FEDERAL COURT OF AUSTRALIA
Allergan, Inc v Di Giacomo [2011] FCA 1540
Citation: Allergan, Inc v Di Giacomo [2011] FCA 1540 Appeal from: Opposition by Allergan Inc to registration of trade mark application 1270294 (Registrar of Trade Marks, 26 July 2011) Parties: ALLERGAN, INC v MERILYN DI GIACOMO File number: NSD 1364 of 2011 Judge: STONE J Date of judgment: 30 November 2011 Date of publication of reasons: 30 January 2012 Catchwords: TRADE MARKS – appeal from a decision of the Registrar of Trade Marks pursuant to s 56 Trade Marks Act 1995 (Cth) – Registrar dismissed applicant’s notice of opposition to registration of “No-Tox” mark – s 44 Trade Marks Act – whether mark substantially identical with or deceptively similar to applicant’s registered “Botox” mark – s 60 Trade Marks Act – likelihood of deception or confusion with applicant’s mark having regard to reputation of Botox in Australia – principles relevant – whether real, tangible danger – tangible danger that consumers would view Botox and No-Tox products as complementary – visual and aural similarity of the words – opposition allowed Legislation: Trade Marks Act 1995 (Cth) ss 27, 34, 44, 52, 56, 60, 215(6)
Federal Court Rules 2001 O58 r4(2) and (2A)
Trade Marks Regulations 1995 (Cth), Schedule 1
Cases cited: Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60
Kimberly-Clark Worldwide, Inc v Goulimis (2008) 253 ALR 76
Lomas v Winton Shire Council (2003) AIPC 91-83
McCormick & Co Inc v McCormick (2000) 51 IPR 102
New England Biolabs Inc v F Hoffman-La-Roche AG (2004) 141 FCR 1
Pfizer Products Inc v Karam (2006) 237 ALR 787
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519
Television Food Network, GP v Food Channel Network Pty Ltd (No 2) (2009) 80 IPR 314Date of hearing: 30 November 2011 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 35 Counsel for the Applicant: M J Darke Solicitor for the Applicant: Corrs Chambers Westgarth The respondent did not appear.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1364 of 2011
ON APPEAL FROM THE REGISTRAR OF TRADE MARKS
BETWEEN: ALLERGAN, INC
ApplicantAND: MERILYN DI GIACOMO
Respondent
JUDGE:
STONE J
DATE OF ORDER:
30 NOVEMBER 2011
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The appeal be allowed.
2.The decision of the Registrar of Trade Marks be set aside.
3.The opposition to the registration of Australian Trade Mark Application No. 1270294 be allowed.
4.Australian Trade Mark Application No. 1270294 be refused.
5.The respondent pay the applicant’s costs of this appeal and the opposition proceedings before the Registrar of Trade Marks.
6.The applicant provide to the respondent copies of these orders by registered mail and also by standard mail by sending them prior to 5 pm on 2 December to the address 10 Tilford Place,…
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Details
- Case
- [2011] FCA 1540
- Decision Date
CaseChat Overview and Summary
In Allergan, Inc v Di Giacomo, the Federal Court of Australia was asked to determine whether Allergan's opposition to the registration of "No-Tox" as a trade mark should be upheld. Allergan claimed that "No-Tox" was deceptively similar to its registered trade mark "Botox", which had a significant reputation in the Australian market, particularly for cosmetic treatments. The court was tasked with deciding if there was a likelihood of confusion or deception among consumers, which would warrant the refusal of "No-Tox" under the Trade Marks Act 1995.
The key legal issues revolved around whether the "No-Tox" mark was substantially identical or deceptively similar to Allergan's "Botox" mark, and whether there was a real risk that consumers would be confused between the two. The court considered the visual and aural similarity of the words, the reputation of the "Botox" mark, and the potential for consumers to perceive the products as complementary. The court also examined the evidence provided by Allergan to establish the reputation of "Botox" and whether this reputation could lead to confusion.
The Federal Court found that the visual and aural similarities between "No-Tox" and "Botox" were significant enough to cause confusion among consumers. The court noted that even without considering the substantial reputation of "Botox", the similarity between the two marks was likely to deceive or cause confusion. The court held that the registration of "No-Tox" should be refused under sections 44(1) and 57 of the Trade Marks Act 1995. Consequently, the appeal was allowed, and the decision of the Registrar of Trade Marks was set aside.
