BOTOX Reputation Unable to Provide Smooth Result for Allergan’s Infringement Allegation
In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd  HCA 8 the High Court has unanimously allowed Self-Care’s appeal, holding that Allergan’s BOTOX mark has not been infringed either by Self-Care’s use of the phrase "instant Botox® alternative" or by its mark PROTOX.
Self-Care uses the phrase "instant Botox® alternative" and its mark PROTOX in relation to anti-ageing serum and anti-wrinkle serum, which are goods that fall within class 3 on the Nice Classification. Allergan’s primary registration and use of its BOTOX mark is in relation to the following class 5 goods: pharmaceutical preparations for the treatment of neurological disorders, muscle dystonias, smooth muscle disorders, autonomic nerve disorders, headaches, wrinkles, hyperhydrosis, sports injuries, cerebral palsy, spasms, tremors and pain.
However, in 2015 the BOTOX mark was registered by Allergan as a defensive mark in relation to numerous other goods and services, including many class 3 goods. Australia allows the owner of a mark that is used and registered in relation to particular goods and services to also register that mark as a defensive mark in relation to other goods and services if use of the mark in relation to those other goods or services would likely be taken as indicating a connection with the owner of the mark that is registered and used. Such defensive marks do not need to be used in order to be maintained. New Zealand dropped defensive marks when its Trade Marks Act 2002 commenced, with existing defensive marks expiring by way of being denied renewal.
The High Court found that the primary judge was correct to find that the phrase “instant Botox® alternative” was not used by Self Care as a trade mark, and that the Full Court was wrong to overturn that finding. The presentation of that phrase and its proximity to source identifiers along with its descriptiveness in relation to the products it was used on counted against it having trade mark significance.
The primary judge found PROTOX to not be deceptively similar to BOTOX as the marks were sufficiently distinctive to the extent that relevant notional consumers were not likely to confuse them. While the words have visual and phonetic similarities, there was found to be little by way of conceptual similarity. The primary judge rejected the contention that there was likely to be imperfect recollection of the BOTOX mark, finding that the high degree of reputation in the mark would count against that.
The Full Court allowed Allergan’s appeal. While it agreed that the two marks would not be confused, the Full Court nonetheless found infringement on the basis that relevant consumers could be confused as to whether the two marks are used by the same undertaking on different goods. Notably, at  the Full Court said:
Some consumers are likely ... to have wondered whether PROTOX was an alternative product being offered by those behind BOTOX, perhaps targeted to those who did not like injections or who wanted the convenience of a home treatment. Some consumers are likely to have wondered whether PROTOX was developed by those behind BOTOX as a topical treatment to be used in conjunction with Botox treatment, perhaps to improve or prolong results.
The High Court readily found the Full Court fell into error. Not only did it fail to apply the correct test of comparison based upon the notional use of BOTOX on its registered goods, rather than its actual goods, the reputation of BOTOX is also implicit to the Full Court’s reasoning. The High Court held that reputation should not be taken into account when assessing deceptive similarity under section 120(1). That conclusion is compelled by the structure and purpose of, and the fundamental principles underpinning, the TM Act. As only a registered mark can be infringed, alleged infringing conduct can only be assessed in relation to the monopoly conferred by registration. The degree of deceptive similarity between a registered mark and an allegedly infringing mark for section 120(1) purposes does not depend upon the reputation of the registered mark. If reputation can be relevant to infringement, then it would need to be recorded on the Register as the Register is the complete record of the monopoly. Neither the reputation of the mark nor the trade mark owner's reputation is a particular on the Register. Were reputation relevant to establishing infringement it would collapse the long-standing distinction between trade mark infringement and passing off.
While the High Court’s decision was principally in response to the Full Court’s decision, its reasoning also applies against the trial judge’s use of BOTOX’s reputation to find that imperfect recollection was not an issue. Making its own assessment the High Court found there was no real tangible danger of deception or confusion occurring. While there were similarities that might imply an association to a notional buyer, such a notional buyer would also be aware that one trader’s product can be used to enhance another trader’s product. Self-Care’s product and its website contained statements that would allow a reasonable consumer to realise they are not purchasing a product made by the owner of the BOTOX brand.
Author: Quinn Miller