Allergan Australia Pty Ltd (‘Allergan’) manufactures Botox and is the registered owner of the BOTOX mark. The Applicant, Self Care Holdings (‘Self Care’) supply cosmetic anti-wrinkle creams under the branding elements ‘instant Botox alternative’ and Protox. In the first proceeding brought by Allergan against Self Care, it was alleged that Self Care infringed the BOTOX trade mark, and had conveyed misleading representations concerning the efficacy of their product. The primary judge found Self Care not guilty of the allegations, but this decision was overturned by the Full Federal Court upon Allergan’s appeal. Self Care thus appealed to the High Court.
In the High Court appeal, the key issue was whether Self Care’s Protox was deceptively similar to Allergan’s BOTOX trade mark. The High Court confirmed the principle of the notional buyer weighing up ‘reasonable doubt’ as to whether the products came from the same source based on their similar trademarks or branding elements was the relevant test.3 In the context of reputation of the trade mark, however, the High Court elaborated that reputation should not be taken into account when considering deceptive similarity as per section 120(1) of the Trade Marks Act 1995 (Cth).4 Policy reasons were analysed to the extent that there are recognised difficulties in determining infringement, and that, ultimately, public interests may ‘distract from [or]…defeat’ the test outlined as above.5
In avoiding consideration of Allergan’s reputation of BOTOX as a trademark, the Court instead reviewed the context of the use of Protox and the notional use of BOTOX. This review concluded that the Full Court erred by considering the actual use of the BOTOX mark rather than the notional use. The High Court held that the marks were not deceptively similar under section 120(1) of the Trade Marks Act 1995 (Cth),6 provided that the notional use of BOTOX by a buyer was compared against the actual use of Protox by Self Care.
The key takeaway of the High Court’s decision relate to the rejection of reputation as a relevant consideration when determining trademark infringement, confirming that the straightforward test ultimately relates to the notional buyers ‘reasonable doubt’ in relation to the products originating from the same company or source based on the trade mark resemblance.
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1 Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor (‘Self Care’) [2023] HCA 8, [32].
2 Trade Marks Act 1995 (Cth) s 120(1) (‘Trade Marks Act’).
3 Self Care (n 1) 32.
4 Trade Marks Act (n 2) s 120(1).
5 Self Care (n 1) 48.
6 Trade Marks Act (n 2).
