High Court of Australia injects some clarity into trade mark law
Trade mark practitioners in Australia breathed a sigh of relief when the High Court issued its decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd  HCA 8 (15 March 2023). We did not have to read far: by paragraph 3 the High Court affirmed that the reputation of a trade mark is not relevant to the question of deceptive similarity when determining whether a registered mark has been infringed under section 120(1) of the Australian Trade Marks Act 1995.
Self Care supplies “anti-wrinkle” products in the form of creams, serums and lotions which can be self-applied to the skin. One of Self Care’s trade marks for these products is PROTOX.
Allergan is the owner of the BOTOX trade mark, which is used and registered for an injectable pharmaceutical product, containing botulinum toxin, for the treatment of wrinkles.
Allergan alleged that Self Care’s conduct amounted to trade mark infringement when it:
a) Used the phrase "instant Botox® alternative" on its packaging and website; andb) Used the trade mark PROTOX in relation to its skincare products.
Issues for determination
The High Court dealt with Allergan’s complaints by considering:
- When Self Care used the phrase "instant Botox® alternative" on its packaging, was this use as a trade mark?
- Was Self Care’s use of the mark PROTOX deceptively similar to the registered BOTOX mark?
In determining the two alleged instances of trade mark infringement, the Court was asked to decide whether or not the reputation of a registered trade mark is relevant to assessing deceptive similarity in an infringement enquiry under section 120(1) of the Act.
First, the High Court held that the correct approach is to start by asking “whether the sign used indicates origin of goods in the user of the sign”. When Self Care used the phrase "instant Botox® alternative" this was not use of BOTOX in a trade mark sense to indicate the origin of Self Care’s goods. Accordingly, there could be no trade mark infringement.
Second, in relation to the question of whether or not PROTOX is deceptively similar to the registered BOTOX mark, the Court held that the correct test of comparison must be based on the notional use of BOTOX. Any actual use which has been made of the registered mark is irrelevant. In other words, the marketplace reputation which exists in the BOTOX mark cannot influence the assessment of whether or not PROTOX and BOTOX are deceptively similar.
The Court concluded that any similarities between the marks were not sufficient that there was a “real, tangible danger” of a notional buyer of the PROTOX product being caused to wonder if the product came from Allegan. The infringement action therefore failed.
What does this mean for trade mark owners?
The main takeaway for trade mark owners is that trade mark registrations are a powerful weapon in the enforcement arsenal. Although Allergan failed in this instance to establish that its registered mark had been infringed, the High Court reminded us that a trade mark registration can stand alone as an enforceable right. It does not need the support of a marketplace reputation. The presence of a reputation does not enhance the strength of a registered mark. Provided that the trade mark registration is not vulnerable to non-use cancellation, it can still be used against an infringer where the owner has little or no marketplace use of its brand.
David Moore - April 2023