The High Court has clearly set out in Self Care v Allergan that the reputation of a trade mark is not relevant when assessing deceptive similarity in infringement proceedings.1 In a unanimous decision, overruling a three-judge bench of the Full Federal Court, the High Court held that Self Care did not infringe Allergan’s ‘BOTOX’ mark by its use of either “instant Botox® alternative” or “PROTOX”, nor did it mislead consumers about the long term efficacy of its product.
- The reputation of a registered trade mark or its owner is not relevant to the assessment of deceptive similarity in an infringement action under section 120(1) of the Trade Marks Act 1995 (Cth) (Act).
- There are four prescribed and limited circumstances in which the consideration of reputation is expressly addressed by the Act. In all other circumstances, the monopoly of a registered trade mark is limited to the particulars recorded on the public register.
- The two elements in determining infringement under section 120(1) are often conflated. Whether the sign was (1) used as a trade mark, and (2) deceptively similar to the registered mark, must be assessed independently. The factors relevant to the likelihood of deception have no role in determining whether the sign was used as a trade mark in the first place.
- The High Court’s decision brings some relief for advertisers used to advertising their wares by comparison to their competitors, in finding that the phrase “instant BOTOX® alternative” was descriptive and not used as a trade mark.
Self Care sells a range of anti-wrinkle skin care products under the brand name ‘Freezeframe’, including ‘Protox’ (a topical cream styled as an injection-free solution to “prolong the look of Botox®”) and ‘Inhibox’ (marketed as an “instant Botox® alternative”).
In our previous article, we reported on the ruling of the Full Court of the Federal Court of Australia, which overturned the primary judge’s decision and held that Self Care had both infringed Allergan’s ‘BOTOX’ trade mark and misled consumers about the long term effectiveness of Inhibox.
Self Care sought special leave to appeal the decision.
Chief Justice Kiefel and Justices Gageler, Gordon, Edelman and Gleeson unanimously found in favour of Self Care, holding that its trade mark for the well-known anti-wrinkle injection, ‘BOTOX’, was not infringed by Self Care’s use of the phrase “instant Botox® alternative” nor its ‘Protox’ brand.
Self Care did not use "instant Botox® alternative" as a trade mark
The High Court agreed with the primary judge that the use of the phrase “instant Botox® alternative” did not constitute use as a trade mark. Contrary to the (somewhat surprising) finding of the Full Court, the bench unanimously held that those words constituted “a descriptive phrase that had an ordinary meaning … descriptive of the product to which it was attached as an alternative product”.2
The Court clarified that a sign may have multiple purposes; having a descriptive function does not preclude use ‘as a trade mark’ if it also has the purpose of distinguishing the goods.3 However, the “better view” of the phrase in question was that, “consistent with its ordinary meaning, [it] had only a descriptive purpose and nature”.4
In reaching its conclusion, the High Court emphasised the following facts:
- The phrase appeared in inconsistent sizes, fonts, capitalisation, and arrangement across its presentation on packaging and the website, indicating the phrase was not being used a ‘badge of origin’ to distinguish Self Care’s goods.
- The phrase was featured in smaller font and less prominently alongside Self Care’s two clear badges of origin, FREEZEFRAME and INHIBOX, which were presented as distinctive and stylised signs bearing the hallmarks of a brand.
Since “instant Botox® alternative” was not used as a trade mark, the High Court did not need to consider question of deceptive similarity, nor the defences of use in good faith or comparative advertising.
Reputation should not be taken in account when assessing deceptive similarity under section 120(1)
Despite the Full Court’s holding to the contrary, Allergan and Self Care agreed before the High Court that the reputation of a registered mark is not to be considered in the assessment of deceptive similarity. However, given the importance of the issue and its (somewhat tortured) recent history, the High Court appointed two experienced IP barristers as amicae curiae, or ‘friends of the court’, to contradict the parties. Ultimately, however, the bench agreed with Allergan and Self Care.
Their Honours observed that there are four limited circumstances in which the consideration of reputation is prescribed in the Act:
- opposition to registration of a mark under section 60;
- registration of a defensive trade mark under section 185;
- infringement of a “well known” mark under section 120(3); and
- where a trade mark has effectively become a ‘generic’ description of a particular product, under section 24.
These provisions, the Court said, reflect a careful balance struck between various interests. Outside of those specific circumstances, “the registration of a trade mark alone determines the rights of the owner”.5
This finding was also supported by practical considerations. Importing reputation into the test for infringement would render the boundaries of the monopoly inherently uncertain. The Court also noted the difficulty, and evidentiary complexity, of ascertaining the extent of reputation.
PROTOX is not deceptively similar to BOTOX
Having established that deceptive similarity is to be assessed as between the marks themselves, and not reputation, the High Court found that the words ‘PROTOX’ and ‘BOTOX’ are sufficiently different, such that consumers are unlikely to confuse the two.
Their Honours held that the Full Court had incorrectly relied on the reputation of BOTOX as an injectable treatment in reaching the conclusion that potential customers “would wonder whether those behind BOTOX had decided to expand into topical cosmetic anti-wrinkle products".6
The Court clarified that the correct inquiry does not involve consideration of the actual reputation of Botox®, the injectable product. Rather, it is whether ‘PROTOX’ so nearly resembles ‘BOTOX’ that there is a real, tangible danger of confusion or deception, such that the notional buyer of anti-wrinkle creams (being the goods in respect of which the defensive ‘BOTOX’ mark is registered) would be caused to wonder whether the products come from the same source.
The High Court found there was no such danger, even when allowing for imperfect recollection, and took into account the specific circumstances of actual use of PROTOX by Self Care on the product’s packaging and website.
Self Care did not mislead consumers about the long term efficacy of its product
Self Care also appealed the finding that it had breached the Australian Consumer Law (ACL). The Full Court had found that the phrase “instant Botox® alternative” represented to consumers that not only does Inhibox achieve a similar reduction in the appearance of wrinkles as Botox®, but those effects last for an equivalent period. The High Court agreed with Self Care that the latter representation was not made.
The Court ultimately found that the ordinary and reasonable consumer would likely believe it “too good to be true” that the effects of Self Care’s topical cream are both instant and as long lasting as those of a Botox® injection.7
This decision clarifies the role of reputation in assessing trade mark infringement, a matter that has been contentious for some years. Owners of registered trade marks must remember that their monopoly is limited to the particulars recorded on the public register. Any reputation accrued to the trade mark or its owner will not be taken into account when a court is tasked with assessing deceptive similarity between their mark and an allegedly infringing mark under section 120(1).
Much to the relief of many advertisers, the High Court also reinstated the primary judge’s ruling that the words “instant Botox® alternative” were descriptive, and not used as a trade mark. This is arguably a more sensible and coherent interpretation, and one likely to be of reassurance to companies engaging in the time-worn tradition of advertising their wares by comparison to their competitors.8