Allergan v Self Care IP Holdings: PROTOX ' Not such an alternative

• Published date: 30 November 2021
• Law Firm: Piper Alderman
• Author: Ms Bahar Agar, Emily Alexander and Travis Shueard

The recent decision of Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 is a prime reminder that even promoting a product as an alternative to a competitor can result in trade mark infringement.

Introduction

The Full Court found that the use of PROTOX and "instant Botox' alternative" by the Respondent were deceptively similar to the Appellant's trade mark BOTOX, and that the product claim of "clinically proven to prolong the effect of Botox'" was misleading or deceptive to consumers.

BOTOX and the Self-Styled "Alternative" PROTOX

This decision concerned the famous anti-ageing product "Botox." The manufacturer of Botox, Allergan, is also the owner of various trade marks for BOTOX, including the defensive word mark BOTOX for class 3 "...anti-ageing creams; anti-wrinkle cream."

Self Care IP Holdings also sold cosmetic products, including an anti-ageing product trade marked as PROTOX, sold under the umbrella trade mark of FREEZEFRAME.

The PROTOX packaging stated that the product was "clinically proven to prolong the effect of Botox'" and "instant Botox' alternative":

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Allergan commenced proceedings in the Federal Court and alleged trade mark infringement pursuant to section 120 of the Trade Marks Act 1995 (Cth) (Act) and contraventions of the Australian Consumer Law (ACL), including misleading & deceptive conduct.

At trial, Justice Stewart held that BOTOX's reputation prevented a finding of deceptive similarity under section 120 of the Act - such was BOTOX's fame and popularity, it was unlikely that consumers would be confused by PROTOX, or its use of BOTOX on those products, advertising and packaging.

Given these findings, Allergan appealed to the Full Court.

Appeal

Trade Mark Infringement - PROTOX

Allergan claimed that Self Care, in using PROTOX as a trade mark, infringed BOTOX under section 120(1) of the Act.

To determine whether section 120(1) of the Act states that:

"(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered."

To determine deceptive similarity, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.¹ The threshold for this test is whether an ordinary person, with an imperfect recollection of...