Australia: Federal Court refuses registration of No-Tox given deceptive similarity to Botox

Intellectual Property & Technology Alert
Last Updated: 11 March 2012
Article by Stuart Green

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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Stuart Green
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