Tide turns for trade mark owners

Tide turns for trade mark owners - Griffith Hack

23 April 2012

The Australian Federal Court recently found in favour of the trade mark owner of the well-known BOTOX pharmaceutical mark, resulting in the refusal of an application to register the mark No-Tox for cosmetics:Allergan, Inc. v Di Giacomo [2011] FCA 1540.

Allergan, Inc had to establish that the Botox mark had acquired a reputation in Australia which might give rise to confusion with the No-Tox mark

What you need to know

  • Owners of well-known trade mark marks can take comfort from this decision, as the overwhelming fame of the BOTOX mark did not lessen the likelihood of confusion with another similar mark (as previous decisions had found for other well-known marks).
  • Consumers can be confused between similar marks used for pharmaceuticals vs cosmetics, despite the different nature, trade channels and markets for each of these goods.

In the past few years, a trend has emerged in both the Australian Federal Court and the Australian Trade Marks Office (ATMO), where owners of famous marks have failed to prove that another mark is deceptively similar as their fame effectively works against them. The argument, in its extreme form, is that a consumer would never think that the owner of a famous mark would use anything but the identical mark.

Victim of its own success

For example, in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606, the Australian Federal Court found that the Maltesers mark (a well-known confectionery brand) would not be confused with the defendant’s Malt Balls mark (for an identically shaped confectionery product) as “it is highly unlikely that any ordinary consumer of chocolate confectionary could mistake something which is not called a Malteser for a Malteser. In that sense, Mars is a victim of its own success.”

In the ATMO case of
Rivers (Australia) Pty Ltd v River Island Clothing Co Limited [2011] ATMO 28 where the comparison was between the well-known fashion brand RIVERS vs the mark RIVER ISLAND, the hearing officer stated that the notoriety of the RIVERS mark was “yet another reason why relevant consumers are unlikely to confuse the RIVERS mark with the trade mark RIVER ISLAND … Where a mark is very famous, the comparison between the impression held in the consumer’s mind and the direct impression of the latter mark is one which may occur in a context in which the chances of the average consumer having forgotten the earlier mark is vanishing small.”

This trend appears to have been reversed in the recent Australian Federal Court case of
Allergan, Inc v Di Giacomo [2011] FCA 1540, where the notoriety of the Botox mark did not work against the owner of the mark. In that case, an individual, Ms Di Giacomo, sought to register the trade mark No-Tox for ‘facial care products (cosmetic)’ (class 3). The owner of the Botox mark, Allergan, Inc, opposed the application, but was unsuccessful before the ATMO. The Registrar’s delegate found that there was no deceptive similarity between the Botox and No-Tox marks and no likelihood of confusion arising from the reputation of the Botox mark. Allergan, Inc successfully appealed the decision to the Australian Federal Court. Ms Di Giacomo did not defend the opposition or appeal.

Establishing the ground of opposition

In order to establish the ground of opposition under section 60 of the Trade Marks Act 1995 (Cth) (the Act), Allergan, Inc had to establish that the Botox mark had acquired a reputation in Australia which might give rise to confusion with the No-Tox mark. Looking at Allergan, Inc’s extensive sales of Botox products in Australia, and evidence of the general notoriety and familiarity of the mark in Australia, the Judge easily concluded that such a reputation existed.

The Judge then considered whether, because of that reputation, the use of the No-Tox mark would be likely to deceive or confuse. The Judge accepted the tests from earlier cases, that while the mere possibility of confusion is not sufficient, it is not necessary that there be an actual probability of deception or confusion; what is required is a “real, tangible danger” of
it occurring. Applying these tests, the Judge found that there was a real risk of public confusion and deception if cosmetic
goods were marketed and sold under the No-Tox mark. Relevant factors were the visual and aural similarity of the words, their similar length and number of syllables, their aurally identical ‘otox’ sequence of characters, and their common emphasis on the first vowel sound, a long ‘ ’, instead of on N or B.

The Judge did not consider that confusion would be minimised just because the No-Tox goods could be sold over the counter and in a wide variety of outlets, whereas the Botox goods were subject to regulatory restrictions (requiring
administration in a medical setting).

Substantial Reputation

The Judge held that “given the substantial reputation of the Botox marks, there is, in my view, 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 ... If registration were permitted [Ms Di Giacomo] would be enabled to ‘free ride’ on the substantial reputation of the Botox marks.”

The Judge also considered the ground of opposition under section 44 of the Act, as Allergan, Inc was the owner of an earlier registration for the Botox mark for ‘cosmetics, face creams and lotions; skin creams and lotions (class 3)’, which conflicted with the goods in the No-Tox application. Again, for the same reasons referred to above, the Judge found that the marks were deceptively similar.

The encouraging aspect for owners of well-known marks is that the Judge found deceptive similarity using traditional tests of mark comparison, without recourse to the notoriety or reputation in the Botox mark, which has in the past worked against owners of well known marks.

The final word

The Judge therefore ordered that the No-Tox mark be refused and ordered that Ms Di Giacomo pay Allergan Inc’s costs of both the opposition and the appeal.

For further information, please contact:

Chris Sgourakis, Principal
Email Chris