In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd, the High Court made the decision to allow two appeals filed by Self Care IP Holdings Pty Ltd on the Federal Court’s trade mark infringement decision against Allergan Incorporated.

Self Care IP Holdings Pty Ltd (‘Self Care’) supplies and markets cosmetic products, including topical anti-wrinkle skincare products called “Inhibox” (marketed as an “instant Botox alternative) and “Protox” (marketed and trademarked as PROTOX). Allergan Australia Pty Ltd (‘Allergan’) manufactures Botox, an injectable pharmaceutical product, and owns the trademark to the name “Botox”.

Allergan brought proceedings in the Full Federal Court of Australia claiming that Self Care had infringed on the BOTOX trademark under s 120(1) of the Trademarks Act by using deceptively similar trademarks, such as “instant Botox alternative” and PROTOX. Moreover, that this also contravened ss 18(1) and 29(1)(a) and (g) of the Australia Consumer Law, by conveying misleading misrepresentations about the effectiveness of Inhibox.

Steward J held that BOTOX’s reputation prevented a finding of deceptive similarity under s 120 of the Trademarks Act, and hence it was unlikely that consumers would be confused by PROTOX, or its use of BOTOX on those products as marketed by Self Care. The Full Federal Court held that the trade mark PROTOX was indeed deceptively similar to BOTOX because even if consumers can distinguish between the two products, they might be confused by the source of the two different products, dismissing Steward J’s judgment. Moreover, the Full Court disagreed with Steward J’s comments that the phrasing of “alternative” in Self Care’s product description implies two different products, as it may still suggest Self Care’s products share the same trade source connection with Allergan’s products.

Self Care then appealed to the High Court.

The first issue before the High Court was whether Self Care’s phrase “instant Botox alternative” is a trade mark, and if so, whether it is deceptively similar to the BOTOX trade mark. The second issue was whether Self Care’s PROTOX mark is deceptively like the BOTOX mark.

Regarding the first issue, the High Court stressed that the correct approach in addressing the question is to ask whether the sign includes an indication of the origin of goods in the user of the sign. On the facts, the High Court held that the phrase “instant Botox alternative” was not used to indicate the origin of goods in Self Care because the phrase was used in inconsistent sizes and fonts and included varying arrangements of the words; the phrase appeared alongside two clear indications of origin of goods (FREEZEFRAME and INHIBOX); and these two signs are distinctive and easy-to-recognize signs. The High Court, therefore, concluded that there was no infringement of the BOTOX mark by Self Care.

Regarding the second issue, the High Court held that deceptive similarity is a matter of the notional buyer’s imperfect recollection of the mark as registered. Moreover, the High Court rejected the Full Court’s reasoning and clarified that reputation should not be taken into account when assessing deceptive similarity under s 120(1) of the Trade Marks Act. The High Court gave out the following reasons as to why:

1. Assessing reputation is a complex exercise and would overcomplicate an otherwise straightforward test for infringement.
   
2. Reputation is explicitly referred to in the Act as a relevant consideration, but not entirely conclusive.
   

As such, the High Court found that the Full Court relied on the reputation of BOTOX to conclude that PROTOX might be perceived by consumers as being of the same origin as BOTOX. Whereas the Full Court assessed the actual use of BOTOX, rather than the notional use of BOTOX on the goods covered by the registration.

In assessing whether Self Care’s products are deceptively similar to Allergan, the High Court found that there was no “real, tangible danger” of confusion or deception on Self Care’s part. Their Honours found that:

• The words ‘PROTOX’ and ‘BOTOX’ are sufficiently different that the notional buyer would not confuse the marks or the products they denote.
• It is common for one company’s product to use another company’s product to enhance its own without consumers thinking there is an affiliation between the two.
• The PROTOX mark was almost always used next to the FREEZEFRAME mark, which is the umbrella brand indicating it is owned by Self Care, not Allergan.
• There was no real evidence of actual confusion between the two products on the consumers’ part.

The High Court unanimously held that Self Care did not use “instant Botox alternative” as a trade mark and thus it was fatal to Allergan’s claim against Self Care under s 120(1) of the Trade Marks Act of the phrase being deceptively similar. Moreover, PROTOX was also ruled as being distinct and dissimilar to BOTOX because the similarities would not confuse the notional consumer, and such phrasings were always placed next to Self Care’s trade marks (i.e. FREEZEFRAME). Self Care’s appeal is allowed.