BOTOX's fame gives it smooth path to victory

The Daejeon District Court has granted Allergan Inc's petition to enjoin the holder of the mark HAIR VOTOX from using it for women's hair extensions (Decision 2006Gahap7505, June 14 2007).

Allergan is the US developer of Botox, a drug used in the treatment of wrinkles. Allergan holds several registrations in Korea for the mark BOTOX for "pharmaceutical preparations for the treatment of neurological abnormalities and muscle ectopia".

Upon discovering that Secret Woman, a Korean company, was using the mark HAIR VOTOX and its Korean transliteration in relation to hair protheses for women, Allergan filed a petition to enjoin Secret Woman from using the marks.

The Daejeon District Court granted Allergan's petition, holding that Secret Woman's use of the HAIR VOTOX marks amounted to unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act, even though Secret Woman held registrations in the marks.

The court considered the following factors:

• the status of BOTOX mark's registration in Korea and abroad;
  
  
• the length of use of the BOTOX mark;
  
  
• Allergan's advertising expenses and sales in Korea and abroad in relation to Botox;
  
  
• the number of references to the BOTOX mark in publications or online, or in advertisements for plastic surgeons, among other things;
  
  
• the considerable increase in sales of Botox products in 2002; and
  
  
• letters sent by Allergan to numerous plastic surgeons in February 2004 warning them against any generic use of the mark BOTOX.
  

The court concluded that BOTOX had been widely known among general consumers and traders as Allergan's trademark or business identifier long before Secret Woman applied to register its HAIR VOTOX trademarks on March 26 2004.

The court rejected Secret Woman's argument that BOTOX is a generic name or a commonly used sign in relation to any anti-wrinkle, face-lifting drugs containing botulinum toxin (the active element in Botox) - including Allergan's product - or any treatment using the same active element. The court held that it was difficult to conclude from the evidence filed by Secret Woman that BOTOX had lost its distinctiveness as a trademark and was recognized as a generic name.

Further, the court rejected Secret Woman's assertions that there was no likelihood of confusion between BOTOX and HAIR VOTOX because the goods to which the respective marks apply differ considerably in terms of clientele, channels of trade, shape and use.

Instead, the court concluded that general consumers or traders may be led to believe that Secret Woman's goods and business are somehow related to Allergan. In reaching this conclusion, the court cited the following factors:

• the well-known status of the BOTOX mark;
  
  
• the similarity between the marks at issue;
  
  
• the fact that both Allergan's and Secret Woman's products target female adults; and
  
  
• the characteristics of the modern industrial structure under which it is common for one company to produce and sell various products extending over a number of heterogeneous industrial areas.
  

The court then turned to the issue of whether Secret Woman's use of the HAIR VOTOX marks was the lawful exercise of its registered trademark rights. The court held that Secret Woman registered its marks with the intention of either free-riding on the goodwill of the well-known BOTOX marks, or promoting its sales through an implied affiliation with Allergan. The court concluded that because of this misuse and abuse of Allergan's mark, Secret Woman's use of the HAIR VOTOX mark cannot be acknowledged as lawful the exercise of rights under the Korean Trademark Act.

The decision is believed to be the first in the world to recognize the BOTOX mark as a well-known mark.

Sun-Nam Kim and Alex Cho, Kim & Chang, Seoul