Botox: holding the line against dilution | FB Rice

Joanne Martin discusses the recent decision of Allergan, Inc v Di Giacomo and Allergan's longstanding opposition of trade marks similar to BOTOX.

Allergan obtained its first registration for BOTOX in Australia in 1991 and now has registrations for BOTOX trade marks for cosmetic products, pharmaceuticals and medical advice services. Over the years, Allergan has been the opponent in 19 oppositions, to prevent registration by others registering trade marks similar to BOTOX. Allergan has prevented competitors registering Botolift Ette Votex, M-tox, Votex, Botonoxyl, Vodox, Votos, Botovitafirm, Rebotux, Labotoina, Notox, Eternalbotex, B-TEX GE, Puretox, and most recently NO-TOX. In many cases Allergan was able to convince the applicants to withdraw the applications or assign to Allergan.

However, in the recent decision of Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011), Allergan was unsuccessful in its opposition to registration of NO-TOX for cosmetic products and appealed to the Federal Court. At Trade Marks Office level, that is the Trade Marks Examiner and then the Hearing Officer, held that there was no deceptive similarity between the words BOTOX and NO-TOX and no likelihood of confusion arising between them notwithstanding Allergan’s extensive reputation in BOTOX. However, the Judge took a different position concluding:

That there is oral and visual similarity between the words NO-TOX and BOTOX in that they are of similar length, contain the same number of letters, are both disyllabic words and share the suffix OTOX.
Botox and NO-TOX are in the same market in that both products that could be sold through cosmetic clinics and medical practices.
Consumers would assume a relationship between BOTOX and NO-TOX, as complementary products in the same way as Coke and Diet Coke might be seen as complementary products.
Registration of NO-TOX would be likely to cause confusion and allow the NO-TOX product to have a “free ride” on the substantial reputation of BOTOX.

Allergan's strategy of assiduously defending its BOTOX trade mark from encroachment by other traders has been an effective one. In class 3 covering cosmetic products and class 5 covering pharmaceuticals, only a few 'TOX' suffix trade marks have been registered by other companies and many of these are built around the word ‘detox’. This monopoly stands Allergan in good stead against competitors seeking to use and register trade marks which are too close to BOTOX.

For further information on this subject, please contact Joanne Martin.