Allergan Inc. v Ocean Healthcare Ltd

• Jurisdiction: Ireland
• Judge: Mr. Justice Brian J. McGovern
• Judgment Date: 24 June 2008
• Neutral Citation: [2008] IEHC 189
• Docket Number: 4458 P/2007
• Court: High Court
• Date: 24 June 2008

[2008] IEHC 189

THE HIGH COURT

4458 P/2007

Allergan Inc & Allergan Pharmaceuticals (Ireland) Ltd v Ocean Healthcare Ltd

BETWEEN

ALLERGAN INC. AND ALLERGAN PHARMACEUTICALS (IRELAND) LTD.

PLAINTIFFS

AND

OCEAN HEALTHCARE LTD.

DEFENDANT

EEC REG 40/1994 ART 9(1)

EEC REG 40/1994 ART 9(1)(a)

SABEL BV v PUMA AG & ORS 1997 1 ECR 6191

CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER INC 1998 1 ECR 5507

LLOYD SCHUHFABRIK MEYER & CO GMBH v KLIJSEN HANDEL BV 1999 1 ECR 3819

COFRESCO FRISCHALTERPRODUKTE GMBH & CO KG v CONTROLLER OF PATENTS, DESIGNS & TRADE MARKS & REYNOLDS METAL CO 2007 2 ILRM 430

TRADE MARKS ACT 1996 S10(2)(B)

EEC REG 40/1994 ART 9(1)(b)

GENERAL ELECTRIC CO LTD (USA) v GENERAL ELECTRIC CO LTD 1973 RPC 297

ALCON INC v OHIM 2007 ETMR 68

TRADE MARKS ACT 1996 S15(1)

TRADE MARKS ACT 1996 S7(1)

B & S LTD v IRISH AUTO TRADER LTD 1995 2 IR 142

ERVEN WARNINK BV v J TOWNEND & SONS (HULL) LTD (NO 1) 1979 AC 731

POLYCELL PRODUCTS v O'CARROLL 1959 IJ 34

GUINNESS (IRL) GROUP v KILKENNY BREWING CO LTD 1999 1 ILRM 531

UNILEVER PLC v CONTROLLER OF PATENTS 2007 2 ILRM 389

MUNDIPHARMA AG v OHIM 2007 2 ECR 449

TRADE MARKS ACT 1996 S15

INTELLECTUAL PROPERTY

Trade mark

Infringement - Passing off - Whether likelihood of confusion in associating products on part of public due to similarity of defendant's product's sign with trademark and similarity between products - Whether fact that defendant's product registered as trademark in Ireland providing defence to action for infringement of Community registered trademark - Whether use of name infringing trademark - Whether defendant guilty of passing off -Re GE Trademark [1973] RPC 297 and Cofresco v Controller of Patents [2007] 2 ILRM 430 followed; Polycell Products Ltd v O'Carroll [1959] Ir Jur Rep 34, Unilever plc v Controller of Patents [2007] 2 ILRM 389 and B & S Ltd v Irish Auto Trader Ltd [1995] 2 IR 142 adopted; Guinness (Ireland) Group v Kilkenny Brewing Co Ltd [1999] 1 ILRM 531 considered - Trade Marks Act 1996 (No 6) s 15(1) - Council Regulation 44/94/EC, art 9(1) - Held that plaintiff establishing infringement of trademark and passing off (2007/4458P - McGovern J - 24/6/2008) [2008] IEHC 189

Allergan v Ocean Healthcare Ltd

Facts: The plaintiffs claimed that the defendant infringed the first named plaintiff's registered "BOTOX" Trademarks and also that the defendant was guilty of passing off goods as or for the goods of the plaintiffs under or by reference to their name or Mark, 'BOTOINA'. This case concerned a well known pharmaceutical product produced by the plaintiffs, namely, BOTOX. The plaintiffs claimed that the BOTOX Trademark was the best known purified Botulinum Toxin Type A product and had become a household consumer name. The defendant's product, which was complained of, namely 'Botoina' did not contain Botulinum Toxin Type A. However, both products were used for therapeutic and cosmetic purposes. Both parties provided evidence in relation to the origins of their product names. The plaintiff was the owner of a number of Community Trademarks in relation to BOTOX. The defendant relied on the provisions of s. 15(1) of the Trademark Act, 1996 by way of defence.

Held by McGovern J. in allowing the plaintiffs' claims: That the plaintiffs' evidence in relation to the coining of the word 'BOTOX' was accepted and the defendant's contention that the Mark was weak or generic was rejected. The end-users of both products were broadly speaking the same. There was a significant visual similarity between BOTOX and BOTOINA, there was an aural or phonetic similarity between the words and there was no conceptual similarity between the words. The products themselves were similar and there was an obvious link between the two. Consequently, the use of the mark BOTOINA created a likelihood of confusion with the plaintiffs' mark where the relevant members of the public could be mistaken as to the origin of the goods. Having regard to the fact that the plaintiffs were the holders of a Community Trademark, giving them exclusive rights therein, the defendant's defence under s. 15(1) of the 1996 Act could not succeed. Furthermore, the entire way in which BOTOINA was marketed was calculated to cause confusion and the product was presented in a manner which was likely to mislead the public into believing it was connected in some way with BOTOX.

