No more wrinkles: High Court clarifies reputation principle for trade mark infringement in PROTOX dispute

• Author: Mr Jurgen Bebber, Chris Sgourakis and Sarah Catania
• Law Firm: Corrs Chambers Westgarth
• Published date: 25 March 2023

The recent judgment of the High Court of Australia (High Court) inSelf Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8 is an important one for all brand owners.

The unanimous decision confirms that a mark's reputation is not relevant to the assessment of deceptive similarity in the context of trade mark infringement under section 120(1) of the Trade Marks Act 1995 (Cth) (the Act). We have previously reported on the first instance decision of Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 here and the appeal to the Full Federal Court Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2021] FCAFC 163 here.

The most significant finding of the recent judgment is that the High Court has settled the previously unclear position in Australia regarding the extent to which, if at all, reputation should be considered in determining deceptive similarity for the purposes of trade mark infringement under the Act. Other key aspects of the decision include:

• the Court's reasons as to why Self Care's use of 'instant Botox' alternative' was found not to be use as a trade mark;
• the finding that PROTOX is not deceptively similar to BOTOX and
• that marketing the Inhibox product as an 'alternative' to Botox does not carry with it the representation that the effects of using Inhibox would last for the same period as those of Botox.

A brief history of the dispute

This dispute primarily relates to whether the use of PROTOX by Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd (Self Care) infringed the BOTOX trade mark registration owned by Allergan, Inc. (Allergan).

At first instance, the Federal Court concluded that the ubiquitous reputation in the BOTOX mark refuted a finding of deceptive similarity, as consumers would be unlikely to have an imperfect recollection of such a renowned mark. On appeal to the Full Court, the bench unanimously overturned Justice Stewart's decision and allowed Allergan's appeal. The reputation of the BOTOX brand remained a relevant consideration in determining deceptive similarity, as consumers' familiarity with BOTOX might cause them to wonder whether PROTOX was a cosmetic (non-medicinal) variant of BOTOX.

On appeal to the High Court, there were four key issues for determination:

1. Whether reputation should be considered in determining deceptive similarity for the purposes of trade mark infringement under section 120(1) of the Act.
2. Whether Self Care's use of the phrase 'instant Botox' alternative' was use as a trade mark.
3. Whether the term PROTOX is deceptively similar to BOTOX.
4. Whether Self Care's use of the phrase 'instant Botox' alternative' represents long term efficacy of the product in contravention of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2011 (Cth)) (ACL).

Deceptive similarity and reputation

Deceptive similarity will be found if a mark so nearly resembles another trade mark that it is likely to deceive or cause confusion.¹ There must be a real, tangible danger of confusion occurring and a number of persons will be caused to wonder whether the two products come from the same source.² The previous position in Australian courts has been that the strength or fame of a registered mark may be a relevant factor in assessing the likelihood of deceptive similarity, if there is evidence that the registered mark had been 'notoriously so ubiquitous and of such long standing that consumers must be taken to be familiar with it and its use in relation to particular goods'.³

In a somewhat uncommon state of affairs, the parties to this appeal agreed on this issue and each submitted that reputation should...