In a unanimous decision, the High Court found that Self Care’s use of the phrase ‘instant Botox® alternative’ and the word ‘PROTOX’ did not infringe Allergan’s defensive ‘BOTOX’ trade mark. The High Court also found that Self Care’s use of the phrase ‘instant Botox® alternative’ did not amount to misleading or deceptive conduct.

Key findings

The dispute related to whether the Appellants’ (Self Care’s) product packaging and advertising infringed the Respondent’s (Allergan’s) rights in the defensive trade mark ‘BOTOX’. In allowing the appeal, the High Court overturned findings of the Full Court of the Federal Court in three important respects.

First, the court found that use of the phrase ‘instant Botox® alternative’ by Self Care did not entail use of that phrase ‘as a trade mark’. Therefore, there could be no infringement under section 120 of the Trade Mark Act 1995 (Cth) (TM Act).

Second, the court held that Self Care’s use of ‘PROTOX’ as a trade mark was not ‘deceptively similar’ to, and therefore did not infringe, Allergan’s defensive BOTOX trade mark. A key finding is that the reputation of a registered trade mark or trade mark owner is irrelevant when considering whether a competitor’s use of a sign is ‘deceptively similar’ to a registered mark under section 120(1) of the TM Act.

Finally, the court was not persuaded that Self Care’s use of ‘instant Botox® alternative’ amounted to misleading or deceptive conduct within the meaning of the Australian Consumer Law (ACL). The court decided the phrase did not convey the representation contended for by Allergan, and therefore Self Care did not mislead or deceive consumers as to the efficacy of its product.

The parties, the trade mark, and the products in issue

Allergan Inc manufactures the well-known injectable pharmaceutical product Botox. It is the registered owner of various BOTOX trade marks in Australia, including a defensive trade mark registration for BOTOX (the defensive BOTOX mark) for goods in various classes, such as anti-ageing creams in class 3.

Self Care markets a range of self-applied serums, lotions and creams under their flagship brand ‘FREEZEFRAME’. These products include ‘Inhibox’ and ‘Protox’, both of which are topical skincare products said to reduce the appearance of wrinkles.

The ‘Inhibox’ product packaging included the phrase ‘instant Botox® alternative’, as well as other phrases such as ‘FREEZEFRAME’, ‘WITH INHIBOX’, and ‘The world’s first Instant and Long Term Botox® Alternative’.

The ‘Protox’ product packaging made use of the word PROTOX, and other phrases such as ‘prolong the look of Botox®’, ‘FREEZFRAME’, and ‘Botox is a registered trademark of Allergan Inc’. On Self Care’s website, it was noted that the Protox product ‘has no association with any anti-wrinkle injection brand’.

Allergan commenced proceedings against Self Care, arguing that Self Care unlawfully leveraged off the reputation of Botox. In the High Court, the issues were confined to whether ‘Instant Botox® alternative’ and ‘PROTOX’ infringed Allergan’s defensive BOTOX mark, and whether Self Care made misrepresentations in contravention of the ACL. On each of these issues, the High Court found in favour of Self Care.

‘Instant Botox® alternative’ was not use of BOTOX as a trade mark

The High Court found that Self Care’s use of ‘Instant Botox® alternative’ was not use ‘as a trade mark’ (at [52]-[61]).

A decisive factor was the inconsistent font size and style of the words ‘instant Botox® alternative’ across the product packaging and website marketing material for Inhibox, which indicated that the phrase was not being used as a ‘badge of origin’ to distinguish Self Care’s goods from those of other traders.

Another important factor was that the phrase appeared alongside other prominent and distinctive marks which were clearly being used by Self Care as badges of origin, and which therefore diminished the likelihood of ‘instant Botox® alternative’ also indicating the origin of the goods. Rather, the court found that ‘instant Botox® alternative’ was merely a descriptive phrase, amounting to what the primary judge described as ‘ad speak’.

In light of this finding, there could be no trade mark infringement. It was therefore unnecessary for the High Court to consider the balance of the infringement test, or the good faith or comparative advertising defences raised by Self Care.

