[Patent Talk] Why Warning Letters for Trademark Infringement Were Sent Before Pepero Day

< Screen capture from SBS Biz News on YouTube, 2022.11.04 >

Lotte Confectionery's legal team reportedly sent trademark infringement warning letters to numerous sellers on online shopping malls who were using the name 'Pepero' ahead of last year's Pepero Day (November 11). Some have criticized the warning letters as excessive, considering that Lotte Confectionery has commercially exploited 'Pepero Day,' which became popular naturally among ordinary consumers. But there is a reason why Lotte Confectionery has no choice but to assert its rights so aggressively.

Even after a trademark is registered, if it becomes a generic name or a customary mark for the designated goods, infringement can no longer be asserted. The most well-known example is the 'Choco Pie' trademark. Orion (formerly Tongyang Confectionery) was the first to manufacture and sell Choco Pie in Korea and obtained a trademark registration for 'Orion Choco Pie' in 1976. When Choco Pie became popular, Lotte Confectionery also launched a Choco Pie product and obtained a trademark registration for 'Lotte Choco Pie' in 1980.

Sensing a threat, Orion filed an invalidation trial against Lotte Confectionery's 'Lotte Choco Pie' mark in 1997. The case went all the way to the Supreme Court, which held in 2001 that 'Choco Pie' had become a generic name or customary mark for the goods in question, meaning 'a product consisting of a small round biscuit-cake filled with marshmallow and coated with chocolate,' and had therefore lost its distinctiveness. In other words, because consumers perceive 'Choco Pie' as referring to a type of product rather than a brand, it can no longer function as a trademark.

There are many cases in which the enforcement of trademark rights has been restricted, or the trademark invalidated, because the mark became generic. 'Buldak,' 'JEEP' and 'ASPIRIN' were all originally registered trademarks, but after they became famous and came to function as common nouns for the products, the trademark rights were invalidated. Lotte Confectionery appears to have sent the warning letters to reduce this risk of genericide.

A trademark does not always become generic simply because it becomes famous, but the risk can be said to increase. Particular care is needed when registering a trademark for a new product that did not exist before. If consumers come to regard the trademark...