Multiple "Choco Pie" Trademarks: How Genericization Leads to Trademark Loss

The Famous Name "Choco Pie" Was Originally a Trademark,
But Trademark Rights Can No Longer Be Asserted
Genericization of Trademarks Allows Anyone to Use Them If Not Properly Managed
"Buldak" Also Lost Trademark Rights Due to Lack of Response
Korean Intellectual Property Office: "Active Management Is Essential"

Examples of Trademark Genericization Cases. Provided by the Korean Intellectual Property Office.

[Asia Economy (Daejeon) | Reporter: Jung Ilwoong] Typically, the term "Choco Pie" brings to mind a round pastry with a chocolate coating and marshmallow filling. Originally, "Choco Pie" itself was a trademark. However, because the original trademark holder did not respond appropriately when competitors began using the name "Choco Pie" as a product name, the term has now become genericized, meaning anyone can use it without issue.

In response, the Korean Intellectual Property Office urges trademark holders to exercise careful attention to prevent the genericization of their trademarks.

According to the Korean Intellectual Property Office on July 8, trademark genericization occurs when a particular trademark is freely used by other companies in the same industry or by consumers, causing the trademark to become so well-known that it refers to the product itself rather than the specific source.

The problem is that once a trademark becomes genericized through this process, it can no longer indicate the origin of the product, resulting in a loss of trademark value. In fact, even if the trademark is registered, the holder may not be able to assert trademark rights.

Cases of trademark genericization are not limited to Choco Pie. For example, "Buldak" was registered as a trademark in 2000, but as the dish gained explosive popularity in 2004, more people began to associate "Buldak" with spicy chicken dishes in general.

Meanwhile, because the original trademark holder did not actively respond during this period, and when a dispute over the Buldak trademark eventually arose, the court did not recognize the trademark rights. At the time, the court ruled (April 24, 2008, Case No. 2007Heo8047) that another company using the name "Buldak" was not infringing on the trademark rights of the original holder.

Other representative examples of trademark genericization, where trademark rights can no longer be claimed, include Magic Block, Dry Ice, App Store, and Yo-yo (toy).

The likelihood of genericization is even higher for trademarks used on new types of products, as consumers tend to refer to new products by their trademark rather than by a generic product name.

Therefore, the Korean Intellectual Property Office advises that trademark holders should actively manage their trademarks to clearly distinguish between the trademark and the product name in order to prevent genericization.

To this end, trademark holders should promptly file claims to prohibit unauthorized use of their trademarks as product names or seek damages for infringement, thereby controlling indiscriminate use of the trademark by other companies.

Additionally, if consumers or the media use the trademark as a product name, it is important to continuously promote the fact that the term is a registered trademark and to inform consumers and the media of the separate product name.

Mok Seongho, Director of the Trademark and Design Examination Bureau at the Korean Intellectual Property Office, stated, "As new types of products are rapidly increasing, the risk of trademarks being mistaken for product names is also rising these days," and advised, "Trademark holders must actively manage their trademarks to ensure a clear distinction between the product name and the trademark."

This content was produced with the assistance of AI translation services.