Injunction against BOTO-EFFECT and BOTORELAX upheld

In B4U Ltd v Allergan Inc (Petition 1032/05, February 28 2005), the Supreme Court has upheld a decision to issue a preliminary injunction in relation to the use by local companies of the marks BOTO-EFFECT and BOTORELAX for a skin cream.

Allergan Inc and Tradis Gat Ltd (hereafter referred to as Allergan) brought a motion for a preliminary injunction in an action for trademark infringement against the defendants, B4U and Center for Cosmetics (Marketing, Laboratories and Training) Ltd, (hereafter referred to as B4U) (Civil Action 02094/04, January 12 2005). Allergan alleged infringement of its mark BOTOX, registered in Class 5 of the Nice Classification for various pharmaceutical preparations. It claimed that B4U's use of BOTO-EFFECT and BOTORELAX for a skin cream infringed its mark.

The District Court of Tel-Aviv Jaffa examined the claim for a preliminary injunction based on the accepted three-part test for showing confusing similarity, namely similarity in relation to sight, sound and various other factors (eg, customers, price and marketing channels).

Focusing first on the mark BOTO-EFFECT, the court concluded that the virtual identity between BOTOX and BOTO was sufficient to satisfy both the visual and phonetic requirements for confusing similarity. It then went on to give perfunctory attention to the other factors, stating that they are of only secondary importance. Despite apparent differences between the two marks with respect to at least some of these secondary factors, the court ruled that they were insufficient to tip the scales in favour of B4U, given the visual and phonetic confusing similarity between the respective marks, and the fact that they were used for products with the same purpose.

The court rejected the argument that because Allergan's mark was registered in Class 5, while B4U was using the BOTO-EFFECT mark for cosmetic products in Class 3, there was no actionable confusion. Without deciding the point under a regular infringement analysis, the court ruled that Allergan's mark was a well-known mark within the meaning of Section 1 of the Trademarks Ordinance. It supported this finding purely on affidavit evidence filed on behalf of Allergan.

Accordingly, the court found that the scope of protection for the registered and well-known BOTOX mark was broad enough to cover B4U's goods. Both marks were used for the treatment of facial wrinkles, such that "there existed in the minds of the public a connection between the marks ... [creating] a substantial risk that ... [Allergan] will be harmed".

Having come to a similar conclusion with regards to the BOTORELAX mark, the court issued a preliminary injunction ordering B4U to stop trading under its marks, and to either remove them from goods currently on the market or, if that was not possible, to remove the goods from the market.

On appeal for a stay of the preliminary injunction, the Supreme Court deleted the section of the order that required B4U to refrain from selling goods distributed before the date of the earlier decision (ie, January 12 2005) in order to enable it to concentrate on changing the packaging and labelling so as not to include the term 'BOTO' on goods distributed after that date.

Neil Wilkof, Herzog Fox & Neeman, Tel-Aviv