Obtaining Statutory Damages for Trademark Infringement – A Cross Border Approach under the Trademark Act of the Republic of Korea

** Originally published by DRI in the DRI IP Committee newsletter**

Recently the Korea Supreme Court issued a significant ruling, providing guidance on the availability of statutory damages in trademark infringement actions. This article discusses that ruling.

Under the Trademark Act of the Republic of Korea (“the Act”), a trademark owner is entitled to receive compensation for damage arising from its trademark being infringed. The trademark owner can receive one of the following types of damages[1]:

Actual Damages resulting from the infringement;

Estimated Damages – the Act provides various ways of estimating damages, such as an estimate based on the fees normally paid to the owner by someone using the trademark;

Statutory (Legal) Damages – compensation for a reasonable amount, not exceeding 50 million won (approximately $44,000 U.S. dollars).

In ordinary situations, when estimating damages, the trademark owner must prove that its trademark has been infringed as well as the fees that normally would be paid for the trademark’s use. The trademark owner is not required to claim and/or prove the existence of its damages in detail. However, if the trademark owner has simply registered the trademark without actually using it—which is permitted under Korean law, unlike U.S. law – then the infringer typically will deny the existence of any damages. Such an argument effectively would deprive the owner of any right to compensation, even though the owner has properly registered the mark.

Read more: http://www.ilnipinsider.com/2017/08/obtaining-statutory-damages-for-trademark-infringement-a-cross-border-approach-under-the-trademark-act-of-the-republic-of-korea/