Allergan v. B4U—Trademark Infringement

Author:Mr Avi Ordo
Profession:S Horowitz & Co
I. Summary

In a decision of the Israeli District Court dated January 12, 2005, in the framework of provisional proceedings in the matter of C.A. 2332/04, MCA 20294/04 Allergan, Inc. et al., v. B4U Ltd. et al. (not yet published), it was held, inter alia, that respondents' use of the marks "BOTO EFFECT" and "BOTORELAX" infringe Allergan Inc.'s well-known trademark "BOTOX".

II. The Factual Background

Applicant No. 1, Allergan, Inc. ("Allergan"), is the owner of the well-known trademark "BOTOX" ("the BOTOX Mark"), which is also registered in Israel in class 5 with respect to, inter alia, pharmaceutical preparations for the treatment of wrinkles. The BOTOX Mark is used, inter alia, to indicate the cosmetic use of the "BOTOX" preparation (a preparation containing Botulinum toxin which is injected by doctors to patients in order to reduce the appearance of wrinkles). The respondents, B4U and the Cosmetician Centre, marketed in Israel a cosmetic preparation (an anti-wrinkle cream), for external use, under the marks "BOTO EFFECT" and "BOTORELAX", respectively. Allergan and its Israeli distributor filed a claim, as well as an application for provisional orders, against the respondents, on the grounds of infringement of the BOTOX Mark (as well as on other grounds, including passing-off, dilution of trademark, unlawful enrichment, etc.).

III. The District Court's Decision

The District Court accepted Allergan's application for provisional orders and ruled, inter alia, as follows:

(1) The marks resemble one another when carrying out both the visual and phonetic tests. In view of the identical "BOTO" prefix, the suffixes "EFFECT" and "RELAX" do not distinguish between the marks and thus may be construed as additional products amongst the "BOTOX" range of products or as an improved version of "BOTOX".

(2) In view of the results of similarity obtained from the main visual and phonetic tests, the respondents' arguments regarding the differences in customers, prices and marketing channels of the products are marginal, particularly since the marks identify products aimed for the identical purpose (reducing wrinkles).

(3) The judge held that, at this stage of an application for provisional orders, the assumption is that the trademark registration is valid and stated further that he does not believe the term "BOTOX" to be descriptive and certainly not generic, as argued by the respondents. At most, the BOTOX Mark may be seen as a suggestive mark and, thus, entitled to enhanced...

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