The High Court has ruled that Ocean Healthcare Ltd’s use and marketing of BOTOINA infringed two Community Trade Marks held by Allergan Inc. and amounted to passing off. The court found that consumers could mistake BOTOINA’s origin or believe it was connected with Allergan’s BOTOX product.
In a judgment delivered on 24 June 2008, Mr Justice Brian J. McGovern rejected the defendant’s reliance on BOTOINA’s registration as a national trade mark. He held that the statutory defence it invoked applied to a mark registered under the Trade Marks Act 1996, not to Allergan’s Community Trade Marks.
The dispute concerned BOTOINA, a wrinkle-treatment cosmetic distributed in Ireland by Ocean Healthcare. It was sold in a glass vial with a precision applicator shaped like a syringe. BOTOX is a prescription medicine containing purified Botulinum Toxin Type A; BOTOINA contains no Botulinum Toxin. The judgment described both products as being marketed to people seeking to reduce facial lines and wrinkles.
The judge found significant visual similarity between the names: their first four letters are the same. He also found phonetic similarity in their opening sounds. Considering the marks as a whole, their intended use and their target consumers, he concluded that BOTOINA created a likelihood of confusion about the origin of the goods. He held that the defendant infringed Community Trade Mark numbers 2015832 and 3700317, both for BOTOX.
The court also considered BOTOINA’s overall presentation, including its vial and syringe-like applicator. It found that the name and presentation together were likely to mislead consumers into believing the product was Allergan’s or connected with its business. The judge held that this amounted to passing off, allowing the defendant to benefit from goodwill established in BOTOX. He said the defendant’s intention was irrelevant to that conclusion.
The judgment recorded that the parties had left damages and the nature of the relief to be decided after the court determined infringement and passing off. The judge said he would hear the parties on the form of the order. The source judgment does not state the later order or any damages award.