Q: Can you tell us about your team (size, practice focuses, key individuals, etc)?
A: Cho & Partners was established in 2002 by Tae-Yeon Cho and Ik-Hyun Seo and focuses exclusively on IP matters. From the start, the firm has represented foreign clients (mostly large multinationals) almost exclusively and our growth continues along these lines. Cho & Partners consists of 17 licensed attorneys.
Mr Cho has been practising IP law in Korea for more than 30 years and has been recognised by his peers as one of the leading Korean lawyers in the IP field.
Mr Seo is a US licensed lawyer, who practised IP law in the United States for several years before relocating to Korea, where he has worked for the past 18 years.
Mr Cho and Mr Seo have been recognised in all major legal publications as Korea’s leading attorneys in the field of intellectual property.
Miro Hong, a Korean trademark attorney, joined the firm in 2007.
Kathryn Lee, a US licensed lawyer, joined the firm in 2009.
Q: Established in 2002, the firm is relatively young. What have been the keys to your success in building up a world-class IP offering?
A: The firm was founded with the aim of creating a more focused, efficient and responsive practice that differs from other firms in Korea. The firm began with a few sophisticated, multinational clients and has continued to enjoy consistent growth due to recommendations and referrals from existing clients with essentially no marketing.
Q: From a firm perspective, what was your highlight of 2018?
A: We represented Louis Vuitton (LV) in litigation against LG Household & Health Care Ltd for trademark infringement based on a product from its subsidiary, The Face Shop. The Face Shop is a cosmetics manufacturer and retailer with more than 2,100 stores in 25 countries and the third largest market share in Korea’s cosmetics market. The Face Shop collaborated with US bag-maker My Other Bag to create product packaging with a drawing of a handbag. The design on the handbag was an imitation of LV’s famous monogram logo and mark. On 4 October 2018 the district court rendered a decision for LV, concluding that such use constituted dilution, and the decision was widely publicised in the media. On 23 October 2018 LG Household & Health Care Ltd filed an appeal, which is currently pending.
The US litigation between LV and My Other Bag has been widely reported and we have tested similar issues under Korean law. Therefore, the decision is of special interest to those in the IP sector both in and outside Korea.
Q: What are your main priorities for your firm’s development over the next five years?
A: Our firm has continued to develop due to recommendations and referrals from existing clients and our focus lies in continuing to provide the highest level of service to our clients.
Q: What are the main trademark challenges facing rights holders in Korea?
A: One main challenge is to keep up with the ever-changing online landscape as a venue for the sale of counterfeit products.
Q: If you could change one thing in the Korean trademark landscape, what would it be?
A: Korean courts tend to be conservative in the amounts of monetary damages awarded for infringement, so there is insufficient deterrence against infringing activities.
Q: Do you feel that the job of the trademark attorney/lawyer becoming easier or harder – and why?
A: The role of trademark attorneys is becoming more challenging and demanding due to the commoditisation of lower-level legal services and the increasing pressure for fixed fee and alternative fee agreements.
Q: How different, and in what ways, do you think the future trademark practice will be?
A: As trademark practice is moving towards the commoditisation of lower-level services, successful practices should focus on developing strong, high-level services that cannot be provided by low-level professionals.
Q: What do you most enjoy about working in the trademark space?
A: One enjoyment is the international nature of the practice and our peers. Another is the intellectual challenge of developing new theories and applying the law to novel situations in the quickly changing business market.
Q: What advice would you give to younger practitioners looking to pursue a career in trademarks?
A: How a young practitioner grows as a lawyer depends highly on what they are exposed to, so we would encourage young practitioners to work somewhere with good training and mentoring.