Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd
High Court of Australia · 2023
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186
A cosmetics company sold PROTOX anti-wrinkle serum against the registered mark BOTOX, a household name. When a court asks whether the marks are deceptively similar, whose impression counts, and of what?
What happened?
Allergan Inc makes Botox, an injectable pharmaceutical containing botulinum toxin, and is the registered owner of various trade marks. One is the BOTOX mark in class 3 for goods including "anti-ageing creams" and "anti-wrinkle cream". Allergan does not use it on any class 3 goods: it is a "defensive trade mark" under s 185 of the Trade Marks Act 1995 (Cth) ([1]). The first respondent, Allergan Australia Pty Ltd, is its subsidiary ([1], fn 1).
Self Care sold topical anti-wrinkle skincare under the mark FREEZEFRAME. The appeals concerned two products, Inhibox and Protox ([2]). Self Care described Inhibox on its packaging and website as an "instant Botox® alternative", and sold the other product under the mark PROTOX. Allergan sued for infringement of the BOTOX mark under s 120(1) over both, and for contraventions of the Australian Consumer Law over the Inhibox phrase ([3]-[4]).
The primary judge found that the phrase was not used as a trade mark and that PROTOX was not deceptively similar ([52], [63]). The Full Court of the Federal Court overturned both findings ([52], [64]). Both parties told the High Court that the reputation of a registered mark should not count in deciding deceptive similarity. Because nobody was arguing the other side, the Court adjourned the hearing and appointed two amicae curiae to contradict them ([34]-[35]).
What did the Court decide?
The five Justices (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) gave one set of joint reasons. They allowed both appeals, set aside the Full Court's orders and ordered that Allergan's appeals to the Full Court be dismissed ([115]).
Self Care did not infringe the BOTOX mark by either sign, and the Court also rejected the claim under the Australian Consumer Law that "instant Botox® alternative" conveyed a representation about how long Inhibox's effects would last ([61], [73], [79], [113]-[114]).
Proposition
What is the principle?
Deceptive similarity under s 120(1). The marks are not compared side by side. The Court asks what impression the notional buyer, with an imperfect recollection of the registered mark as notionally used across the goods it covers, would have of that mark, and compares it with the impression of the alleged infringer's mark as actually used ([29]). It is not necessary to establish actual probability of deception or confusion, but a mere possibility is not enough: there must be "a real, tangible danger" of it ([32]), and it is enough if the notional buyer would entertain a reasonable doubt whether the two products come from the same source ([32]). The marks are judged as a whole, by look and by sound ([26]).
Reputation is not part of that comparison. In the Court's words: "Reputation should not be taken into account when assessing deceptive similarity under s 120(1)" ([36]). The Court gave reasons from the structure of the Act ([37]-[46]) and said the "reputation principle" in an infringement case "in all its forms, is rejected" ([50]). The Act itself deals with reputation in four specific places, ss 60, 185, 120(3) and 24 ([41]-[45]).
Two separate elements. Use of the sign as a trade mark is one element and deceptive similarity another ([22]). The first asks whether the sign is being used to indicate the origin of the goods in the user; the Full Court was wrong to ask instead whether the sign implied an association with the registered owner ([59]-[60]).
Why does this case matter?
Before this case, the Federal Court had been divided for years on how far a well-known registered mark could rely on its fame in an infringement action ([34], [50]); the High Court's reasons are now the starting point and the earlier decisions are read in their light. The Court itself noted that its approach departs from what earlier Federal Court decisions said ([50]).
Only part of the judgment is about trade mark infringement. The same appeals also decided a misleading-conduct claim under the Australian Consumer Law ([75]-[114]), so a pinpoint should be matched to the question it answers: [22]-[51] for s 120(1) deceptive similarity, [52]-[61] for use as a trade mark.
Exam and application relevance
Take s 120(1) as two questions in order ([22]), and answer the first, whether the sign is a badge of origin, on how the sign is presented and with what else ([23]-[25], [55]-[57]).
On deceptive similarity, describe the notional buyer and the goods covered by the registration, then compare that buyer's imperfect impression of the registered mark with the alleged mark as actually used ([29], [67]). In this case the Court counted similarity of sound and look ([69]) and the context of the alleged mark's real use, such as its proximity to another brand and the absence of evidence of actual confusion ([70]-[71]).
If the facts invite an argument that the registered mark is famous, say that on a s 120(1) claim the Court excluded reputation from this comparison ([36], [49]-[50]), and then look at whether one of the provisions where the Act expressly deals with reputation applies ([41]-[45]). The case concerned s 120(1); say that when you cite it, rather than applying the same reasoning to a different provision without argument.
Check your understanding
1. Allergan did not use BOTOX on any class 3 goods. Whose recollection of the mark does the test assume, and on which goods? 2. A registered owner tells you its mark is a household name. Where, in the Court's analysis, does that fact matter, and where does it not? 3. The Full Court held ([64]) that some consumers would wonder if PROTOX came from "those behind BOTOX". Why did the High Court treat that as an error rather than a finding of deceptive similarity? 4. Why did the Court not reach deceptive similarity for "instant Botox® alternative"?