ALLERGAN recently opposed to the filing of Community trademark BOTUMAX in classes 3, 5 and 16, on the ground that ALLERGAN already holds a great number of trademarks called BOTOX, and also in view of their associated notoriousness.
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ALLERGAN won the case by efficiently evidencing the reputation of the sign within the European Community and the risk of dilution BOTOX would be exposed to, should the mark BOTUMAX be registered, as the latter could be perceived as a derivative of BOTOX. However, the Board of Appeal limited the rejection of BOTUMAX to products in classes 3 and 5 and to scientific publications in class 16.
Concerning the signs themselves, we consider that the comparison between BOTOX and BOTUMAX does not demonstrate similarity. Only the reputation of BOTOX was a valid argument to obtain the (confirmed) rejection of the Community trademark application. We noticed that case law tends to refuse to register pharmaceutical trademarks sharing the same final radical and a final, fairly unusual letter with an earlier right.