Botox vs Botumax: EGC rules TM case in favour of Botox

Nathan Fan is a JD Candidate at Osgoode Hall Law School

Whether it’s the topic of discussion in a cosmetics magazine or the latest legal defence, the botulinum toxin (aka ‘Botox’) makes its reputation known around the world. Thanks in part to the product’s marketing and placement in the Hollywood limelight, Allergan, Inc. has enjoyed a successful return on its Botox investment. However, protecting one’s trademark and reputation is not easy. In the latest in a string of trademark registration claims in the EU, the EU General Court (EGC) released its decision on 28 October 2010 regarding the registration of ‘BOTUMAX’ by fellow competitor, Farmeco. The EGC upheld the ruling of the Board of Appeal for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), which denied registration of the ‘BOTUMAX’ mark as it was found to be confusingly similar to the already registered ‘BOTOX’ mark.

Allergan is the holder of the community trade mark ‘BOTOX’ in the EU, both as a word mark and a figurative mark, registered in association with the pharmaceutical preparations for the treatment of various disorders and ailments under Class 5 of  the Nice Agreement on International Classification  of Goods and Services. On 5 June 2003, Farmeco applied to OHIM to register ‘BOTUMAX’ in association with similar goods under Classes 3, 5 and 16 and had the trade mark application published in the OHIM Bulletin on 21 June 2004. Allergan subsequently filed an opposition to the registration of ‘BOTUMAX’ on the grounds that it violates Articles 8(1)(b) and 8(5) of Regulation No. 40/94. The OHIM’s Opposition Division rejected Allergan’s opposition, but Allergan was successful in convincing the OHIM Board of Appeal to reverse the Opposition Division’s decision to allow the registration of ‘BOTUMAX’. The case before the EGC concerns the OHIM Board of Appeal’s decision, where Farmeco challenged the Board’s application of Articles 8(1)(b) and 8(5).

Claim under Article 8(1)(b):

Regarding the claim of an identical or confusingly similar trade mark registration (Article 8(1)(b)), the EGC held that the likelihood of confusion analysis must be from the perspective of the relevant public’s perception and be informed by the interdependence between the similarity of the signs and that of the associated goods or services. In this case, the relevant public was made up of “professionals and end-consumers of cosmetics [regarding] pharmaceutical preparations and printed material relating to those goods whose level of attention will be relatively high, given the goods in question”. The EGC held that the goods were identical, if not at least very similar, given that the goods associated with ‘BOTOX’ and ‘BOTUMAX’ both had the same intended purpose (i.e. medical treatment), belonged to the same nature of goods (i.e. healthcare products), and were sold in the same establishments (i.e. pharmacies).

The EGC also held that there was both visual and aural similarity between the two marks. Even though the two marks had different numbers of letters, the EGC held that the fact that both marks began with ‘bot’ and ended with an ‘x’ meant the marks were sufficiently similar to confuse the consumer. The presence of ‘uma’ in ‘BOTUMAX’ was not sufficient to diffuse the risk of confusion as “[t]he consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind”. Similarly, the EGC found that the marks were aurally similar. Although the length, rhythm and number of syllables differed, the first syllable and the final sound were identical. The intervening element ‘uma’ was not strong enough to displace the strong consonant and the resulting aural connection between the marks. Interestingly, the EGC, agreeing with the Board of Appeal, held that a conceptual similarity between the marks was impossible as ‘BOTOX’ and ‘BOTUMAX’ were ‘fanciful’ words. It was held that the word ‘BOTOX’ would not be perceived as a reference to the substance ‘botulinum’ as the most likely abbreviation for the word would be ‘botu’ and not ‘boto’.

The EGC also held that the ‘BOTOX’ mark had achieved a distinctive character and “enormous recognition” by the relevant public in the market for beauty treatment, as evidenced by the large number of publications, the amount of financial investment in promotions and the correlation of “impressive” sales and millions of users of the goods. Thus, in light of the high degree of similarity between the marks and the associated goods, the EGC held that the Board of Appeal was correct in finding a likelihood of confusion under Article 8(1)(b).

Claim under Article 8(5):

The EGC noted that three conditions must be satisfied under Article 8(5): (i) the marks at issue must be identical or similar; (ii) the earlier mark must have a reputation; and (iii) there must be a risk of trade mark ‘dilution’ or the ‘free-riding on the coat-tails’ of the earlier trade mark.  While the first two conditions had already previously been established by the Court with regards to similar goods, there was a lesser degree of similarity as regards to the other additional goods ‘BOTUMAX’ was associated with. However, the EGC held that given the reputation of the ‘BOTOX’ mark, “it is indisputable that a link might be made between the marks in dispute, in the mind of the public concerned by the goods covered by the mark applied for”. Thus, the Board was correct in finding that ‘BOTUMAX’ might cause consumers to make a link to ‘BOTOX’ and be led to think that the goods covered by ‘BOTUMAX’ were as effective as those of ‘BOTOX’  (or given the ‘max’ element, that the effectiveness was maximized). Further, the EGC also upheld the Board’s finding of a likelihood of dilution, as ‘BOTUMAX’ appeared “to be a derivative of the widely known earlier mark” and “will unquestionably result in the dilution of the distinctive character of the widely known earlier trade mark”.

The EGC’s decision comes as an interesting application of EU regulations of trade marks and seems to be consistently applied. In an earlier decision released on 28 September 2010, the EGC rejected the registration of the mark ‘SEROSLIM’ as it was confusingly similar to the previously registered ‘SEROSTIM’ mark, both in relation to pharmaceutical products registered under Classes 3 and 5. The applicant for “SEROSLIM” argued that “the relevant public will associate the element of ‘sero’…with blood serum without paying any special attention to it”. As a result, “[t]he difference of meaning between the elements of ‘slim’ and ‘stim’ will therefore become much more important”, causing the relevant public to be able to distinguish between their marks. However, the EGC rejected this notion, stating that “the average consumer does not have the knowledge that a professional in the sector would have with regard to the prescription of pharmaceutical products the marks of which are only slightly different”. With regards to the ‘BOTUMAX’ application, perhaps the average pharmaceutical shopper would require a secondary word in order to help differentiate the products at the point of sale. For example, the trade mark “COVERDERM BOTUMAX” in association with cosmetics is currently registered by Farmeco in the US as of 20 April 2010.