Despite evidence of substantial consumer awareness of the reputation of a well-known mark, the Federal Court has been prepared to hold a later mark which may still be considered confusingly similar.
Allergan is the owner of the well-known trade mark BOTOX, which is also registered in class 3 for "cosmetics, face creams and lotions; skin creams and lotions”.
The Australian Trade Marks Office had previously accepted an application for the mark No-Tox in class 3 for similar goods, and had also rejected opposition proceedings by Allergan against the registration of the application.
Not surprisingly, Allergan appealed that decision to the Federal Court (Allergan, Inc v Di Giacomo  FCA 154). In those proceedings Justice Stone has agreed with Allergan and refused registration of No-Tox, finding it to be confusingly similar to BOTOX.
The Court found the two marks were deceptively similar on their face. The judge noted that the two marks were visually and aurally similar in that they differed only in the first letter, have the same length and both have two syllables. (BOTOX is the only mark on the Register with the suffix “-otox” in class 3.)
Allergan was also successful in establishing that there was a real likelihood of deception or confusion to consumers between the marks No-Tox and BOTOX because of their reputation in the mark BOTOX. His Honour considered that consumers might consider BOTOX and No-Tox products to be complementary in the same way as “coke” and “diet coke” products.
His Honour found Allergan’s reputation in the mark BOTOX was considerable. He based this on four main factors:
- BOTOX products were widely known in Australia as demonstrated by the results of an AC Nielsen survey showing that from 2003-2008, between 74% to 94% of surveyed females aged 25-54 years old knew of BOTOX as a cosmetic product or procedure.
- Australian and global sales of BOTOX products were substantial and had grown by 2008 to exceed $35 million in Australia and $1.3 billion globally.
- Advertising and promotional expenditure for Allergan’s BOTOX goods was considerable and had grown by 2008 to $8.6 million in Australia and $442 million globally.
- Allergan’s BOTOX goods also received significant general press.
In the past, it has been successfully argued that a strong reputation in a mark lessens the likelihood of confusion. However, what is clear form the decision is the Court’s preparedness to consider the practice of brand extension from core brands and products to derivative brands, such as the Coke, Diet Coke example noted above.
The applicant for the No-Tox mark did not participate in the appeal and therefore no contrary arguments were submitted against those in Allergan’s favour. Nevertheless, Justice Stone was clearly satisfied that No-Tox and BOTOX were confusingly similar regardless of Allergan’s reputation in its BOTOX mark.