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The High Court has recently handed down a much anticipated finding on a trade mark dispute in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8. Significantly for trade mark holders, the court clarified how much trade mark reputation plays into whether a trade mark is considered “deceptively similar” to another. This was an appeal from an earlier decision of the Full Court of the Federal Court.

Allergan is the owner of the well-known “BOTOX” trade mark for its injectable pharmaceutical product.  Self Care sold a non-injectable skincare product under the name “PROTOX”, which was described on the box as a solution to “prolong the look of Botox” and also described as an “instant BOTOX alternative”.

One of the main issues to be determined in this appeal was whether Self Care’s anti-ageing serum, PROTOX, had infringed Allergan’s “BOTOX” trade mark.

Under section 120(1) of the Trade Marks Act 1995 (Cth) (the Act), an infringement of a registered trade mark is found to have taken place if a person “uses as a trade mark a sign that is substantially identical with, or deceptively similar to, [that registered] trade mark in relation to the goods or services in respect of which the trade mark is registered.”

Was “instant Botox® alternative” used as a trade mark?

One issue was whether Self Care used “instant Botox^® alternative” as a trade mark. Under section 17 of the Act, “a trade mark is 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.”

The High Court held that one needs to ask “whether the sign used indicates origin of goods in the user of the sign”. That is, whether in referring to “Botox”, Self Care sought to identify the “Botox” goods as coming from itself. That was not the case here.

Did “PROTOX” infringe the “BOTOX” mark?

It was agreed by both parties that “PROTOX” was being used as a trade mark. The second issue therefore turned on whether Self Care’s “PROTOX” mark was deceptively similar to “BOTOX”.

Since the case of Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365Woolworths case, it has been a live issue as to whether the court will consider the reputation of the owner of a registered trade mark in the assessment of deceptive similarity. In that case, the Registrar of Trade Marks refused Woolworths’ application for a “WOOLWORTHS metro” trade mark on the grounds of “metro” being too similar to existing trade marks. Woolworths successfully argued in court that their brand is familiar to Australians and “WOOLWORTHS metro” can therefore be distinguished from existing “metro” trade marks.

In the present case, Allergan argued that consumers will incorrectly assume the “PROTOX” mark originated from Allergan, because of the deceptive similarity between the marks coupled with the significant reputation in the BOTOX brand within the industry. In clarifying the issue, the High Court unanimously held that reputation is not relevant in the determination of deceptive similarity under s 120(1) the Act.

Further, it was found that there was not a “real, tangible danger” of confusion or deception occurring, as a consumer of ordinary intelligence and memory would be able to distinguish the marks.  As such, there was no infringement.

What does this mean for your trade mark protection?

While in this particular case, Self Care was held not to have infringed Allergan’s trade mark, Allergan’s registration of BOTOX has nevertheless prevented other businesses manufacturing products of an identical name. Allergan has been able to maintain a profitable brand and limit the market’s ability to piggyback off their success through the protection of their trade mark.

The decision has confirmed that reputation is irrelevant for determining whether two trade marks are deceptively similar for the purposes of section 120(1) of the Trade Marks Act. However, it does not completely remove the relevance of confusion. In an infringement action under section 120(3), which covers the use of the trade mark in relation to unrelated goods or services, reputation is still of vital importance in determining whether, because of registered mark is well known, the allegedly infringing trade mark is likely to be taken as indicating a connection between the respective goods.

Reputation is also expressly relevant under sections 60 (a ground of opposition based on reputation), 185 (defensive trade marks) and 24 (trade marks that become generic).

Taking control of your trade mark

What is certain, is that if you have a strong reputation in your trade marks, then you should regularly monitor the Australian Trade Marks Database so you can oppose any applications for registration before they are registered (this will provide you with a stronger basis for relying on your reputation).  Additionally, it is essential to maintain a sturdy IP portfolio to protect your brand (and all variants thereof).

Macpherson Kelley’s well-regarded and award-winning IP team understands the complexities and rapidly evolving nature of intellectual property law, with a focus on commerciality. In understanding your business’ needs, our team can provide you with the necessary advice to prevent unauthorised use of your brand and will be on the front foot when your reputation is threatened.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.