No more wrinkles: High Court clarifies reputation principle for trade mark infringement in PROTOX dispute

The recent judgment of the High Court of Australia (High Court) in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 is an important one for all brand owners. 

The unanimous decision confirms that a mark’s reputation is not relevant to the assessment of deceptive similarity in the context of trade mark infringement under section 120(1) of the Trade Marks Act 1995 (Cth) (the Act). We have previously reported on the first instance decision of Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530 here and the appeal to the Full Federal Court Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 here. 

The most significant finding of the recent judgment is that the High Court has settled the previously unclear position in Australia regarding the extent to which, if at all, reputation should be considered in determining deceptive similarity for the purposes of trade mark infringement under the Act. Other key aspects of the decision include:

• the Court’s reasons as to why Self Care’s use of ‘instant Botox® alternative’ was found not to be use as a trade mark;
  
  
• the finding that PROTOX is not deceptively similar to BOTOX; and
  
  
• that marketing the Inhibox product as an ‘alternative’ to Botox does not carry with it the representation that the effects of using Inhibox would last for the same period as those of Botox. 

A brief history of the dispute

This dispute primarily relates to whether the use of PROTOX by Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd (Self Care) infringed the BOTOX trade mark registration owned by Allergan, Inc. (Allergan). 

At first instance, the Federal Court concluded that the ubiquitous reputation in the BOTOX mark refuted a finding of deceptive similarity, as consumers would be unlikely to have an imperfect recollection of such a renowned mark. On appeal to the Full Court, the bench unanimously overturned Justice Stewart’s decision and allowed Allergan’s appeal. The reputation of the BOTOX brand remained a relevant consideration in determining deceptive similarity, as consumers’ familiarity with BOTOX might cause them to wonder whether PROTOX was a cosmetic (non-medicinal) variant of BOTOX. 

On appeal to the High Court, there were four key issues for determination:

1. Whether reputation should be considered in determining deceptive similarity for the purposes of trade mark infringement under section 120(1) of the Act.
   
   
2. Whether Self Care’s use of the phrase ‘instant Botox® alternative’ was use as a trade mark.
   
   
3. Whether the term PROTOX is deceptively similar to BOTOX.
   
   
4. Whether Self Care’s use of the phrase ‘instant Botox® alternative’ represents long term efficacy of the product in contravention of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2011 (Cth)) (ACL).

Deceptive similarity and reputation

Deceptive similarity will be found if a mark so nearly resembles another trade mark that it is likely to deceive or cause confusion.[1] There must be a real, tangible danger of confusion occurring and a number of persons will be caused to wonder whether the two products come from the same source.[2] The previous position in Australian courts has been that the strength or fame of a registered mark may be a relevant factor in assessing the likelihood of deceptive similarity, if there is evidence that the registered mark had been ‘notoriously so ubiquitous and of such long standing that consumers must be taken to be familiar with it and its use in relation to particular goods’.[3]

In a somewhat uncommon state of affairs, the parties to this appeal agreed on this issue and each submitted that reputation should not be relevant to the assessment of deceptive similarity and therefore completely irrelevant to determining infringement under section 120(1) of the Act. Because of this approach, the Court requested amicus curiae to make submissions on the opposing arguments. Those submissions argued that it is permissible to consider a mark’s reputation in the assessment of deceptive similarity as it is the practical reality of considering the ‘idea’ of a mark.

The High Court has made clear that reference to, or reliance on, reputation in determining whether there has been an infringement under s 120(1) is not permissible. The Court noted that in the assessment of deceptive similarity under s 120(1), the hypothetical person is not to have any regard to the actual use of the registered mark, the actual business of the owner of the mark, any goods the owner produces, any acquired distinctiveness from use of the mark or any reputation.[4] The test assumes that the notional buyer has an imperfect recollection of the mark as registered, versus the alleged infringer’s actual use of the mark. It is not to attribute any familiarity with the actual use of the registered mark or any reputation of the trade mark owner.