The final orders of the court were that the appeal be allowed, the decision of the Registrar be set aside, the opposition to the registration of the "No-Tox" mark be upheld, and the registration be refused. The respondent was also ordered to pay the applicant's costs of the appeal and the opposition proceedings before the Registrar of Trade Marks. Additionally, the orders were stayed until 14 December 2011 to allow for service of the orders on the respondent, and it was ensured that the respondent was duly notified of the appeal and its outcome.
The key legal issues revolved around whether the "No-Tox" mark was substantially identical or deceptively similar to Allergan's "Botox" mark, and whether there was a real risk that consumers would be confused between the two. The court considered the visual and aural similarity of the words, the reputation of the "Botox" mark, and the potential for consumers to perceive the products as complementary. The court also examined the evidence provided by Allergan to establish the reputation of "Botox" and whether this reputation could lead to confusion.
The Federal Court found that the visual and aural similarities between "No-Tox" and "Botox" were significant enough to cause confusion among consumers. The court noted that even without considering the substantial reputation of "Botox", the similarity between the two marks was likely to deceive or cause confusion. The court held that the registration of "No-Tox" should be refused under sections 44(1) and 57 of the Trade Marks Act 1995. Consequently, the appeal was allowed, and the decision of the Registrar of Trade Marks was set aside.
The final orders of the court were that the appeal be allowed, the decision of the Registrar be set aside, the opposition to the registration of the "No-Tox" mark be upheld, and the registration be refused. The respondent was also ordered to pay the applicant's costs of the appeal and the opposition proceedings before the Registrar of Trade Marks. Additionally, the orders were stayed until 14 December 2011 to allow for service of the orders on the respondent, and it was ensured that the respondent was duly notified of the appeal and its outcome.
Orders
Orders of the court
1. The appeal be allowed.
2. The decision of the Registrar of Trade Marks be set aside.
3. The opposition to the registration of Australian Trade Mark Application No. 1270294 be allowed.
4. Australian Trade Mark Application No. 1270294 be refused.
5. The respondent pay the applicant’s costs of this appeal and the opposition proceedings before the Registrar of Trade Marks.
6. The applicant provide to the respondent copies of these orders by registered mail and also by standard mail by sending them prior to 5 pm on 2 December to the address 10 Tilford Place, Morley, Western Australia 6062.
7. Orders 1 to 5 be stayed until 14 December 2011.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules.
Background
Background to the litigation
I am satisfied by the above evidence that the respondent was appropriately served with the appeal papers as well as the orders made at the directions hearing. That being so I am satisfied that the respondent was notified of the time, date and place of the hearing of the appeal. Nevertheless by way of further precaution I stayed the substantive orders for 14 days and directed the applicant to provide copies of the orders by standard and registered post to the respondent’s address of service and that orders 1-5 be stayed until 14 December 2011. BACKGROUND The respondent’s application for registration of the word “No-Tox” was made on 2 November 2008. The date of the application is the priority date for the No-Tox trade mark; Trade Marks Act, ss 12, 72. On 3 February 2009 the Registrar of Trade Marks (Registrar) accepted the application and pursuant to s 34 of the Act, notified both parties in writing of the decision. The application was then advertised as “accepted for registration” in the Official Journal of Trade Marks on 5 March 2009. On 5 June 2009 pursuant to s 52 of the Act Allergan filed a notice of opposition (notice) to the registration of No-Tox. A copy of that notice was also sent to the respondent. As mentioned previously, the respondent did not file any evidence or submissions in respect of the applicant’s opposition to registration of the No-Tox mark. In support of its grounds of opposition Allergan relied on a statutory declaration made on 15 January 2010 by Christine Valda Green, a sales and marketing director of Allergan together with exhibits and provided written submissions. The Registrar’s delegate held that there was no deceptive similarity between the Botox and No-Tox marks and no likelihood of confusion arising from the reputation of the applicant’s Botox mark. On 26 July 2011 she notified the parties of her decision in the following terms:I find that the opponent has failed to establish any of the grounds of opposition on which it is relying. I direct that application 1270294 may proceed to registration one month after the date of this decision.If the Registrar is served with a notice of appeal before the trade mark is registered I direct that registration may not proceed until the appeal has been discontinued, or, in the event of a decision by the court, if registration is not contrary to any court order.THE APPEAL Nature of appeal An appeal from a decision of the Registrar of Trade Marks or the Registrar’s delegate is by way of a hearing de novo. In New England Biolabs Inc v F Hoffman-La-Roche AG (2004) 141 FCR 1 at [44] the Full Federal Court, referring to an appeal under s 104 of the Patents Act 1990 (Cth) from the decision of the Commissioner of Patents said:The use of the word “appeal” by Parliament does not confer appellate jurisdiction. There is no doubt that the nature of the appeal provided for in s 104(7) of the Act is one such as to confer original jurisdiction upon the Court. The Court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: Jafferjee v Scarlett (1937) 57 CLR 115, at 119-120, 126; the Bayer case; and Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 142.
