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Focus: Allergan, Inc. v Di Giacomo [2011] FCA
1540 Services: Commercial, Intellectual Property &
Technology Industry Focus: Energy, Resources &
Infrastructure, Financial Services, Medical & Pharmaceutical,
Property, Insurance
The Federal Court has set aside a decision of the Registrar of
Trade Marks to allow registration, instead holding that there was a
real likelihood that Australian consumers would be deceived and
confused upon encountering the trade marks BOTOX and NOTOX in
relation to cosmetic products.
On 2 November 2008, Di Giacomo applied for registration of the
trade mark No-Tox in respect of "Facial care products
(cosmetic)" in class 3. The application was examined,
accepted for registration and advertised as accepted in the
Official Journal of Trade Marks.
Allergan, the owner of an Australian Trade Mark Registration for
BOTOX for "Cosmetics, face creams and lotions; skin creams
and lotions" in class 3 opposed registration of No-Tox on
the basis that No-Tox and BOTOX were deceptively similar and likely
to lead to confusion.
Despite Di Giacomo not filing any evidence or submissions, the
Registrar's delegate determined that there was no deceptive
similarity between BOTOX and No-Tox and no likelihood of confusion
arising from the reputation of the BOTOX trade mark.
Allergan appealed the Registrar's decision to the Federal
Court on the basis that No-Tox was substantially identical or
deceptively similar to BOTOX and because of its reputation in
relation to BOTOX, Di Giacomo's use of No-Tox in relation to
"Facial care products (cosmetic)" was likely to
deceive or cause confusion. Di Giacomo did not file an appearance
to contest the issue before the Federal Court.
Section 44 of the Trade Marks Act 1995 (Cth) provides
that an application for the registration of a trade mark must be
rejected if it is substantially identical with, or deceptively
similar to a registered trade mark in respect of similar goods or
closely related services and the application has a later priority
date than the registered trade mark in respect of the similar goods
or closely related services.
Section 60 of the Trade Marks Act provides that
registration of trade mark may be opposed on the ground that
another trade mark had, before the priority date for the
registration of the first-mentioned trade mark in respect of those
goods or services, acquired a reputation in Australia and because
of the reputation of that other trade mark, the use of the
first-mentioned trade mark would be likely to deceive or cause
confusion.
Allergan contended that the critical question for the court was
whether there was a real risk that use of the No-Tox mark in
relation to cosmetic facial care products would cause ordinary
consumers to wonder if there might not be some association between
those products and products bearing the BOTOX mark.
In aid of its case, Allergan filed substantive evidence of:
the widely known awareness (74% to 94%) of BOTOX with female
survey respondents 25 to 54 years of age as a cosmetic product or
procedure in Australia
the high and increasing Australian ($15.2 million to $35.9
million between 2003 and 2008) and global (US$239.5 million to
US$1.31 billion between 2003 and 2008) sales of BOTOX branded
products
the substantial and increased amounts of money spent promoting
BOTOX branded products in Australia ($2.1 million to $8.6 million
between 2003 and 2008) and around the globe (US$75.4 million to
US$442 million between 2000 and 2008), and
extensive Australian media coverage referring to BOTOX.
Due to the visual and aural similarity of No-Tox and BOTOX, the
likelihood that No-Tox and BOTOX goods would be sold in similar
trade outlets and the substantial reputation of BOTOX at the time
the No-Tox was filed, Stone J held that there was a real and
tangible danger that consumers would view BOTOX and No-Tox as
complementary in the same way as 'coke' and 'diet
coke' might be seen as complementary products and if
registration was permitted, this would enable No-Tox to enjoy a
free ride on the substantial reputation of BOTOX.
Take away
Given the past success of the line of argument that the
existence of a substantial reputation reduced the likelihood of
confusion, the judgment is a valuable one for trade mark owners of
well-known brands as it demonstrates that in the case of
deceptively similar marks, the Federal Court is aware of and
willing to consider the idea of complementary products and brand
extension.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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