Trade mark decision

BL Number

O/116/05

Decision date

26 April 2005

Hearing officer

Mr J MacGillivray

Mark

BOTOMASK

Classes

03

Applicant for Invalidity

Allergan Inc

Registered Proprietor

Ms S Tussie

Invalidity

Section 47(1) & 2(a) based on Sections 3(3)(b), 5(2)(b), 5(3) & 5(4)(a)

Result

Section 3(3)(b): - Invalidity action failed.

Section 5(2)(b): - Invalidation partially successful. Failed in respect of "soaps, perfumery and essential oils".

Section 5(4)(a): - Invalidation partially successful. Failed in respect of "soaps, perfumery and essential oils".

Section 5(3): - Invalidation partially successful. Failed in respect of "soaps, perfumery and essential oils".

Points Of Interest

• 1. None

Summary

The applicant for invalidity owns a number of registrations in Class 5 for the mark BOTOX and variations thereof in respect of a range of pharmaceutical products including pharmaceuticals for treating muscles, headaches, wrinkles and sports injuries. The applicant filed details of extensive use from 1992 onwards and the Hearing Officer accepted that the applicant had a significant reputation in its mark at the relevant date 25 October 2002.

The applicant also claimed and filed evidence in support of its views that in use the registered proprietor deliberately tried to suggest a link with BOTOX, or that its goods would be used as an alternative to BOTOX, even though tests carried out shows that the product contains no botulinum toxin type A. Also while BOTOX is not licensed for cosmetic use doctors may prescribe it for such uses and thus the BOTOX product is very similar to the Class 3 goods of the registered proprietor. In the applicant's view the marks BOTOX and BOTOMASK are similar and BOTO in the BOTOMASK mark strongly suggests the presence of BOTOX. Statements from a Dr Saleh and a Dr Glancey state that patients have seen advertisements for the BOTOMASK product and they have asked if it contains BOTOX and if it is a non-injection alternative to BOTOX.

The registered proprietor's evidence came from a Mr Stephens who is director of a company providing corporate and trade mark law services. It would appear that the true beneficiary of BOTOMASK is Transformulas International Ltd but for particular reasons the mark is currently held in the name of Ms Tussie. Transformulas is said to have a worldwide reputation for the supply and application of beauty products. Errors in marketing material which suggested that the BOTOMAST product contained BOTOX have now been rectified.

At the Hearing the applicant asked to file new evidence about use of a BOTODERM mark in France but this request was refused by the Hearing Officer.

Under Section 5(2)(b) the Hearing Officer compared the respective goods and noted that there were areas of similarity, particularly taking into account the expert evidence and the way in which the proprietor's mark was used and promoted. Also the marks were similar particularly in relation to goods where the word MASK is directly descriptive e.g. cosmetic masks and skin creams. Overall the Hearing Officer considered that the application succeeded in respect of "non-surgical beauty products and cosmetics" but failed in respect of "soaps, perfumery and essential oils".

Under Section 5(4)(a) - Passing Off - the Hearing Officer accepted the strength of the applicant's reputation in its BOTOX mark but he noted that the evidence filed under this head related to the goods he had found similar under Section 5(2)(b). He, therefore, did not think the applicant was in any better position on this ground as compared to Section 5(2)(b) and decided that the applicant also failed in relation to "soaps, perfumery and essential oils". A similar finding was reached under Section 5(3).

As regards the ground under Section 3(3)(b) there was no evidence to suggest that BOTO is indicative of the presence of Botulinum Toxin Type A or that the public would make such an assumption. This ground also failed.