Evidence
Evidence Before The Court
Mr Darke, counsel for the applicant, submitted that while there are differences between the two grounds of opposition, in this case “the critical question for each is whether there is a real risk that use of the No-Tox mark in relation to cosmetic facial care products will cause some ordinary consumer to wonder if there might not be some association between those products to which the No-Tox mark is applied and products bearing the Botox mark”. I accept that this is so in this particular case and therefore it is not necessary for me to consider the two grounds separately. Nevertheless, given the very considerable evidence of the reputation of the Botox mark it is understandable that Mr Darke concentrated his submissions on the provisions of s 60.The applicant’s evidence In support of its opposition to registration of the No-Tox mark, the applicant relied on the affidavit of Odette Margaret Gourley sworn 28 October 2011, its exhibits and annexures. Among the annexures was the statutory declaration sworn on 15 January 2010 by Christine Valda Green. Ms Green is a sales and marketing director of Allergan Australia Pty Ltd, the Australian subsidiary of the applicant. Ms Green’s declaration had been before the Registrar’s delegate and parts of it were relied on as evidence in this appeal. In order to make out a ground of opposition to the No-Tox trade mark under s 60 the applicant must establish that the Botox mark has acquired a reputation in Australia which might give rise to confusion with the No-Tox mark. The applicant adduced evidence directed to establishing such a reputation. The evidence showed that since 1989 Allergan has manufactured and distributed pharmaceutical products under the Botox mark and has been doing so in Australia since November 1993 when the Therapeutic Goods Administration (TGA) approved the Botox product. The Botox mark identifies Allergan’s Botulinum Toxin Type A which is a purified neurotoxin product that acts specifically on nerve cells. It is manufactured and sold by Allergan and most popularly known for its use as a medical cosmetic treatment aimed at reducing or removing facial lines. The cosmetic benefits of Botox were recognised when its use for eye muscle disorders appeared to soften frown lines between the eyebrows. Its use as a cosmetic treatment was approved by the United States Food and Drug Administration in April 2002 and by the TGA in March 2002. In Australia the Botox branded product can be administered only by a medical practitioner or by a nurse under the direction of a medical practitioner. Material exhibited to Ms Green’s statutory declaration included newspaper articles, press releases and financial reports all of which supported Ms Green’s conclusion that “Allergan enjoys a substantial reputation and goodwill in the BOTOX trade marks in Australia”. Further support for this proposition is to be found in various annexures to the affidavit of Ms Gourley which included newspaper articles relating to the Botox mark and survey reports from 2003-2008 prepared by AC Nielsen. In particular the surveys yielded the information that: females aged from 25 to 54 were aware of Botox as a cosmetic product; sales between 2000 and 2008 had increased from $15.2 million to $35.2 million; and Allergan had increased spending between 2000 and 2008 on marketing and promotion from $2.1m to $8.6m. In addition the evidence also showed that Botox had received extensive media coverage during those years in all major newspapers in Australia as well as other media. Establishing reputation – s 60 of the Act
Decision
Reasons for decision
In my view the factors considered in [26] and [27] above are likely to cause deceive or cause confusion between the two trade marks even without recourse to the Botox reputation. Accordingly, registration of the No-Tox mark must also be refused pursuant to s 44(1) and s 57 of the Act. CONCLUSION For the above reasons, I was satisfied at the conclusion of the hearing on 30 November 2011 that the applicant’s opposition to the registration of the No-Tox mark should be upheld. I therefore ordered that the appeal from the decision of the Registrar of Trade Marks be allowed, the decision set aside and the Australian Trade Mark Application No 1270294 be refused. I also ordered that the respondent pay the applicant’s costs of this appeal and the opposition proceedings before the Registrar of Trade Marks. As mentioned earlier the respondent has not entered an appearance in this proceeding. In an exercise of abundant caution I also ordered that the above orders be stayed to 14 December 2011 and that the applicant send copies of the orders by registered and standard mail to the address given by the respondent on the application for registration of the No-Tox trade mark. In an affidavit of Odette Margaret Gourley sworn 19 January 2012 Ms Gourley deposes to having caused copies of the orders to be served on the respondent in accordance with my orders. There was no application by the respondent in respect of the orders by 14 December and accordingly the orders were final from that date.
Ratio Decidendi
Legal Principle Established
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