Introduction of Centralized Jurisdiction on Infringement Actions

It is proposed that a centralization of jurisdiction involving a centralized first instance and a centralized second instance will be introduced in the Korean patent litigation system concerning patent infringement actions. Currently, all of the district courts may have jurisdiction for infringement actions and their decisions may be appealed to higher civil courts. According to the proposal, the Seoul Central District Court and the Daejeon District Court will have exclusive jurisdiction on the first instance of patent infringement actions and their decisions may be appealed to the Patent Court. According to the change, the Patent Court will have exclusive jurisdiction on appeals of patent infringement actions as well as patent invalidation actions.

It is expected that the bill will be laid before the National Assembly on April 2013. A government official said that it will take effect in 2015.

The introduction of the centralized court system for patent infringement actions is to further increase specialization and efficiency and to remedy the shortcomings of the current jurisdiction system. Courts without specialties on patents and trademarks have not been sufficiently effective to address patent protection, and they have resulted in the contradicting court decisions in different courts. A government official said that “the centralized system will provide a consistent interpretation and accurate application of patent laws.”

If the above bill is passed, the time duration for a patent infringement action is expected to be shortened by about 1 year. Currently, the first instance takes from 18 months to 24 months, and the second instance takes about 12 months.

Supreme Court en bank decision, infringement suit rejected when there is obvious ground for trademark invalidation

The Supreme Court held an en banc decision that the trademark proprieter’s right may not be acknowledged if there is an obvious ground for invalidation regarding the registered trademark. The en bank decision overturns their court precedent holding that the trademark proprieter’s right must be acknowledged before the trademark is invalidated.

The Supreme Court affirmed the Higher Court’s decision in favor of Highwood (Yangsan) for Highwood (Yangju) vs. Highwood (Yangsan).

The Court stated that “Highwood (Yangju) registered a trademark of ‘Highwood’ that has obvious ground to be invalidated, and then it claimed injunctions and damages to Highwood (Yangsan). Acknowledging such right confers an unjust interest to the proprieter, so the plaintiff’s request cannot be admitted even before it is invalidated.” As to the reasons for invalidation, “the word ‘highwood’ is a compound word meaning high-quality material made of woods, and it merely indicates raw materials used and the quality and superiority of the goods.”

The plaintiff, Highwood located in Yangju, established a company in 2001, has been producing a non-metal molding for building materials. When the defendant, Highwood located in Yangsan used the same trademark to sell building materials, plaintiff filed an infringement suit against the defendant alleging that Highwood (Yangsan) was infringing the trademark. The court of first instance followed the court precedent and held in favor of the plaintiff stating that it cannot be said that the trademark is obviously to be invalidated, and thus cannot deny the validity of the mark until it is invalidated.

The court of the second instance, however, overturned the decision of the court of the    first instance stating that “the trademark ‘highwood’ merely indicates raw materials used and the quality and superiority of the goods, so it falls under the ground for invalidation.” The decision of the second instance contradicted the court precedent.