Federal Court Decision: Johnson & Johnson vs. Andromaco Packaging Dispute in Argentina

The Federal Court of Civil and Commercial Matters has dismissed an action brought by Johnson & Johnson of Argentina to stop Andromaco from using very similar packaging to promote a facial cream. For the judges, there is similarity, but not deception. While denying the injunction, the Board noted that the conclusion reached "in no way implies an opinion on the merits of the case, which can only be clarified by the final judgment".

"The fact that they are facial creams does not allow the assumption that the consumer will be misled, when the brands have distinctive aspects and both are well known in the market," the judges warned.

Background of the case

Johnson & Johnson de Argentina S.A. sued the Andrómaco laboratory for alleged trademark infringement. It claimed that the latter's facial cream had very similar packaging, which "unfairly imitated" its product and "caused confusion".

J&J requested that Laboratorios Andrómaco S.A. be ordered to "cease and desist from using the packaging" of the product "Dermaglós Ultra Moisturizing Day Night Facial Cream", which it claimed "unfairly imitates" and uses the trademark associated with the product "Neutrogena Hydro Boost Water Gel Facial Moisturizer".

The motion was based on the need to avoid consumer confusion and to take advantage of the plaintiff's prestige and reputation.

Specifically, J&J requested that its competitor refrain from marketing any product, in particular the Dermaglós product at issue, in packaging that imitates Neutrogena products and "has the characteristics of a cylindrical package with an opaque lid and a transparent acrylic bottom jar in a blue-blue color with white typography".

It demanded the removal of all posters, advertisements, marquees, publications on websites, promotions, advertisements on social networks (including Instagram, TikTok, Facebook, Twitter, YouTube) and other advertising, whether its own or commissioned by third parties, that show all or part of the aforementioned containers.

In support of its claim, the company referred to the fact that it has been marketing the Neutrogena product in Argentina since 2016, after being launched worldwide in 2008, and has managed to position itself as a leader in its category before the launch of the Dermaglós product (September 2022). The new product launched by the Dermaglós brand is different from the general line they offer and imitates Neutrogena.

Both laboratories were in talks and negotiations to avoid the controversy, a mediation process was initiated, but it also ended without an agreement. According to the plaintiff laboratory, its competitor Andrómaco "not only did not cease the misconduct, but also increased the promotion of the product in question through various media, social networks, television and the Dermaglós YouTube channel".

In the first instance, the requested injunction was rejected. In the judge's opinion, there was no proof or evidence to conclude that there had been any confusion on the part of the public.

?"The images of the two products show sufficient differences to prevent - at first sight - their confusion in the minds of consumers, taking into account that the trademarks "Neutrogena" and "Dermaglós" are well known in the market and each has a certain degree of fame and commercial development".

The case reached the Federal Civil and Commercial Court on appeal by J&J, which argued that the products in question are comparable and have a common origin, which "clearly causes a divergence of customers".

For the plaintiff, "it is clear that the consumer public confuses one packaging with the other by means of concrete situations, as evidenced by publications on social networks of different users, where both influencers and commentators point out the obvious imitation that the Dermaglós product makes of the Neutrogena product."

He also argued that the judge arbitrarily failed to address the issues raised in terms of fair trade. And that any act of imitation involving unfair advantage of reputation should be sanctioned.

Court decision: similar but not identical

"The images allow a first approximation to be made of certain similarities in the shape and colour of the bottles. However, the inclusion of the names of the two marks, both well known on the market, "Neutrógena" and "Dermaglós", which are clear and visible, prevents to see with the sufficiency required by an innovative measure requested, the similarity such as to lead the consumer public to be confused when choosing the cream to be used for the care of its face".

"In addition, the actual difference in the color of the cover (gray in the case of the Dermaglós product and white in the case of Neutrógena) and the existence of a different secondary packaging (outer box) prevent to justify a confusion of the marks and the alleged manifest bad faith of the defendant in taking advantage of the prestige of others, even from the perspective of Article 10, paragraphs g) and h) of the DNU on commercial loyalty", states the decision of the Chamber.

The consumer pays attention

Judges Eduardo Gottardi, Alfredo Gusmán and Florencia Nallar added that "it cannot be overlooked that the public targeted by these creams usually pays more attention when choosing a dermatological and beauty product, which prevents generating any degree of conviction about the alleged deviation of the clientele and consequent dilution of the trademark".

"The fact that they are facial creams does not allow us to assume that the consumer will make a mistake when they are brands that have distinctive aspects and both are well known in the market"

"Therefore, the possibility of deception must be assessed with prudence and realism, and the jurisprudence of this Chamber, since ancient times and before the enactment of Law No. 22,362, has weighed this legal prohibition with restrictive criteria, in order not to distort the spirit of the legislator and to limit the prohibition to those cases where it is necessary to avoid reasonable confusion between products," the Chamber concluded.

The role of influencers

The court cautioned that while it is true that influencers, advertisements and online sales media of the products may primarily show the primary packaging, "it is also true that the outer packaging always accompanies the advertisement or sales announcement in one way or another."