Reporter: L.O'S.

1 1. In this case, the plaintiffs claim that the defendant has infringed the first named plaintiffs' registered "BOTOX" Trademarks listed in the Schedule to the Plenary Summons, and they also claim that the defendant is guilty of passing off goods as or for the goods of the plaintiffs under or by reference to their name or Mark, BOTOINA.

The facts

2 2. The plaintiffs are members of the Allergan Group of companies which produces, markets, and sells pharmaceutical products throughout the world. This case concerns one of the better known pharmaceutical products produced by the plaintiffs, namely, 'BOTOX'. This product is a preparation containing a purified form of Botulinum Toxin Type A. The product has been a great success for the plaintiffs. The first named plaintiff is a company incorporated under the laws of Delaware in the United States of America and is the owner of various registered Trademarks throughout the world in respect of BOTOX. The second named plaintiff is the holder of a licence from the first named plaintiff to use its Trademarks and to manufacture Botox. The second named plaintiff holds the product authorisation in this jurisdiction from the Irish Medicines Board and this allows it to manufacture the product. The court has been informed that the worldwide supply of Botox. is manufactured in the second named plaintiff's plant in Westport, County Mayo.

Botox

Throughout this judgment, when I refer to BOTOX, I mean the off-label use of the product in the treatment of facial lines or winkles except where I state otherwise.

3 3. The Botox Trademark is a very important Intellectual Property asset of the plaintiff companies. The plaintiffs claim that it is the best known purified Botulinum Toxin product and that it has become a household consumer name. It is available for both therapeutic and cosmetic uses. The plaintiffs claim that the name ' Botox' is not interchangeable with any other Botulinum Toxin preparation and that it is a brand which has distinguished its product from other preparations of Botulinum Toxin since its launch in Ireland and elsewhere. The plaintiffs claim that if others were entitled to freely refer to other Botulinum Toxin products under the name ' Botox', the plaintiffs would not only lose its valuable exclusivity in the market, but that many Irish medical practitioners who use the product would no longer be certain which preparation they are using and this would have safety implications for patients. If this were to occur, there would be detrimental repercussions for the plaintiffs.

4 4. Botox is a prescription only product which has therapeutic and cosmetic applications. It must be prescribed by a registered medical practitioner and can only be provided from a pharmacy. It is administered either by doctors, dentists or other people with medical training. In its cosmetic application, it is administered by means of a micro needle and syringe. Botox contains, as its active ingredient, Botulinum Toxin Type A in a purified form. The defendant's product, which is complained of, namely, Botoina, does not contain Botulinum Toxin Type A or any other type of Botulinum.

5 5. Botulinum Toxin is a potent protein that acts specifically on nerve cells. It is produced by the bacterium, Clostridium Botulinum, which is commonly found in soil. Botulinum Toxin was first recognised and isolated in the late 1890s. When it is purified for medical use, Botulinum Toxin does not contain any bacteria but contains a tiny amount of the chemical protein secreted by the bacterium, Clostridium Botulinum. There are seven known stereotypes of Botulinum Toxin which are designated by the letters A, B, C, D, E, F and G. Each stereotype varies in its potency and effects. Between the 1920s and 1940s, Botulinum Toxin Type A was isolated in a purified form. In the 1950s, it was discovered that injecting Botulinum Toxin into a hyperactive muscle, blocked the release of Acetylcholine from motor nerve endings, thereby inducing a temporary relaxation of the targeted muscle. This gave rise to an interest in creating medical therapeutic products derived from Botulinum Toxin.

6 6. In the late 1960s, Dr. Alan Scott, a Clinical Researcher and Ophthalmologist, in San Francisco, began to investigate Botulinum Toxin Type A in pre-clinical studies for the treatment of Strabismus, which is a condition producing "crossed eye" or squint. In the course of his research and trials, Dr. Scott found that if Botulinum Toxin Type A was used in a particular formulation and was injected into certain muscles, it would correct the squint. In the 1980s, a Canadian physician observed that patients who had been treated for Blepharaospasm (Involuntary Eyelid Closure), with Dr. Scott's product showed a reduction in the appearance of the Glabellar Furrows, which are the vertical lines between the eyebrows. This was attributed to the relaxation of the brow muscles. It came to be understood that when Botulinum Toxin Type A was administered as an injection into specific muscles, it attached itself to the nerve endings and was internalised into the nerve. This was followed by a blockage of the release of Acetylcholine, the neurotransmitter responsible for triggering muscle contractions. The treatment resulted in a very effective reduction or elimination of dynamic lines and wrinkles in the face. In the course of this case, Professor Mitchell Francis Brin, gave evidence that during the 1980s, he...