The High Court has clarified the test for trade mark infringement, with a unanimous rejection of Allergan Australia’s claims against Self Care IP Holdings Pty Ltd (Self Care) for the use of “PROTOX” branding on anti-wrinkle skin care products in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8.

Self Care was successful on all matters on appeal, with the Court finding that Self Care did not use “instant Botox alternative” as a trade mark, “PROTOX” was not deceptively similar to “BOTOX”, and the phrase “instant BOTOX alternative” was not used in breach of the Australian Consumer Law (ACL).

Key Takeaways:

• Deceptive similarity: relevance of reputation: The Court explicitly answered a “contentious” question in declaring that reputation is not relevant to the consideration of deceptive similarity in a trade mark infringement action under section 120(1) of the Trade Marks Act 1995 (Cth) (TM Act). The Court emphasised that trade mark rights derive from registration, and to consider reputation would introduce uncertainty into a registered trade mark system intended to provide “a bright line that delineates the property rights of a registered owner, for the benefit of the owner and the public”.¹

• Deceptive similarity: defensive trade marks: Although Allergan Australia Pty Ltd (Allergan) was unsuccessful, the registration of defensive trade marks can be important in protecting a well-known brand. A defensive trade mark registration provides a registration for goods and services which a trade mark’s reputation spills across, though not actually supplied.

• Use as a trade mark: Context is relevant in assessing whether business is using a sign “as a trade mark”. Businesses should keep this in mind as relevant to both maintaining trade mark registrations and bringing or defending trade mark infringement proceedings.

• Consumer law claims: Clearly defining the target audience for a particular product is critical, as a key factor by which claims for misleading and deceptive conduct or false representations will be considered.

Background

Allergan Inc manufactures an injectable pharmaceutical product commonly used for reducing the appearance of facial skin wrinkles, marketed under the brand “BOTOX”. Allergen owns a defensive trade mark registration for BOTOX claiming, among other goods and services, anti-aging and anti-wrinkle creams in in class 3 (BOTOX Mark). Self Care began supplying cosmetic anti-wrinkle skin care products featuring the branding elements “instant Botox® alternative” and “Protox”. Allergan brought proceedings alleging that these branding elements infringed its defensive trade mark registration for BOTOX and conveyed misleading representations about the long term efficacy of the product in breach of ss 18(1) and 29(1)(a) and (g) of the ACL. The primary judge found for Self Care, which was overturned by the Full Federal Court on appeal. Self Care appealed to the High Court.

Deceptive similarity

The question on appeal was whether PROTOX was deceptively similar to BOTOX.  The High Court confirmed that the relevant test is whether a notional buyer “would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source”.²

Reputation of the trade mark

The Court provided an explicit statement that “[r]eputation should not be taken into account when assessing deceptive similarity under s 120(1)” (emphasis in original), for practical and policy reasons.³

At a policy level, the Court considered that the TM Act and registration system strikes a balance between commercial and public interests, by making publically available what marks are registered and the extent of the monopoly of each mark. The consideration of reputation as relevant to trade mark infringement would introduce a level of uncertainty and “distract from, if not defeat, the well understood and straightforward test which has been the hallmark of infringement actions”.⁴

The Court’s practical reasons for rejecting reputation as relevant to trade mark infringement were based on the difficulties of determining the extent of reputation, and the evidence required to demonstrate such.

Relevant goods for defensive trade marks

As the BOTOX Mark is a defensive mark, the comparison to be made was between the notional buyer’s imperfect recollection of the BOTOX Mark as hypothetically used on anti-wrinkle creams, with the PROTOX branding as actually used by Self Care.⁵ On this basis, the High Court found the Full Court had erred in considering that consumers may be caused to wonder whether those behind BOTOX had decided to expand into cosmetic anti-wrinkle products. The consideration ought to have been based on the notional use of BOTOX on the registered class 3 goods, rather than the actual use.⁶

In avoiding consideration of the reputation of BOTOX, but considering the context of the use of “PROTOX”, the Court held that the marks were not deceptively similar.

Use as a trade mark

The High Court held that the phrase “instant Botox® alternative” was not used by Self Care as a trade mark.

The High Court stated that the Full Court asked the “wrong question” by considering whether there was an implied association in trade source between the different products.⁷ The correct approach is rather to “ask whether the sign used indicates origin of goods in the user of the sign”.⁸ On this basis, the High Court considered the phrase was “descriptive of the product to which it was attached as an alternative product” and amounted to “ad-speak”, considering that it was:⁹

• inconsistent in size, font, capitalisation and stylistic split across various packages and Self Care’s website; and

• presented in combination with two dominant and “clear badges of origin”, being “FREEZEFRAME” and “INHIBOX” as “distinctive and stylised signs apt to be perceived as brands”.

Consumer law claims

Allergan claimed that the “instant Botox® alternative” represented to consumers that the Self Care product would have a long term effect similar to that of the Botox product.

The High Court considered that the Full Court had erred in describing the target market by including customers who considered that the products may have a common trade source, and that this error “infected the subsequent reasoning”. The target market rather ought to have been people who were interested in treatments for the reduction of the appearance of wrinkles, who were likely aware of Botox but who may or may not have ever used it.

The High Court considered that a reasonable consumer in the target market would not have perceived the phrase as indicating a “long term” effect in the context of the other language used on the Self Care product’s packaging, the relatively low cost, the ability to obtain the product simply from a pharmacy rather than a medical practitioner, and the wearability of the product in the usual activities of life.

Things left unsaid?

A ubiquitous or insignificant reputation will no longer help or hinder actions for trade mark infringement under s 120(1) of the TM Act. However, the High Court was careful to delineate the tests for deceptive similarity in relation to trade mark registration under section 44 of the TM Act, and in relation to trade mark infringement under section 120(1) of the TM Act. The cases of Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 and Allergan Inc v Di Giacomo (2011) 199 FCR 126 were distinguished and dismissed as irrelevant for concerning deceptive similarity in the context of registration of a mark, not infringement.¹⁰ Reputation may therefore still be relevant in the context of assessing deceptive similarity for the purposes of registration under section 44 of the TM Act.

The High Court also noted that no arguments that BOTOX had become accepted as a sign describing the product under subsections 24 or 87 of the TM Act were made on appeal, and did not find it necessary to make comments, even in obiter, about comparative advertising.

FOOTNOTES

¹ Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8, at 40.
² Id., at 32.
³ Id., at 36.
⁴ Id., at 48.
⁵ Id., at 67.
⁶ Id., at65.
⁷ Id., at 59.
⁸ Id., at 60.
⁹ Id., at 57.
¹⁰ Id., at 50 and 72.