The nature of the ‘deceptive similarity’ test

It was not disputed that Self Care used ‘PROTOX’ as a trade mark. The only issue was whether PROTOX is deceptively similar to BOTOX within the meaning of sections 120(1) and 10 of the TM Act.

Before applying the relevant test, the court set out guiding principles for the analysis required under those sections (at [26]-[33]), and analysed the role of ‘reputation’ under the TM Act (at [34]-[48]). For reasons compelled by the structure, objectives and purpose of the Act, and for practical reasons, the court held (at [49]) that notions of ‘reputation’ are irrelevant to the test for infringement. It is therefore impermissible to attribute any brand familiarity to the notional buyer when undertaking an analysis of deceptive similarity.

‘Protox’ not deceptively similar to BOTOX

Having set out the principles, the court applied the test for infringement by comparing the notional buyer’s imperfect recollection of the BOTOX mark in respect of the registered goods (in this case, antiwrinkle creams in class 3), with PROTOX as actually used by Self Care on the Protox packaging and on Self Care’s website (at [67]-[71]).

The court found that although there were some aural and visual similarities between BOTOX and PROTOX, the words were sufficiently different so as not to confuse the notional buyer.

The court then turned to consider whether those similarities ‘implied an association’ that would cause the notional buyer to wonder whether it might not be the case that the PROTOX had the same trade source as BOTOX. Consistently with its construction of the TM Act, the court did not consider the reputation of Allergan or the BOTOX brand. However, it did consider other circumstances surrounding Self Care’s actual use of PROTOX: namely, a disclaimer printed on the back of the Protox packaging (stating that ‘Botox is a registered trademark of Allergan Inc’) and a disclaimer on Self Care’s website (that ‘PROTOX has no association with any anti-wrinkle injection brand’). The court also noted that PROTOX was almost always used in proximity to the FREEZEFRAME mark, and that there was no evidence of actual confusion before the court.

In circumstances where consumers were said to be accustomed to traders referencing each other’s products without there being any suggestion of affiliation, the court found there was no real, tangible risk of consumers confusing PROTOX for BOTOX.

It is worth noting that this aspect of the decision of the High Court, concerning material external to the respondent’s mark, has been the subject of subsequent consideration by the Federal Court of Australia in The Agency Group Australia Limited v H.A.S Real Estate Pty Ltd [2023] FCA 482. In that case, Jackman J considered the decision in Self Care, noting that the High Court cited with approval a number of authorities which held that material external to the respondent’s mark is irrelevant to the issue of deceptive similarity (at [56]-[57]). Justice Jackman remarked that, having cited those authorities ‘in support of well-established legal principle’, the High Court nonetheless went on to refer to context including the disclaimers and other advertising on the Protox packaging and the website, when concluding that there was no real risk of confusion or deception (at [59]). Justice Jackman considered that these passages were ‘impossible to reconcile’ with the cited authorities, and stated the ‘internal contradiction places a trial judge in an awkward dilemma’, which his Honour resolved by disregarding the passages in which the High Court relied on additional material used by the respondent in relation to the issue of infringement (at [60]).

‘Instant Botox® alternative’ conveyed no misleading representation

The High Court also concluded that Self Care did not contravene the ACL (at [94]-[113]). The issue for consideration was whether Self Care’s use of the phrase ‘instant Botox® alternative’ represented that the effects of Inhibox cream lasted for a period equivalent to that achieved by Botox injection.

The court concluded that a reasonable consumer would understand there to be clear differences between the Inhibox product and Botox products. Critically, the reasonable consumer would understand that Allergan’s product involved the injection of Botox by a healthcare professional, whereas Self Care’s Inhibox product was a self-administered cream.

In that context, the reasonable consumer would also understand the difference between the ‘long term’ effects of Botox, and the ‘instant’ nature of Inhibox, as adverted to on its packaging. The court considered consumers would think it ‘too good to be true’ that Inhibox could have both instant effects and long-lasting effects, even if Inhibox were applied over time. Accordingly, the description of Inhibox as an ‘instant Botox® alternative’ did not represent that the post-treatment efficacy of Inhibox was equivalent to Botox. BN