS currently requires owners of patents or design rights who are seeking to record their rights with the KCS to submit evidence that one or more importers or exporters may be infringing those rights (eg, a civil or criminal complaint or a cease-and-desist letter). However, there is no such requirement for the recordation of trademarks or copyright.
Under the recent amendments, the KCS will no longer require infringement evidence when recording patent or design rights, consistent with the recordation process for trademarks and copyright, thus removing one potential barrier to recording patent and design rights with Customs.
If goods that are suspected of infringement are detained by Customs, the importer and exporter may challenge the detainment by submitting a petition for release, supporting evidence (of non-infringement) and a bond equal to 120% of the taxable value of the shipment. For small-to-medium sized companies, however, the KCS currently requires a reduced bond equal to only 60% of the taxable value of the shipment. The recent amendments further reduce the required bond for small and medium sized companies to 40% of the taxable value of the shipment.
Since many importers and exporters of infringing goods in Korea tend to be small-to-medium sized companies, the amendment is likely to result in more challenges to the detainment of suspicious goods.
For further information on this topic please contact Seung Hee Lee or Jason J Lee at Kim & Chang by telephone (+822 3703 1114) or email (firstname.lastname@example.org or email@example.com). The Kim & Chang website can be accessed at www.kimchang.com.
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