A COMPANY whose Irish operation manufactures the worldwide supply of Botox — used widely as an anti-wrinkle agent — yesterday won its High Court case against a Dublin firm for infringing its trademark by using a similar name in one of its cosmetic products.
Allergan Incorporated, California and Delaware, USA, and Allergan Pharmaceuticals Ireland Ltd, Westport, Co Mayo, who own the trademark name Botox claimed the use of the word Botoina by a rival infringed its registered trademarks and causes confusion among consumers. Allergan also sought an order restraining the “passing off” of goods under the name Botoina or any other confusingly similar names or marks, along with damages.
It brought proceedings in the High Court’s big business division, the Commercial Court, against Ocean Healthcare of Convent Road, Blackrock, distributors of Botoina and one of a number of cosmetics produced by Swiss-registered firm Labo.
Ocean denied the claim and contended that Botox was a weak trademark which had acquired a generic quality. It also claimed Allergan never objected when it registered Botoina in Ireland and it was only after it was launched that the court proceedings were initiated.
During a hearing lasting several days before Mr Justice Brian McGovern, the court was told Allergan has initiated similar cases in 75 of the 110 countries where Botox is sold.
The court heard Allergen has had huge success with Botox which was first used in the in the 1970s to treat severe eye squint and later was applied for cosmetic purposes as well as to a number of other medical conditions.
Around 1990, Allergen adopted the trademark Botox and by 1997, worldwide sales were $90.1 million (€57m). By 2005, they had risen to $830.9m, with 43% of the product being used for cosmetic purposes. In Ireland, sales of Botox rose from €117,832 in 1999 to €495,482 in 2005.
The court heard the essential difference between the two products is that Botoina does not contain the active ingredient, botulinum toxin.
Allergan maintained the word Botox could not be used in a generic way because, not only is it trademarked, but the Botoina product does not contain this active ingredient.
Botoina can be put on the skin by the user with a syringe-like applicator and rubbed in afterwards. Botox can only be supplied under prescription and administered through a syringe by a doctor.
Botoina is sold is a vial along with the syringe-like applicator to, the manufacturers said, allow the user to accurately distribute the cream. It is also advertised with a photograph of this syringe-type applicator with the words: “Botoina: no more wrinkles.”
Ruling in favour of Allergen yesterday, Mr Justice Brian McGovern rejected Ocean’s claim that Botox is a weak or generic mark and he found that it was being done to enable Botoina to “piggy-back” on the goodwill of the Botox name.
The judge was satisfied both products were marketed at the same consumers and would be sought by people seeking to “eliminate or ameliorate the effect of wrinkles or lines on the face”.
The judge had considered visual, aural and conceptual similarities between the products’ marks and he had regard to the purpose for which each was intended.
He said there could be no doubt that Botoina sought to capture the same market and the publicity and manual produced for pharmacies selling it showed the defendants were “trying to create an interface” between the two products which would be somewhat blurred.
He said the use of the word Botoina creates the likelihood of confusion where “relevant members of the public” could be mistaken as to its origin.
The judge found that the defendants were therefore guilty of passing off Botoina and infringing the Botox trademark.
He adjourned for two weeks the question of damages and the question of what reliefs should be given to Botox to prevent further infringements.
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