In arriving at this conclusion, the Court had regard to a number of factors:

• Considering the purpose of the Act. The Court considered various aspects of the Act, including its structure and policy, and the nature and extent of the property rights granted by the Act. The Court found it is important that the monopoly given by the registration of a mark is limited to the use of the mark on particular goods or services for which the mark is registered.[5] Moreover, there are a number of sections of the Act which already contemplate the assessment of a mark’s reputation.[6] The Court also noted that there is no reference to reputation on the publicly available Register of Trade Marks, which is used by the public to identify what marks are registered and the extent of monopoly given by each registration.[7]
  
  
• Reputation can be difficult to ascertain. In an infringement context it would be a complex exercise to determine the kinds of permissible evidence on this point. This, according to the Court, would run contrary to the intended straightforward test of trade mark infringement.[8] If reputation was considered after registration other than where expressly provided for in the Act, the Court concluded that the level of protection afforded to that right would vary and be inherently uncertain.[9] Indeed, it has been stated that in Australia, ‘reputation in a trade mark can…be a double-edged sword and may either reinforce or mitigate the effect of differences’.[10] As such, Australian courts have taken different approaches on this issue,[11] potentially causing confusion amongst trade mark owners as to whether their reputation will help or hinder their infringement prospects. The Court’s position on this issue runs contrary to the approach in other Federal Court decisions, which were raised by the amicus.[12] However, as the Court noted, the key decision Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 was not a decision in the infringement context, but assessing deceptive similarity in relation to the registration of a mark. The Court was not required to determine whether reputation can remain a factor in that assessment.

Was the use of the phrase ‘instant Botox® alternative’ use as a trade mark?

The Court was also asked to determine whether the phrase ‘instant Botox® alternative’ was used by Self Care as a trade mark. The Full Court overturned the primary judge’s finding that it was not use as a trade mark.

The High Court concluded Self Care’s use of this phrase did not amount to use as a badge of origin, because of the following factors:

• Self Care’s use of the phrase was inconsistent in size, front, capitalisation and presentation across its various uses (for example, some were vertical, others horizontal).
  
  
• The phrase was displayed alongside two clear badges of origin (being Self Care’s umbrella brand ‘FREEZEFRAME’ and the brand of the relevant product, ‘INHIBOX’), and was not as dominant as the use of those marks.
  
  
• The script style and presentation of the phrase indicated it was ‘descriptive of the product to which it was attached as an alternative product’.[13]

In coming to this conclusion, the Court identified two key errors with the Full Court’s reasoning. First, in its assessment of the primary judge’s reasoning about whether the phrase was used as a trade mark, the Full Court actually referred to paragraphs from the primary judgment which were in relation to Self Care’s use of ‘BOTOX’ alone. Second, the Full Court considered whether there was an implied association in the trade source between the two products; the High Court noted this is not relevant for the purposes of whether the phrase was used as a trade mark, but rather goes to the deceptive similarity point.[14] 

These findings reiterate that any misrepresentation or likelihood of deception are not relevant to the question of use as a trade mark.

PROTOX is not deceptively similar to BOTOX

The primary judge found that PROTOX and BOTOX were not deceptively similar, as the reputation of BOTOX meant consumers were not likely to be deceived. However, the Full Court found that despite the differences between the words, they were deceptively similar as there is a real risk of confusion as to whether the two products might come from the same source. It is notable that both Courts relied on reputation (and came to different conclusions) which the High Court has now determined is incorrect reasoning. The Full Court also considered the notional use of BOTOX based on the goods covered by that registration, rather than its actual use.

In this decision, the Court noted the visual and aural similarities between the marks and considered whether the similarities might ‘imply an association’ between the source of the products.[15] The Court found that even though the phrase ‘prolong the look of Botox®’ could be viewed to suggest that Protox is a complementary product to Botox or enhances the effect of Botox, it does not follow that there is a suggestion of affiliation.[16] Indeed, the Court noted that Self Care’s website stated that Protox has no association with any anti-wrinkle injection brand. 

