Botox raises eyebrows: Australian High Court clarifies law on reputation

Kat friend Ann-Kathrin Goller discusses a recent decision in Australia that portends a significant departure from the approach taken in many jurisdictions regarding the role of reputation in a trademark infringement dispute.

There has been considerable uncertainty and inconsistency as to whether reputation in either the allegedly infringing or infringed mark is relevant to the assessment of deceptive similarity under Australia’s direct infringement provision. The High Court (Australia's highest court) emphatically rejected the relevance of reputation in Self Care IP Holdings v Allergan Australia [2023] HCA8, ruling that PROTOX and “instant BOTOX alternative” do not infringe the registered trade mark BOTOX.

The decision signifies a departure from the US, UK, and European approach of taking into account reputation. The High Court appears to have separately created uncertainty in relation to the remaining principles relevant to assessing deceptive similarity.

Background

Self Care sells anti-wrinkle cream products, including under the name PROTOX (see below, figure 1), and packaging that describes the product as an “instant Botox alternative” (see below, figure 2). Allergan is the owner of the BOTOX trade mark registered in class 5 for pharmaceutical preparations for the treatment of wrinkles and class 3 for anti-ageing creams.

[Notably, the class 3 registration is a defensive trade mark. A defensive trade mark is available in Australia for an already registered, well-known mark, and offers protection across goods and services beyond those on which the mark is used or intended to be used.]

                                                                                              Figure 1

Allergan brought proceedings for infringement of its class 3 trade mark by Self Care’s use of PROTOX and “instant Botox alternative”, but at first instance was unsuccessful. The Full Federal Court on appeal overturned the primary decision, ruling that PROTOX and “instant Botox alternative” constituted trade mark use, and that PROTOX was deceptively similar to BOTOX.

                                                                                              Figure 2

Self Care then appealed to the High Court, which considered whether “instant Botox alternative” and PROTOX were used as trade marks, and whether the use was deceptively similar to BOTOX under section 120(1) of the Trade Marks Act 1995 (Cth).

Decision by the High Court

The High Court unanimously held that Self Care did not infringe Allergan’s BOTOX mark. While the entire judgment (including the Court’s ruling that “instant Botox alternative” was not use as a trade mark) is worthy of attention, this Kat friend will focus on the High Court’s rejection of the relevance of reputation and its application of the existing principles of deceptive similarity.

The relevance of reputation

The High Court held that reputation is not relevant to infringement proceedings under s 120(1), meaning that the reputation of a mark should not be taken into account in assessing deceptive similarity between it and an allegedly infringing mark. In so doing, the High Court rejected the so-called reputation principle that had been applied in previous Federal Court decisions.

To support this finding, the High Court referred to the prescribed and limited circumstances in which reputation is expressly relevant in the Trade Marks Act, which notably do not include s 120(1). Further, the High Court emphasised that the Trade Marks Register must speak for itself and enable a person to identify what marks are registered, and the scope of the registration. A mark’s reputation is, of course, not a particular on the Register. Moreover, the High Court referred to the difficulties in ascertaining reputation without evidence.

The High Court’s finding that reputation is not relevant cuts both ways. Reputation can no longer be relied upon to strengthen a plaintiff’s claim of deceptive similarity. On the other hand, the reputation of a trade mark will no longer be considered in concluding that a mark is “too famous” to be confused, as was the case in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174.

Relevance of surrounding circumstances in considering deceptive similarity

Following the High Court’s rejection of the reputation principle, it went on to consider whether PROTOX or “instant BOTOX alternative” were deceptively similar to BOTOX. This factual analysis and reasoning on deceptive similarity has caused a bit of a stir among Australian trade mark practitioners.

In Australia, the statutory inquiry under s 120(1) requires the court to consider whether PROTOX so nearly resembles BOTOX that it is likely to deceive or cause confusion. It is well-accepted that in comparing the two marks, it is necessary to consider the marks visually and aurally. The High Court, however, was further influenced by the “context of the relevant surrounding circumstances” in which the PROTOX mark was used.

In finding that there was no real risk of confusion, the High Court referred to the fact that PROTOX was almost always used in proximity to another mark on product packaging. Further, a disclaimer on the Self Care packaging and website indicated that PROTOX had no association with the anti-wrinkle injection brand BOTOX.

In so doing, the High Court considered the surrounding circumstances in a more extensive manner than previous courts in determining the question of deceptive similarity. Nonetheless, the High Court did not appear to intentionally depart from established principles regarding deceptive similarity.

Comment

Reputation is clearly no longer relevant in assessing deceptive similarity or substantial identity under s 120(1). Still, at the time of writing, Australian trade mark practitioners have been busily discussing other possible implications of this decision. While the High Court has clarified the position on reputation, it may have inadvertently complicated the approach as to the context in which the likelihood of confusion as to source is assessed.

It is unclear whether this decision may influence a court’s assessment of deceptive similarity. This is so because the decision appears to create certain parallels with the law of passing off and prohibitions against misleading or deceptive conduct in Australian consumer law (which permit the court to consider surrounding circumstances in which products are marketed and sold).

The impact of the court’s position in considering surrounding circumstances has yet to play out in subsequent decisions. One thing is already certain: one should approach previous decisions in relation to reputation, as well as the nature of the relevant surrounding circumstances for the purpose of deceptive similarity, with caution. This Kat friend will keep her feline eyes on further developments in this regard.