Kim & Chang achieved a victory for Allergan Inc. in an invalidation action of the mark BOTONIX (the “Subject Mark”) covering cosmetics in Class 3. This is an important win for Allergan (the “Plaintiff”) because they do not own a registration for the mark BOTOX in Class 3 in Korea, and also, this is the first case where the Korean Patent Court invalidated a somewhat dissimilar mark on the basis that consumers would be reminded of the famous BOTOX mark.
Details:
The Defendant obtained a registration with the Korean Intellectual Property Office (“KIPO”) for the Subject Mark designating “cosmetics for skin care” in Class 3 on January 7, 2013, and commercialized the Subject Mark on cosmetics, such as anti-wrinkle serums. The Plaintiff filed an opposition and a subsequent invalidation action at that time, but KIPO held that there could be no consumer confusion because the Subject Mark was not similar to the Plaintiff’s famous BOTOX mark. Meanwhile, consumers were referring to the Defendant’s Botonix product as “BOTOX that can be applied” in their blogs and in the comments section of the Defendant’s website. The Defendant used this phrase to actively market its products.
The Plaintiff owns a registration in Korea for the mark BOTOX in Class 5 designating “wrinkle treatment injections,” but does not own a registration for the mark in Class 3. In 2004, KIPO had previously denied Allergan’s attempts to register BOTOX in Class 3 finding that “Botox is a substance used to treat wrinkles, and thus if used on cosmetics, the mark lacks distinctiveness as it would be describing the nature of the product.” Furthermore, the intense popularity of BOTOX as a wrinkle treatment injection in Korea unfortunately leads to use of the mark BOTOX in a generic manner within the industry. The Defendant took advantage of KIPO’s 2004 decision and examples of generic uses of BOTOX to argue that the mark BOTOX lacks distinctiveness in connection with cosmetics.
Our Representation:
On appeal to the Patent Court, Kim & Chang asserted that KIPO’s 2004 decision was unjust, that BOTOX is the Plaintiff’s famous mark, not a generic term, and that the likelihood of consumer confusion is high (e.g., consumers might believe there is an affiliation between the parties or that the Plaintiff developed the BOTONIX product). Detailed evidence of Allergan’s campaign to prevent genericism of the mark was offered to the court, such as numerous warning letters sent throughout the medical industry, newspaper advertisements and communications with publishing companies to change how BOTOX is defined in their dictionaries. Additionally, several precedents dated after 2004 which acknowledge the fame of the mark BOTOX was also submitted to the court. We also submitted comments from costumers of the Defendant’s product stating that, “the name is similar to BOTOX,” “I am reminded of BOTOX,” “BOTONIX appears to be a modification of BOTOX,” etc., to emphasize that the Defendant hoped to remind consumers of BOTOX in bad faith.
Court Decision:
Adopting Kim & Chang’s arguments, the court held that the Subject Mark should be invalidated because there is a risk of consumer confusion, despite the lack of similarity between the compared marks. The court reasoned that the mark BOTOX is famous for “wrinkle treatment injections,” consumers would be easily reminded of the mark BOTOX, and there is an economic relationship between cosmetics and products bearing the mark BOTOX.
Related Topics