T-131/09 Farmeco v OHMI - Allergan (BOTUMAX)- 28 October 2010

The General court rejected the appeal brought by the CTM applicant for ‘BOTUMAX’ for goods in Classes 3, 5 and 16 who sought to annul a decision from the Fourth Board of Appeal upholding the opposition brought by the owner of the Community word and figurative marks ‘BOTOX’ for goods in Class 5.

In essence, on the grounds of Article 8 (1) (b) CTMR, the Court confirms that the marks are visually and aurally similar to a certain degree (the first syllable is identical and end in the same letter ‘x’) and there is no possible conceptual comparison since the signs are fanciful words. Thus it concluded that there can be likelihood of confusion in respect of the applied for goods ‘pharmaceutical and sanitary preparations for medical purposes’ which include the earlier mark’s goods in Class 5, all the more due to the acquired high distinctive character of ‘Botox’ in respect of pharmaceutical preparations for the treatment of wrinkles.

On the grounds of Article (8) (5) of the CTMR, due to the similarity of the marks, the strength of the earlier marks’ reputation, and notwithstanding the lesser degree of similarity with the rest of the goods in Class 5 and those in Classes 3  and 16, the Court reiterated that a trademark also acts as a means of conveying messages and feelings, such as luxury, lifestyle, exclusivity, youth, etc., so that the consumer might be led to think that the goods applied for are as effective as those found in trade under the “Botox” trademark. For example, the ‘ bleaching and polishing preparations’ in Class 3 may benefit from the image conveyed by ‘Botox’ leading the consumer to think that they clean a surface or the laundry 'as if' wrinkles were removed. Regarding the ‘printed matter’ and ‘instructional and teaching material (except apparatus)’ in Class 16, they encompass magazines and specialised medical or scientific journals so that consumers – both professionals and end-consumers – would be led to buy such goods thinking that they will find in them the clues or advice of specialists against the ageing of the skin.

Consequently, the use of the word mark “Botumax” would take unfair advantage of the distinctive character or repute of the earlier marks; furthermore, applied on widespread goods aimed at the general public, it will unquestionably result in the dilution of the distinctive character of the widely known earlier trade marks.