High Court's BOTOX Decision Highlights A Need For Reform

• Published date: 05 May 2023
• Law Firm: Davies Collison Cave
• Author: Mr Sean McManis

The High Court's decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 involved balancing the rights of traders to properly describe their goods, with the monopoly rights of trade mark owners. This was done in the context of interpreting the provisions of the Trade Marks Act 1995 and assessing matters of impression.

It raises important questions concerning:

• The purpose of the Trade Marks Act; and
• Whether changes are needed

In light of the potential impacts of the decision, it is arguable that a review of current provisions, and some amendment of the Act, is warranted.

What was Decided?

Allergan failed in its attempt to prevent use of the phrase the phrase "instant Botox' alternative" on Self Care's packaging and its website (examples below)

The High Court decided that Self Care was not using Botox 'as a trade mark' in its advertising, with the primary reasons being:

• The use of "instant Botox' alternative" was inconsistent in size, font and presentation on packaging and elsewhere;
• "Of particular significance" was the fact that the expression appeared alongside two clear badges of origin used by Self Care, namely FREEZEFRAME and INHIBOX;
• The representations of FREEZEFRAME and INHIBOX were distinctive and stylised and apt be perceived as brands

Since 'use as a trade mark' is a prerequisite to any finding of infringement under the Trade Marks Act, this finding left Allergan without any remedy.

The High Court cited, and followed, the 1934 House of Lords decision in Yeast-Vite Case (1934 51 RPC) 110, where use of "Yeast Tablets a substitute for Yeast-Vite" was not use of Yeast-Vite as a trade mark.

Interestingly, the Court did not discuss the decision in Mark Foy's Ltd v Davies Coop & Co Ltd ("Tub Happy case") [1956] HCA 41, where use of Tub Happy in contexts such as "Exacto Cotton Garments - Tub Happy Cotton Fresh Budget Wise" was use of Tub Happy as a trade mark.

Presumably use of the qualifier, 'alternative', is significant because it assists in indicating that the trade mark is not being used to identify goods of the user but is being used to refer to the goods of another business. Nevertheless, the Tub Happy decision remains undisturbed.

Indicating a Connection or Distinguishing?

Under the 1995 a trade mark was defined as

a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods and a person who has the right, either as proprietor or as registered user, to use the mark, whether with or without an indication of the identity of that person

The 1995 Act defines a trade mark as:

a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

When the 1995 Act was introduced, there was nothing to indicate that the legislators intended to affect the tests for infringement under the 1955 Act. Indeed, the words "indicating a connection" appear in s120(3) and the fundamentals of infringement remain unchanged. Subsequent court decisions also mostly reflect a consistent approach pre-and post the 1995 Act.

At the time 1995 Act was enacted, there was much discussion about 'new' trade marks, such as shapes, colours and sounds. Against that background, it is argued that when drafting the definition of trade mark the legislators were more concerned about defining what could be a registered as a trade mark than what impact that might have on the issue of infringement.

Notwithstanding that, if the threshold...