BOTOX irons out BOTOINA
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In Allergan Inc v Ocean Healthcare Ltd ( IEHC 189, June 26 2008, published in July 2008), the Irish High Court has held that use of the BOTOINA mark amounted to trademark infringement and passing off as against the trademark BOTOX.
The Allergan Group produces Botox, a successful pharmaceutical product used in the treatment of facial lines and wrinkles. Allergan Inc owns some 400 BOTOX word and figurative trademark registrations worldwide for “pharmaceutical preparations” in Classes 3 and 5 of the Nice Classification. Allergan Pharmaceuticals (Ireland) Ltd manufactures the worldwide production of Botox.
Botoina, an anti-wrinkle cosmetic produced by Swiss-registered firm Labo Europa SRL, is distributed through Irish-based Ocean Healthcare Ltd. This product differs from Botox in that it is applied topically to the skin with a syringe-like applicator, rather than being injected into the skin. No medical intervention is necessary for Botoina (unlike Botox, which must be administered by medically competent professionals). Further, Botoina does not contain the active ingredient botulinum toxin, which is present in Botox.
Relying on Irish and Community trademark registrations for BOTOX, Allergan filed suit against Ocean, claiming:
- trademark infringement due to the confusing similarity between the marks BOTOX and BOTOINA; and
- passing off in respect of the get-up of the Botoina product.
Allergan sought injunctive relief and damages. Evidence was presented of:
- Allergan’s adoption of the BOTOX trademark in 1991;
- significant worldwide sales in excess of $800 million; and
- sales of approximately €500,000 in Ireland in 2005.
The High Court rejected Ocean’s defence that BOTOX was a weak trademark which had become generic. The court accepted evidence that the name Botox is an invented term. While it expressed some reservations about the derivation of the name, it was satisfied that it was coined to describe the specific formulation of botulinum toxin (type A), which is used in the preparation of Botox.
In comparing the marks, the court concluded that there were visual and phonetic similarities, particularly at the beginning of both marks. This conclusion appears somewhat surprising, particularly given the Office for Harmonization in the Internal Market’s findings of dissimilarity between the marks:
Interestingly, the Israeli courts have also rejected the notion that Botox is a generic term (see the decision of the Israeli District Court in Allergan Inc v B4U Ltd (Case CA 2332/04, MCA 20294/04, January 12 2005)).
In the present case, the court cited an Irish precedent, Unilever Plc v Controller of Patents, Designs and Trademarks ( IEHC 427), in which similarity was found between a family of earlier trademarks containing identical prefixes (eg, SUNSILK, SUNLIGHT, SUNFRESH and SUNSET) and the later mark SUNSMILE. In Unilever, the judge held as follows:
“Whether two words are used or a compound word is used, if the emphasis is clearly on the first word or prefix in the compound word, then it seems to me that this is the predominant sound and the visual impact of the mark.”
No family of trademarks was involved in the present case and the applicability of this principle in these circumstances could feature on appeal.
Looking at the similarity between the goods, given that Botox has a well-established reputation among consumers seeking anti-wrinkle treatment, the court held that:
- Botoina had the same purpose as Botox and sought to capture the same market; and
- there was an obvious link between the products, despite their different natures and methods of use.
The court acknowledged that motive was irrelevant to the issue of trademark infringement or passing off, but stated that it could not ignore some of the evidence contained in the discovery of Ocean. Correspondence between the manufacturer and distributor of Botoina discussed a draft press release which used the terms 'Botox' and 'botulinum toxin'. Ocean was advised to be careful about such use and the terms were absent from the published press release. Manuals for pharmacies contained several references to botulinum toxin. The court concluded that Ocean perceived that a connection might be made between botulinum toxin and Botoina. It was persuaded that Ocean had tried to create an interface or border between Botox and Botoina which would be somewhat blurred. As use of the BOTOINA mark was likely to create confusion in the marketplace as to the origin of Ocean’s goods, the court held that trademark infringement had occurred.
The court also held that the overall get-up and marketing of Botoina, and particularly the syringe-like applicator and the storage of the serum in a glass vial, was designed in a manner that was likely to cause confusion. The judge held that the effect was to enable Ocean to ''piggy back" on the goodwill of the BOTOX mark. Therefore, the court concluded that passing off had occurred.
Given that Allergan has initiated similar cases in 75 other jurisdictions where Botox is sold, it will be interesting to see how the courts in different jurisdictions tackle the issues - in particular, the significance of the prefix 'bot' and the arguments of competitors on the alleged invalidity or weakness of the BOTOX trademark registrations.
It is understood that the decision of the High Court in the present case is currently under appeal.
Sumi Nadarajah, FR Kelly & Co, Dublin
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