In brief

• In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163, the Full Court held that the trade mark PROTOX was deceptively similar to BOTOX as, even though consumers might not mistake PROTOX for BOTOX, consumers might be confused as to the source of the products.
• The Full Court’s judgment confirms that the relevant deception in determining deceptive similarity under s 120 of the Trade Marks Act 1995 (Cth) (the Act) is not determined based on whether a consumer would be confused between two trade marks, but whether two marks so closely resemble each other that consumers might be confused as to whether the products (and/or services) to which they relate come from the same source.
• Self Care IP Holdings (Self Care) could not rely on the comparative advertising exception to infringement under s 122(1)(d) of the Act, which the Full Court confirms has a narrow application in practice and it is easy to fall outside the scope of the exception’s ambit.

Facts

Allergen Inc (Allergen) is the manufacturer and supplier of well-known injectable products used in therapeutic and cosmetic treatments. These products are sold under or by reference to Allergen’s various BOTOX trade mark registrations covering a variety of goods, including ‘anti-ageing creams; anti-wrinkle cream’.

Self Care launched a range of anti-wrinkle skincare products under the umbrella brand name ‘Freezeframe’. The Freezeframe line of products includes:

• ‘PROTOX’, a skincare product advertised as an injection-free solution to ‘prolong the look of Botox®’, and
• ’Inhibox’, a skincare product advertised to be an ‘instant Botox® alternative’.

Allergen commenced proceedings alleging, amongst other things, that Self Care had infringed Allergen’s BOTOX trade mark registrations through its use of ‘PROTOX’ and its use of ‘instant Botox® alternative’.

Federal Court (first instance) decision

The primary judge, Stewart J, found in Self Care’s favour, holding that Allergen had failed to establish infringement of the BOTOX trade marks as:

• even though PROTOX is very similar to BOTOX in both look and sound such that consumers would be reminded of BOTOX upon seeing PROTOX, a consumer is unlikely to mistake PROTOX for BOTOX due to the ubiquitous reputation of the BOTOX trade marks, and
• Self Care did not use the phrase ‘instant Botox® alternative’ as a badge of origin in connection with the Inhibox product, as the phrase was considered to be descriptive and the word ‘alternative’ dispelled any possible conclusion that there was an association or approval with Allergen or the Botox brand.

Full Federal Court’s decision

PROTOX is deceptively similar to BOTOX

Allergan appealed the decision to the Full Federal Court (FFCA) and Justices Jagot, Lee and Thawley handed down their decision on 7 September 2021. The FFCA found that the primary judge had erred in the assessment of the relevant ‘deception’. That is, when assessing deceptive similarity, the relevant deception is not between the two marks and whether consumers would confuse the mark PROTOX with BOTOX or the products on which those marks were used. Rather, the relevant deception lies in whether the marks so closely resemble each other that consumers might be confused as to whether the products to which they relate come from the same source.

The FFCA held at [42] that ‘PROTOX’ so nearly resembles BOTOX that there is a real risk that PROTOX would deceive or cause confusion as to whether the two might come from the same source’ as the similarities between the two words imply an association.

PROTOX was therefore held to be deceptively similar to Allergen’s trade mark for s 120 of the Act.

‘Instant Botox® alternative’ is used as a trade mark

The FFCA disagreed with the primary judge’s assessment that Self Care’s use of the phrase ‘instant Botox® alternative’ was used as a descriptive phrase rather than used ‘as a trade mark’. The FFCA held that, as a whole, the phrase was used as a trade mark as, even though the word ‘alternative’ implied the two products were different, the phrase did not necessarily imply that the trade source was different. The FFCA held that the phrase was being used by Self Care to denote a trade source connection with Allergen’s products.

Further, the FFCA considered that even though the Inhibox product packaging identified Allergen as the owner of the BOTOX trade mark, this was not sufficient to dispel doubt as to the trade source of Inhibox products, as a consumer might reasonably believe that Self Care had a licence or authorisation from Allergen to use the BOTOX trade mark on its packaging.

The phrase ‘instant BOTOX® alternative’ was therefore being used to identify the product and to distinguish it from those of other traders.

No defence to trade mark infringement

The FFCA rejected Self Care’s submission that its use of the phrase ‘instant BOTOX® alternative’ was for comparative advertising under s 122(1)(d) of the Act and therefore did not amount to infringement as:

• the impugned use in this case was of the trade mark ‘instant Botox® alternative’, however, s 122(d)(1) only applies to the use of ‘the' trade mark, which in this case was the registered trade mark BOTOX, and
• Self Care’s use of the phrase ‘instant Botox® alternative’ was not used for comparative advertising as there was no direct comparison between the Inhibox product and the BOTOX product, but instead, the phrase was used ‘to leverage off the reputation of BOTOX’.

Misleading and deceptive conduct

The FFCA also found that the statement ‘instant BOTOX® alternative’ made on Self Care’s packaging and promotional material for its Inhibox products had breached the misleading and deceptive conduct and false or misleading representation provisions in ss 18 and 29(1)(a) and (g) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)).

The Court found the statement ‘instant BOTOX® alternative’ conveyed to reasonable consumers in the relevant target market that:

• use of Inhibox would result in a similar reduction of the appearance of wrinkles to that which would be achieved with treatment with BOTOX, and
• the effect of Inhibox would last for a period equivalent to that which would be achieved with a BOTOX injection.

The Court found that Self Care had reasonable grounds for making the first of these representations but not the second, as there was no scientific evidence to support it.

Key lessons

The FFCA’s findings are an important reminder that when engaging in comparative advertising, context is key. When seeking to rely on the comparative advertising defence to trade mark infringement, it is important to be certain that the intention behind such conduct is to advertise one product (and/or service) comparatively with a competitor’s product and not, as in this case, to leverage off the reputation of another more well-known trade mark. Companies and businesses, therefore, need to approach comparative advertising with caution and think carefully before using third-party trade marks in comparative advertising.

The case also marks a development against the argument often raised against owners of established brands – that a well-known brand simply has too much reputation to allow any sort of confusion with a similar mark.