[Trademark] “Can anyone use registered trademarks?”

- Use of a trademark that has become a commonly used mark does not constitute infringement upon a trademark right.

 

“Buldak” was registered as a trademark in 2000. “Buldak” has gone viral among young people who enjoy spicy flavors, and became a new trend in an instant, and therefore people have come to recognize “Buldak” itself as a spicy chicken dish.

 

Under these circumstances in distribution markets, a trial to confirm the scope of rights (filed by an interested party) and a lawsuit claiming that the trademark “Hongcho Buldak” in the name of a latecomer does not fall within the scope of the earlier filed trademark “Buldak” were lodged.  In the trademark disputes, the court held that since “Buldak” is already widely known as the name of a dish, use of “Buldak” by latecomers does not constitute infringement upon a trademark right.

 

When a registered trademark becomes so well-known that it becomes a common name indicating related goods among consumers, the trademark is then considered a commonly used mark.  A trademark can easily become a commonly used mark when a brand name is particularly popular in the specific field of business or in a group of goods.

 

In addition to “Buldak,” “choco pie” is often mentioned as a representative example of a commonly used mark.  When people hear about choco pies that they have eaten since their childhood, they think of a snack cake consisting of round layers of cake with marshmallow filling and a chocolate covering.  Initially, “choco pie” was a trademark of a newly produced cake, but it has become a commonly used mark because competitors did not take appropriate measures when the name “choco pie” was used as a product name.

 

In order to prevent a trademark from becoming a commonly used mark, it is important for the registrant of the trademark to actively manage the trademark such that the trademark is clearly distinguished from a name of goods.

 

Allergan Aesthetics, a well-known pharmaceutical company, delivered an unusual notice for cooperation to the press.  In the notice, they clearly described that the name of the pharmaceutical product that has become an issue of a dispute between Korean pharmaceutical companies is “botulinum toxin” rather than “botox,” and Allergan requested that the corresponding name be used in future reports.

 

A trademark used on a new type of goods in this way is at high risk of becoming a commonly used mark.  This is because consumers tend to refer to an unfamiliar new product by a trademark rather than the name of the goods.

 

In order to prevent this, a registrant of a trademark needs to control the free use of the trademark by third parties by promptly filing requests forbidding trademark infringement or filing compensation claims for damage resulting from infringement as necessary when the trademark is used as the name of the goods by third parties without permission.

 

At the same time, when consumers or the media use a trademark as the name of a type of goods, it is also important to persistently communicate to the consumers and media the fact that the name is a trademark and the proper name of the goods.

 

With rapid increases in new types of products, there is a much higher risk of trademarks being mistaken for names of types of goods, and thus trademark management is more important for registrants than ever.  Registrants should bear in mind that, in order for the name of a type of goods to be clearly distinguished from the trademark, active trademark management is an essential factor to protect their trademark.