BOTOX®, a registered trademark of Allergan, Inc., an AbbVie Company, is well known worldwide as the brand name for an injectable prescription product containing botulinum toxin that is used to treat, wrinkles, crow's feet, facial creases, among other indications. 

To protect the goodwill and fame of the BOTOX® mark, in 2019 Allergan petitioned the Intellectual Property Trial and Appeal Board (IPTAB) to invalidate two marks, "BONOTOX" and its Korean transliteration "보노톡스" (the Subject Marks) owned by Bonotox Co., Ltd. ("registrant"). Allergan argued that the Subject Marks were confusingly similar to and likely to remind Korean consumers of its BOTOX® mark. Allergan also asserted claims based on the registrant's bad faith and the close economic relationship between the compared registered goods (cosmetics vs. pharmaceuticals). 

The IPTAB ruled in Allergan's favor and determined that consumers were likely to be confused given the fame of the BOTOX® mark and the close economic relationship between the compared goods. The IPTAB rejected the registrant's argument that the BOTOX® mark had lost distinctiveness, noting Allergan's active use of the trademark, evidence of actual consumer confusion, and the dissimilar brand names used by other third parties for similar products. 

The registrant appealed the decision to the Patent Court, largely based on reasserting that the BOTOX® mark was now generic or a common term for anti-wrinkle treatments, and that Allergan should not be permitted to monopolize such a non-distinctive term. The Patent Court also disagreed with the registrant, affirming that the IPTAB was justified in invalidating the Subject Marks due to the likelihood of confusion and consumer association between the marks. The Patent Court further noted that several dictionaries refer to BOTOX® as a trademark and that numerous relevant publications (including the Ministry of Food and Drug Safety's own official publication) do not use BOTOX® in a generic manner, and commended Allergan's substantial efforts to prevent genericide despite the fact that Korea does not allow advertising of prescription drugs.

The registrant attempted a further appeal to the Supreme Court, which finally dismissed the registrant's appeals, thus confirming that BOTOX® is Allergan's famous trademark in Korea. The genericide issue regarding the BOTOX® mark was put to rest, and the Subject Marks were finally invalidated and removed from the Korean trademark registry.