A row over ownership of the "Botox" trademark has come before the High Court and is also the subject of litigation worldwide, it emerged yesterday.
Mr Justice Peter Kelly admitted proceedings brought by Allergan Inc and Allergan Pharmaceutical Ireland into the list of the Commercial Court, the commercial division of the High Court.
They are claiming ownership of the "Botox" trademark and also the "passing off" of its products. The judge made directions for the exchange of legal documents and listed the case for further directions on October 8th.
He was told there are proceedings relating to the Botox trademark under way worldwide and that it may be sought to join another company in the action. Paul Coughlan, for Allergan, said he did not see how other litigation could stop his client's action here.
In the proceedings here, Allergan has sued Ocean Healthcare, Convent Road, Blackrock, Co Dublin, over selling products under the sign "Botoina" which, it claims, infringes Allergan's Botox trademarks. It is claimed Botoina is being marketed in a similar fashion to the Botox product; that it is being misrepresented that a syringe is required to administer Botoina; and the defendant is causing confusion between the two products.
Allergan claims it is the owner of community trademark 2015832 Botox device, registered for pharmaceutical preparations for the treatment of conditions including neurological disorders, muscle dystonias, smooth muscle disorders, headaches and wrinkles.
Allergan also claims ownership of community trademark number 2575371: "It's not magic, it's Botox." It is seeking injunctions restraining infringement of those trademarks and also wants to restrain the passing off of goods under the name Botoina "or any other confusingly similar names or marks".
Botox, it is claimed, is a well-established and widely recognised brand and is particularly well known as the name of a highly successful product for reducing or eliminating, through injection into the skin, the appearance of lines and wrinkles.
Allergan claims Botox has become known as denoting a product manufactured and marketed by it and that the plaintiff companies have acquired a substantial reputation and goodwill through use of the trademark.
Ocean Healthcare, it is claimed, has put Botoina on the market and is marketing this as a "serum for cosmetic use" to help "smooth out expression lines" and/or wrinkles.
Botoina is being presented as a form of treatment equivalent to the Botox product as a syringe is provided for application to the skin, together with a vial, Allergan claims. This amounts to misrepresentation as a syringe is not necessary for the Botoina application and a vial is not necessary for storing the serum.
