Counterfeiting and other violations of intellectual property rights (IPRs) are posing a serious threat to the consumer safety and health, employment, tax revenue and economic growth of both developed and developing countries. Unchecked IPR infringemen...
Counterfeiting and other violations of intellectual property rights (IPRs) are posing a serious threat to the consumer safety and health, employment, tax revenue and economic growth of both developed and developing countries. Unchecked IPR infringement could also undermine product innovation and inventiveness of enterprises. Counterfeit and pirated goods violating legitimate intellectual property rights are usually produced, transported, distributed by the isolated underground networks, or sold in every country throughout the world. Once they cross the border, it is hard to suppress them afterwards. Sometimes it costs too much in terms of administrative cost and social charges. So the customs authorities are required to investigate and interdict the goods infringing intellectual property rights on a daily basis. Bearing this in mind, more and more states are staging internationally concerted efforts to tackle related issues. The World Trade Organization (WTO) and the World Customs Organization (WCO) are very active to solve such issues. WTO/TRIPs has established the multilateral norms to interdict the trade in counterfeit and pirated goods, but limited protective measures have left unsatisfactory results in combating IPR violations. To overcome the limit of TRIPs, WCO has developed a higher level of model law than TRIPs, which will be referred to and adopted by member states for proper legislation regarding border controls. WCO's new standards are supposed to enhance the border measures against IPR-infringing goods. Accordingly, they are faced with strong opposition from the developing countries.
The Korea Customs Service has continuously taken efforts to improve the local legislative and administrative systems to protect intellectual property rights by revising the IPR-related Customs Clearance Notification more than 11 times since its entry into force in 1994. Notwithstanding these efforts, however, Korea's level of IPR protection is deemed quite low enough for the United States Trade Representative to have Korea named on a priority watch list. Against this backdrop, the U.S. and Japanese companies attack Korean industries with the patented technologies while Chinese and foreign trading partners increasingly infringe intellectual property rights of Korean businesses. That's why sufficient and far-fetched measures are necessary to overcome the current situation.
This study was initiated when the writer once worked at a customs office with the following questions in mind: When allegedly IPR-infringing goods are waiting for customs clearance,
- What kind of IPRs are supposed to be infringed by the problem goods?
- What are the relevant laws and regulations in question?
- Whether the border measures implemented by customs authorities affect the rights of traders and other interested parties?
- Whether such border measures are conducive to the nation's economy and international trade as a whole?
In order to solve the above-mentioned problems, this study has been conducted in sequence as follows:
- Chapter 2 explains the historical background of various border measures and international rules, and the importance of border controls.
- Chapter 3 introduces world famous incidents regarding IPR-infringing goods, such as K-Mart case, Samsung PDP case, K2 trade mark case, and so forth. Also customs administrative and judicial judgments are analyzed in legal terms.
- Chapter 4 compares the local laws and WTO/TRIPs articles, and analyzes the WCO model law provisions to adopt into the Customs Act of Korea. Relevant provisions of major Free Trade Agreements (FTAs) are also examined.
- Chapter 5 compares the border measures of major trading countries, while Chapter 6 explains and assesses the status quo of Korea's border controls.
- After reviewing various issues and responses, Chapter 7 summarizes how to improve the current border control system.
- Chapter 8 makes significant suggestions in conclusion. In this regard, the writer discloses the result of a survey committed by the writer and the Korea Customs Service, and conducted by the Korea Customs Trade Institute. The survey deals with the key issues - what the answerer is aware of regarding the customs border measures and IPR protection, and what should be implemented and improved.
In Korea, as regards who is actually or likely to suffer from loss of income or damages by IPR-infringing goods, an affected holder of IPRs may apply for the provisional measure of the Trade Commission, or preliminary injunction of the court. It should be noted that the relief out of the Trade Commission's provisional measure or the court order of injunction cannot be employed with the IPR trespasser unidentified. Consequently, the preventive control and check of the Korea Customs Service against IPR-infringing goods during the export and import procedure are getting more and more important.
From this perspective, the advanced border measures require the following strategical and legislative policy change:
First, the function of the Customs office is restricted to the mere notification of probable IPR-infringement to the IPR holder, not the determination of actual IPR-infringement. If there takes place a dispute regarding the customs clearance suspension(holdback), it will be ultimately resolved by litigation. The customs clearance suspension(holdback) is regarded as inefficient for a provisional IPR relief. Therefore, the customs clearance holdback shall be operative as quasi-judiciary procedure. The Chief Customs Officer shall be entitled to determine whether the export or import is IPR-infringement or not, and to take necessarily prohibitive measures.
Second, as the current Customs Act limits the scope of IPRs applicable to customs clearance holdback to the rights which are so obligated by TRIPs, patent right or other IPRs are sometimes beyond the protection of TRIPs despite the intent of IPR holders. Therefore, to solve the above-mentioned problems and prepare for the conclusion of FTAs with major trading partners, it is necessary to enlarge the scope of IPRs protected by the border measures from the existing trademark, copyright, copyright adjacent right, computer program copyright to design right, patent right, industrial idea and design right, species protection right, and so forth.
Third, the current Customs Act prohibits the export and import of IPR-infringing goods but lacks the corresponding punishment provision. So such punishment provision should be included in the Customs Act to make its prohibition more effective.
Fourth, the collateral which an applicant for the customs clearance holdout is required to provide by the Customs Act is restricted to cash, etc., thus discouraging the border measures. It should be considered to exempt such collateral requirement and to expand the discretionary measures of customs authorities.
Finally, it is advisable to establish a specialized organization under the Korea Customs Service, which is assigned to analyze and decide whether a problem case amounts to IPR-infringement or not. Also it is inevitable to reinforce the human resources and infrastructure of IPR specialists.