A wrinkle in the Federal Court decision of trade mark infringement: Full Court overturns Botox v Protox finding

• Published date: 23 September 2021
• Law Firm: Corrs Chambers Westgarth
• Author: Mr Jurgen Bebber, Chris Sgourakis, Rachelle Downie and Sarah Catania

This article reports on the Full Court appeal of a decision regarding trade mark infringement of the mark BOTOX by the use of PROTOX (Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163). In a unanimous judgment, the Full Court (comprised of Jagot, Lee and Thawley JJ) allowed Allergan's appeal, clarifying the law in relation to deceptive similarity and what constitutes trade mark use. This important decision clarifies the extent to which companies can use, refer to or seek to reference another company's brand or mark.

We have previously reported on the first instance decision of Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 in an article here.

Brief overview of the dispute and the original Federal Court decision

Allergan Inc (Allergan) is the registered owner of several BOTOX trade marks including two BOTOX marks registered in class 5 for 'pharmaceutical preparations', and two other marks, including a defensive mark, in class 3 for 'cosmetics, ... skin creams and lotions'.

Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd (Self Care) sell cosmetic products, including Protox, under the umbrella brand FREEZEFRAME. Self Care's marketing and packaging depicted the word BOTOX in composite phrases, such as 'clinically proven to prolong the effect of Botox''.

Allergan claimed this use constituted, amongst other things, trade mark infringement under the Trade Marks Act 1995 (Cth) (the Act) as the PROTOX mark was 'deceptively similar' to the BOTOX mark and Self Care used the BOTOX mark on Freezeframe products, packaging and advertising.

At first instance, Stewart J found that Allergan failed to establish infringement of the BOTOX trade mark. His Honour concluded that the ubiquitous reputation in the BOTOX mark successfully countered a finding of deceptive similarity, as consumers would be unlikely to have an imperfect recollection of such a renowned mark.

The Court also refused to cancel Allergan's defensive trade mark registration (a finding that Self Care did not appeal).

Deceptive similarity: the correct test is whether there is confusion as to the source of the products, not confusion between the marks themselves

As a trade mark's reputation is generally irrelevant to the assessment of deceptive similarity, it is unsurprising that Allergan appealed this decision.

Upholding Allergan's appeal, the Full Court held that PROTOX is deceptively similar to BOTOX as there was a real risk that consumers...