Australia: Last word on BOTOX by the High Court

The recent judgment of the High Court of Australia on 15 March 2023 in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8 has resoundingly and unequivocally answered some long contested and held so-called "principles" of trade mark law. This dispute was principally concerned with use of two disputed marks "PROTOX" and "instant Botox® alternative" by Self Care, and the question of deceptive similarity and infringement under s120(1) of the Trade Marks Act 1995 (Cth) of Allergan's "BOTOX" registered trade mark.

Firstly, in referring to several lower Federal Court decisions,^{1 2} the High Court noted the relevance of the reputation of a registered trade mark in an action for trade mark infringement under s120(1) has been contentious for some years. In examining the issue, the High Court appointed Ms Beaumont SC and Ms Rubagotti as amicae curiae to contradict both Allergan and Self Care who jointly submitted that reputation of registered mark should not be taken into account in assessing deceptive similarity between it and an allegedly infringing mark. In doing so, the High Court unanimously decided that reputation should not be taken into consideration when considering deceptive similarity under s120(1) when the structure and purpose of, and the fundamental principles underpinning, the Trade Marks Act are properly construed.³

Amicae contended that "taking into account reputation in assessing deceptive similarity under s 120(1) was the practical reality of considering the "idea" of a mark and how potential customers will remember it, particularly in assessing a mark such as BOTOX which has no meaning except for what it has come to mean to potential customers by virtue of Allergan's use of the mark generally". That is, although the way in which reputation may be relevant would depend on the facts of each case, the amicae submitted "that there was no reason in principle to limit the treatment of reputation, particularly a strong or notorious reputation of a mark, in a way that only lessens the risk of "imperfect recollection" of the mark and consequentially lessens the risk of confusion".⁴ In support of their contentions, amicae principally relied on three authorities from which a "principle" was said to be drawn - that reputation is relevant where it lessens the risk of "imperfect recollection" in the assessment of deceptive similarity under s120(1).⁵

In reaching a different view, the High Court examined the Trade Marks Act and noted the particular significance of the rights constituting property (and associated monopoly) being limited to use of a mark on the particular goods in a particular class - being the goods for which registration was sought. The High Court concluded by stating that "It is that registered mark, and that mark alone, which constitutes the property and against which allegedly infringing conduct is assessed. Registration of the trade mark alone confers the right of its exclusive use on the registered owner or, in the case of a defensive trade mark, the right to exclude use" and that "If reputation was considered after registration other than where expressly provided for in the Act, the level of protection afforded to that right would vary and be inherently uncertain".⁶

The High Court also noted that neither the reputation of the mark nor the trade mark owner's reputation is a particular listed on the Register of Trade Marks and that inspection of the publicly available Register enables a person to ascertain the monopoly of each mark and modify their behaviour so as to avoid an action under s120(1) for infringement. The High Court, in reaching its conclusion, also noted with approval a passage from Wilcox J's judgment in Nikken Wellness and quoted:

The High Court also examined the manner in which the Trade Marks Act dealt with reputation and concluded that consideration of reputation in those prescribed and limited circumstances "strikes a balance between various commercial and public interests" and that the "registration of a trade mark alone determines the rights of the owner".

In addition to rejection of amicae's contentions based on the structure and policy of the Trade Marks Act, the High Court also rejected their view for practical reasons. These included that reputation, or the extent of reputation, can be difficult to ascertain, and a court would be unable to evaluate the reputation of a mark in the absence of absence of evidence and unless judicial notice could be taken of reputation. In particular, "Identifying which aspects of reputation and what forms of evidence would be permissible to consider in an action for infringement would be a complex exercise. Not only that, but leading such evidence would distract from, if not defeat, the well understood and straightforward test which has been the hallmark of infringement actions".⁸

In summary, the High Court has held that "it is impermissible to attribute to the notional buyer any familiarity with the actual use of a registered trade mark, including any use in relation to goods which are not the subject of the trade mark asserted to be infringed under s 120(1)" and "The inquiry under s 120(1) is directed to avoiding deception and confusion between trade marks, and protecting the registered owner's trade mark rights in relation to the particular goods covered by the registration. It is not concerned with and does not seek to protect "the commercial value or 'selling power' of a mark".

Determining now that an infringement proceeding under s 120(1) of the Trade Marks Act is to be resolved without reference to the reputation of the owner of the registered mark departs from what has been said in the decisions that were principally relied on by the amicae.⁹ The significance of the departure from these earlier decisions by the High Court was discussed and explained having regard to the fact that Registrar of Trade Marks v Woolworths Ltd was not an infringement proceeding but concerned deceptive similarity in the context of registration of a mark, what was said in Henschke about reputation was obiter, and that in Australian Meat Group, the Full Court accepted that reputation was not relevant generally to deceptive similarity but might be used to counter a proposition that there was deceptive similarity arising from imperfect recollection.

On the facts of the case, PROTOX was found not to be deceptively similar to BOTOX because the similarities between the marks, considered in the circumstances, were not such that the notional buyer was likely to wonder whether the products came from the same trade source.

Secondly, in respect to the threshold question as to use as a trade mark, the High Court found the Full Court was wrong in applying the incorrect test,¹⁰ and that the phrase "instant Botox® alternative" was not used by Self Care as a trade mark and the question of deceptive similarity under section 120(1) therefore did not arise. In reaching this conclusion, the High Court outlined the relevant principles in determining whether a word or a sign is used as a "trade mark" which were not in dispute.¹¹

In examining the evidence, the High Court found the better view was that "the use of the phrase sic ["instant Botox® alternative"], consistent with its ordinary meaning, had only a descriptive purpose and nature", and the use of "instant Botox® alternative" simpliciter was not use as a trade mark. Simply, the phrase "instant Botox® alternative" was not being used as a badge of origin to distinguish Self Care's goods from those dealt with by another trader. The High Court attached particular weight in coming to this conclusion based on the use of the phrase "instant Botox® alternative" alongside two clear badges of origin, namely the umbrella brand FREEZEFRAME and the name of the relevant product, INHIBOX. The High Court held that this diminishes the likelihood that the phrase "instant Botox® alternative" could be objectively understood to indicate origin in itself.

In examining the Full Court reasoning,¹² the High Court pointed to the impermissible conflation between the two elements of s120(1) being (a) whether the sign was used as a trade mark, and (b) whether the trade mark was deceptively similar to the registered trade mark. The correct approach opined is to ask whether the sign used indicates origin of goods in the user of the sign, and factors relevant to whether there is a misrepresentation or likelihood of deception have no role to play in deciding the question of what constitutes 'use as a trade mark'.

It seems that the long held controversy over relevance of the reputation of a registered trade mark in an action for trade mark infringement under s120(1) has now been settled. This clarity should greatly assist resolution of such trade mark disputes in the future. Nonetheless, causes of action from contraventions of ss 18 and 29 of the Australian Consumer Law may be expected to be largely unaffected.

Footnotes

¹ Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 168 IPR 42.

² Register of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42; Australian Meat Group Pty Ltd v JBS Australia Pty Ltd (2018) 268 623.

³ Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8 at 36.

⁴ Ibid 3, at 35.

⁵ Ibid 3 36.

⁶ Ibid 3, at 37.

⁷ Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [44].

⁸ Ibid2 3, at 48.

⁹ Ibid 3.

¹⁰ Ibid 3, at 59.

¹¹ Ibid 3, at 23 to 25 "It asked whether there was an implied association in trade source between the different products".

¹² Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCFCA 180 and Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCFCA 163.

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