Botox opposition success

Posted: 4 years ago in: Case Study, NewsPosted By admin

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Botox opposition success

KRL Group Inc filed an application to register a trademark in the USA for BOTULEX in relation to skin care preparations for topical application to the skin.

Allergen Inc, the owner of the well-known mark BOTOX, opposed the BOTULEX application on grounds of its earlier trademark registrations and likelihood of confusion.  It was able to show the court that it was not a mere intermeddler, and that it had standing before the court.

Alergen was able also to show that the BOTOX mark had achieved “fame” status, and indeed, a certain level of celebrity.  Between 1998 and end 2011, sales of BOTOX in the US amounted to almost $10 billion.  Sales amounted to nearly $1.6 billion in 2011 alone.  Expenditure on product promotion in the US amounted to $15 m per year.  The trade mark BOTOX has achieved a high brand awareness profile among its target consumers, namely females, aged between 30-60 years with a household income of over $50,000.

KRL Group tried to market its product as an alternative to the BOTOX goods.  The fact that a prescription was needed to use BOTOX, but not for BOTULEX, or that one was injectable was of little consequence.  Indeed, the BOTULEX product was marketed to the same consumers as BOTOX, as an alternative to the BOTOX product.  The consumers in each case were purchasing goods to reduce the appearance of skin wrinkles and lines.  There was an overlap in the channels of trade.

The Trademark Trial and Appeal Board found a likelihood of confusion was proven, and refused to register the application to register BOTULEX (decided October 2013).

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