In Hi-Tech Pharmaceuticals Inc v Herbal Health Products Inc the US Court of Appeals for the Eleventh Circuit dismissed the plaintiff's application for a preliminary injunction and ruled that there was no evidence of actual confusion regarding the packaging and get-up of the two parties' competing sexual stimulant pills.
Hi-Tech Pharmaceuticals Inc markets a product called Stamina-RX, which is a sexual stimulant embodied in hexagonal blue pills. The pills are sold in a clear bottle with a white lid, with a label displaying a robot-like figure holding a sphere above its head. Stamina Pro, marketed by Herbal Health Products Inc, looks almost identical to the casual observer:
- The pills are hexagonal blue pills;
- The bottle is clear with a white lid; and
- The label shows a robot-like figure standing on a semi-circular platform with its hands at its sides.
Based on these alleged similarities, Hi-Tech brought a trademark and trade dress infringement case against Herbal Health. It moved for a preliminary injunction to prevent Herbal Health from selling, advertising or manufacturing the competing Stamina Pro product. The standard for a preliminary injunction required Hi-Tech to show:
- a substantial likelihood of success on the merits;
- a substantial threat of irreparable injury if the injunction were not granted;
- that the harm to Hi-Tech outweighed the harm to Herbal Health; and
- that an injunction would be in the interest of the public.
Both the US District Court for the Northern District of Georgia and the Eleventh Circuit found that this standard was not met. Specifically, with regard to the likelihood of success on its trademark infringement claim, Hi-Tech had failed to show any evidence of actual confusion in the marketplace. Although actual confusion is just one of the seven factors considered in a likelihood of confusion analysis, the appellate court indicated that such evidence is the "most weighty of considerations", along with the type of mark. Accordingly, the district court made no legal error and did not clearly err by finding no likelihood of confusion.
The Eleventh Circuit also found that there was no substantial threat of irreparable harm. Testimony did not show evidence of lost business; in fact, sales of Hi-Tech's Stamina-RX exceeded $3 million in the previous month and the product was on back order.
Hi-Tech's case for trademark infringement and trade dress infringement is still pending.
This article was originally edited by, and first published on, www.internationallawoffice.com - the Official Online Media Partner to the International Bar Association and an International Online Media Partner to the Association of Corporate Counsel."
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