Real and tangible danger that consumers will view Botox and No-Tox products as complementary

Australia

In Allergan Inc v Di Giacomo ([2011] FCA 1540), the Federal Court of Australia has overturned a decision of a delegate of the Australian registrar of trademarks which, rejecting Allergan Inc's opposition, had allowed Ms Di Giacomo's registration of the trademark NO-TOX for facial care products (cosmetic) in Class 3 of the Nice Classification. The delegate had concluded that NO-TOX was not deceptively similar to Allergan's registered trademark BOTOX and that there was no likelihood of confusion arising from the prior established reputation of the BOTOX mark.

Allergan appealed the delegate's decision on two grounds:

  • the NO-TOX mark is substantially identical with, or deceptively similar to, Allergan's prior registered BOTOX marks in relation to similar goods (although only deceptive similarity was pressed); and
  • the BOTOX marks had, before the priority date of the NO-TOX mark, acquired a reputation in Australia such that the use of the NO-TOX mark by Di Giacomo would be likely to deceive or cause confusion.

Di Giacomo did not appear at the hearing of the appeal. In fact, it was found that she had not taken any part in any procedure since filing the application for registration of NO-TOX in Class 3. Regardless, the court found that Allergan had taken all reasonable steps to bring the proceeding to Di Giacomo's attention.

Allergan had submitted that, "while there are differences between the two grounds of opposition, in this case the 'critical question for each is whether there is a real risk that use of the NO-TOX mark in relation to cosmetic facial care products will cause some ordinary consumer to wonder if there might not be some association between those products to which the NO-TOX mark is applied and products bearing the BOTOX mark'".  The court accepted that this was so in this particular case and, therefore, it was not necessary to consider the two grounds separately.

Allergan demonstrated its reputation through:

  • evidence that, since 1989, it has manufactured and distributed pharmaceutical products under the BOTOX mark, and has been doing so in Australia since 1993 when the Therapeutic Goods Administration approved the Botox product;
  • AC Nielsen reports showing that, in the period from 2003 to 2008, between 74% and 94% of women aged 25 to 54 who undertook the survey were aware of Botox as a cosmetic product or procedure;
  • evidence of high and growing annual sales data;
  • evidence of Allergan's significant spend on promotion of the BOTOX product under the BOTOX mark; and
  • evidence of extensive Australian media coverage.

Having come to the view that the BOTOX marks enjoyed a significant reputation, the court considered the issue of confusion. It stated that the test, in circumstances where a current trademark owner opposes the application for registration of a later mark on the grounds that use of the later mark would be likely to deceive or cause confusion in the market in Australia because of the reputation of the prior existing registration, is whether there is a "real, tangible danger" of deception or confusion occurring (rather than a mere possibility). 

The court concluded that, given the substantial reputation of the BOTOX marks, there was a real and tangible danger that consumers would view the Botox and No-Tox products as complementary "in the same way as 'coke' and 'diet coke' might be seen as complementary products".

Having concluded that confusion between BOTOX and NO-TOX could arise, in the court's view, it followed that NO-TOX was deceptively similar to BOTOX.

Accordingly, the appeal succeeded and the registration for NO-TOX was refused on both grounds of appeal.

In coming to this decision, the court also confirmed that:

  • an appeal to the Federal Court of Australia from the Australia Trademark Office is not an 'appeal' such that it confers appellate jurisdiction, but confers original jurisdiction on the court; and
  • the balance of probabilities is the standard to which each ground of an opposition must be established.

Melissa McGrath and Lisa Ritson, Blake Dawson, Sydney

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