Reputation and consumer confusion in trade mark infringement proceedings: the High Court weighs in

The High Court has delivered its long anticipated judgment in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023], HCA 8 finding that PROTOX and BOTOX are not deceptively similar and that Self Care's use of BOTOX on the packaging of its PROTOX product was not "use as a trade mark".

This important decision, which overturned the Full Federal Court, clarifies the law on the extent to which the reputation of a trade mark is relevant in assessing deceptive similarity under section 120(1) of the Trade Marks Act 1995. The High Court held that reputation is not relevant to this inquiry. This may affect your brand protection strategy.

Botox vs Protox

Allergan Inc is the registered owner of the BOTOX trade mark registered in class 5 for "pharmaceutical preparations for the treatment of… wrinkles" and a defensive mark registered in class 3 for goods that include "anti-ageing creams; anti-wrinkle cream… cosmetic articles and preparations… cosmetics". Allergan does not use its BOTOX mark on class 3 goods (non-medicated cosmetics) but obtained a defensive registration by establishing its reputation in its class 5 mark would mean that consumers would likely believe class 3 goods bearing BOTOX were connected with Allergan. Defensive trade mark registrations can be relied upon for the purposes of infringement claims under section 120(1).

Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd (Self Care) sold cosmetic products including ant-wrinkle products in class 3 bearing the words "instant Botox^® alternative" and the trade mark PROTOX. Self Care’s marketing and packaging depicted the word BOTOX in composite phrases (examples of which are set out below): "instant Botox^® alternative" and "prolong the look of Botox^®".

Allergan objected to both use of PROTOX and to use of Botox^® on the PROTOX packaging. At first instance Allergan was unsuccessful. The Full Federal Court however overturned the primary judge's decision. Self Care was granted special leave to appeal to the High Court.

The decision

The High Court unanimously held that Self Care did not infringe Allergan's BOTOX mark by its use of either "instant Botox® alternative" or by use of the trade mark PROTOX for the following reasons.

1. Use of the phrase "instant Botox® alternative" was not use of BOTOX as a trade mark. Rather, the High Court found that the term "alternative" was key and that the phrase "instant Botox® alternative" was used in a descriptive manner. The following additional aspects of the PROTOX packaging militated against use of Botox® being seen as indicating trade origin: inconsistent manner on Self Care's use of Botox® on packaging and website; the placement of Botox® alongside Self Care's brand FREEZEFRAME and the use of the product name Inhibox.
2. PROTOX was not deceptively similar to Allergan's BOTOX mark. The High Court held that the Full Court erred because persons of ordinary intelligence and memory were not likely to confuse PROTOX and BOTOX.

The Court also considered whether the use of phrase "instant Botox® alternative" contravened the Australian Consumer Law (ACL) as a misleading representation about the efficacy of PROTOX as equivalent to a BOTOX injection. The High Court disagreed with the Full Court that "alternative" had this meaning.

What is most significant is the Court's consideration of the role of reputation in infringement proceedings.

Why reputation doesn't matter in trade mark infringement

In determining that PROTOX was not deceptively similar to BOTOX the Court was required to consider in detail the role, or lack thereof, that reputation plays for the purposes of section 120(1) in which deceptive similarity is a central issue.

Notwithstanding that both the primary judge and the Full Court had considered the reputation of the BOTOX mark to be relevant, curiously both parties submitted to the High Court that any reputation attaching to a registered mark should not be taken into account in assessing deceptive similarity. At the request of the Court, amicae curiae [friends of the court] were appointed to contradict this contention.

The amicae contended that three key earlier cases, Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 and Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 268 FCR 623 relied on aspects of reputation when assessing deceptive similarity.

The High Court made clear that these three decisions were not authoritative on the issue of deceptive similarity. Rather, in an infringement proceeding under section 120(1) the determination of deceptive similarity must be resolved without reference to the reputation of the owner of the registered mark:

"That inquiry does not concern reputation in the mark or in the owner of the mark. The inquiry is concerned with the effect and meaning of the spoken description of the mark."

The High Court reasserted that the decision in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 remains the principal authority.

Applying this test, the Court held that there was not a "real, tangible danger" of confusion or deception occurring because the marks are sufficiently different. This conclusion is reinforced by the fact that the PROTOX mark was almost always used in proximity to the FREEZEFRAME mark and that there was no evidence of actual confusion.