{"id":4251,"date":"2023-04-18T17:00:24","date_gmt":"2023-04-18T07:00:24","guid":{"rendered":"https:\/\/sanickilawyers.com.au\/?p=4251"},"modified":"2023-04-18T17:00:24","modified_gmt":"2023-04-18T07:00:24","slug":"high-court-grants-trade-mark-infringement-appeal","status":"publish","type":"post","link":"https:\/\/sanickilawyers.com.au\/high-court-grants-trade-mark-infringement-appeal\/","title":{"rendered":"High Court Grants Trade Mark Infringement Appeal"},"content":{"rendered":"\n

In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd<\/em>, 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. <\/p>\n\n\n\n

<\/p>\n\n\n\n

Self Care IP Holdings Pty Ltd (‘Self Care’) supplies and markets cosmetic products, including topical anti-wrinkle skincare products called \u201cInhibox\u201d (marketed as an \u201cinstant Botox alternative) and \u201cProtox\u201d (marketed and trademarked as PROTOX). Allergan Australia Pty Ltd (‘Allergan’) manufactures Botox, an injectable pharmaceutical product, and owns the trademark to the name \u201cBotox\u201d.<\/p>\n\n\n\n

<\/p>\n\n\n\n

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\u00a0Trademarks Act\u00a0<\/em>by using deceptively similar trademarks, such as \u201cinstant Botox alternative\u201d 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.<\/p>\n\n\n\n

Steward J held that BOTOX\u2019s reputation prevented a finding of deceptive similarity under s 120 of the Trademarks Act<\/em>, 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\u2019s judgment. Moreover, the Full Court disagreed with Steward J’s comments that the phrasing of \u201calternative\u201d in Self Care\u2019s product description implies two different products, as it may still suggest Self Care\u2019s products share the same trade source connection with Allergan\u2019s products.<\/p>\n\n\n\n

Self Care then appealed to the High Court.<\/p>\n\n\n\n

<\/p>\n\n\n\n

The first issue before the High Court was whether Self Care’s phrase \u201cinstant Botox alternative\u201d 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.<\/p>\n\n\n\n

<\/p>\n\n\n\n

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 \u201cinstant Botox alternative\u201d 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.<\/p>\n\n\n\n

Regarding the second issue, the High Court held that deceptive similarity is a matter of the notional buyer\u2019s imperfect recollection of the mark as registered<\/em>. Moreover, the High Court rejected the Full Court\u2019s reasoning and clarified that reputation should not be taken into account when assessing deceptive similarity under s 120(1) of the Trade Marks Act<\/em>. The High Court gave out the following reasons as to why:<\/p>\n\n\n\n

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

    <\/p>\n\n\n\n

    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 <\/em>use of BOTOX, rather than the notional <\/em>use of BOTOX on the goods covered by the registration.<\/p>\n\n\n\n

    In assessing whether Self Care\u2019s products are deceptively similar to Allergan, the High Court found that there was no \u201creal, tangible danger\u201d of confusion or deception on Self Care\u2019s part. Their Honours found that:<\/p>\n\n\n\n