It was also significant that the PROTOX mark was almost always used in close proximity to the FREEZEFRAME brand, and that there was no evidence of actual confusion.

Did the use of the phrase ‘instant Botox® alternative’ represent the long term efficacy of the product? 

Self Care appealed the Full Court’s finding that by using the phrase ‘instant Botox® alternative’, it made a representation that the effect of Inhibox would last, after treatment, for a period equivalent to that which would be achieved with treatment by a Botox injection. This was held to be made in contravention of the ACL.

The High Court found that the Full Court’s reasoning was flawed as it relied on the false premise that consumers in the target market included consumers who considered Inhibox and Botox came from same trade source, because of a) the reference to Botox and b) the fact that the primary judge found Botox had powerful brand with widespread reputation.[17] In overturning this finding, the High Court found that the phrase would likely be understood to distinguish Inhibox as not having certain ‘disadvantageous’ qualities of Botox (such as the need for it to be administered by a healthcare professional). It would also likely suggest that Inhibox would achieve a similar outcome to Botox in terms of reducing appearance of wrinkles. However what the phrase does not mention, as the Court identified, is anything about the extent of Inhibox’s effectiveness, particularly with regard to how long the effects last.[18]

In its analysis, the Court considered the representation in the broader context and immediate context including the packaging and marketing material used. It was notable that the earlier packaging of Inhibox stated that the product ‘lasts for hours’. The Court noted that there were some statements that the product has ‘long term’ effects, but consumers are unlikely to consider that would mean the same as a Botox injection, given the statement about lasting for hours and the consistent use of word ‘instant’ on packaging.[19] According to the High Court, an instant product is less likely to be considered as one that will last as long as Botox.

Moreover, the broader context also leans away from a representation that the product is just as efficacious as Botox, including the type of product, administration method, price and trade channels. Therefore the Court concluded that a reasonable consumer in the target market would not think that a topically self-applied cream obtained from the pharmacy at a relatively low cost and worn in the course of the usual activities of life (including bathing and exercise) would have the same period of efficacy after treatment as an injectable anti-wrinkle treatment that is only available to be administered by healthcare professionals at a higher cost.[20]

Looking ahead

This decision provides some useful analysis on various elements of trade mark and consumer law, but predominantly for the Court’s findings on the reputation principle. 

Trade mark practitioners should take note of the clear position on reputation, as it will impact trade mark clearance searches and infringement opinions. It is no longer possible for a party to simply add a well-known mark to a third party’s registered trade mark to avoid infringement on the basis that reputation will counter a finding of deceptive similarity. Similarly, reputation cannot be used as a weapon in the infringement context under s 120(1) to encourage a finding of deceptive similarity. Parties will need to rely on s 120(3) should they wish to rely on reputation in an infringement context. Conversely, brand owners who had previously failed to prove confusion (and infringement) of their well-known mark (as their mark was ‘too famous’ and they were ‘a victim of their own success’) may now be able to litigate successfully.

More worryingly, those marks that achieved registration in the past by relying on the ‘reputation principle’ (either through convincing the Registrar with arguments or in an opposition) might now be vulnerable to subsequent invalidation, on the basis that they should not have been registered as the wrong deceptive similarity test was applied (in a comparison with an earlier third party mark). 

As foreshadowed above, the High Court has left open whether reputation can be considered in assessing deceptive similarity in the context of trade mark prosecution or oppositions. It remains to be seen whether the so-called ‘reputation principle’ will have any place in those assessments given the Court’s strong repudiation of that principle. There is no reason at law, or in the structure of the Act why the test for deceptive similarity for applications under s 44 should be any different to the test for infringement under s 120. The Registrar of Trade Marks has not yet commented on the Court’s decision, but it would not be surprising if the Registrar’s guidelines to trade mark examiners will be to follow the Court’s new test when examining trade mark applications.