Last word on BOTOX by the High Court

• Author: Mr Michael Finney
• Law Firm: Bennett & Philp Lawyers
• Published date: 22 March 2023

The recent judgment of the High Court of Australia on 15 March 2023 in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8 has resoundingly and unequivocally answered some long contested and held so-called "principles" of trade mark law. This dispute was principally concerned with use of two disputed marks "PROTOX" and "instant Botox' alternative" by Self Care, and the question of deceptive similarity and infringement under s120(1) of the Trade Marks Act 1995 (Cth) of Allergan's "BOTOX" registered trade mark.

Firstly, in referring to several lower Federal Court decisions,^{1 2} the High Court noted the relevance of the reputation of a registered trade mark in an action for trade mark infringement under s120(1) has been contentious for some years. In examining the issue, the High Court appointed Ms Beaumont SC and Ms Rubagotti as amicae curiae to contradict both Allergan and Self Care who jointly submitted that reputation of registered mark should not be taken into account in assessing deceptive similarity between it and an allegedly infringing mark. In doing so, the High Court unanimously decided that reputation should not be taken into consideration when considering deceptive similarity under s120(1) when the structure and purpose of, and the fundamental principles underpinning, the Trade Marks Act are properly construed.³

Amicae contended that "taking into account reputation in assessing deceptive similarity under s 120(1) was the practical reality of considering the "idea" of a mark and how potential customers will remember it, particularly in assessing a mark such as BOTOX which has no meaning except for what it has come to mean to potential customers by virtue of Allergan's use of the mark generally". That is, although the way in which reputation may be relevant would depend on the facts of each case, the amicae submitted "that there was no reason in principle to limit the treatment of reputation, particularly a strong or notorious reputation of a mark, in a way that only lessens the risk of "imperfect recollection" of the mark and consequentially lessens the risk of confusion".⁴ In support of their contentions, amicae principally relied on three authorities from which a "principle" was said to be drawn - that reputation is relevant where it lessens the risk of "imperfect recollection" in the assessment of deceptive similarity under s120(1).⁵

In reaching a different view, the High Court examined the Trade Marks Act and...