What recent decisions or legislative developments currently have the greatest impact on Korea’s trademark strategy?
The most significant recent ruling was our case on behalf of Louis Vuitton against “renovation” service providers who take supposedly genuine second-hand goods from their customers and use the materials to create entirely new products. This practice has proliferated in South Korea and other Asian countries, raising concerns for luxury brands as the availability of such products on the market could negatively impact their brand image and reputation.
Louis Vuitton received a favorable ruling from the court of first instance which found these commercial activities to be infringing. The defendant appealed and the case is currently pending at the Patent Court, with Korean media following closely. Given the importance of the legal issues and the stakes for both sides, it is highly likely that the case will eventually reach the Supreme Court.
You are renowned for your expertise in anti-counterfeiting in Asia. What further steps do you think the industry should take to raise consumer awareness about the dangers of infringement?
The dangers of counterfeit goods are obvious when it comes to products that are consumed or ingested (e.g. food, medicines, supplements) and critical mechanical parts (e.g. brakes, safety devices). Safety awareness efforts could be strengthened for other product categories where the risks and dangers are less obvious to the public and the willingness to purchase counterfeit goods is greater.
“There remains strong demand for counterfeit mobile phone batteries, chargers and cables, all of which have not been properly tested or certified and therefore pose a significant risk of fire or explosion. Even seemingly harmless counterfeit clothing, bags and shoes pose hidden risks and dangers from toxic materials, paints, allergens and harmful metals (such as lead). Increased awareness of these invisible risks may reduce people's appetite for counterfeit goods.
How would you address or respond to client concerns about using generative AI in private practice?
There have been some recent news stories about experiments with generative AI in relation to legal practice in South Korea. However, it is fair to assume that interest, while growing rapidly, is still in its early stages. In my opinion, the most rational and natural evolution of generative AI in legal practice is for it to be developed as a tool to increase efficiency, rather than replacing the role of humans.
We plan to introduce them cautiously once we are confident enough in the reliability of the tools. There have been many news stories about lawyers becoming overly reliant on flawed AI technology and failing to provide the necessary level of human intervention, leading to bad outcomes.
You have a reputation as a skilled litigator. What are the most important features of your strategy for winning in court?
Intellectual property is a highly specialized field with many nuances, making it difficult for a lay court to fully comprehend complex theories and principles. Therefore, a winning approach must start with an easy-to-understand story, supported by easy-to-understand logic and a sense of fairness.
Also, never underestimate your opponent. Always try to see everything from their point of view. This will help you predict their strategy and next steps, but it can also help you identify your own potential weaknesses and consider preemptive measures.
As a WIPO Domain Name Dispute Panelist, how do you foresee the demand for domain name applications changing over the next few years and why?
When I became a panelist over 20 years ago, domain names were a relatively new commodity, and domain name squatting was rampant. There were a huge number of domain names that had been acquired in bad faith for the purposes of profiteering, and there was a huge number of domain name disputes. At the time, I assumed that this number would eventually decline as companies developed more sophisticated registration strategies (such as obtaining registrations before announcing plans for a merger or rebranding) and domain name squatting became less profitable. To my surprise, this was not the case. New business and advertising models have allowed squatting to remain profitable under the right circumstances, and the same problems remain, even as new types of domain names are continually introduced. Disputes will continue to arise, and the need for domain name dispute procedures will remain healthy and robust, for the reasonably foreseeable future.