Pharma giant Allergan receives black eye in High Court of Australia

Pharma giant Allergan, the maker of BOTOX, received a black-eye from the Full Court of the High Court of Australia today in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (15 March 2023).

The case involved an appeal from a Full Federal Court decision which, in turn, had overturned the primary judge’s findings in a case involving the use by a company called Self Care of the words “instant Botox® alternative” and the mark PROTOX in the marketing of some anti-wrinkle skincare products.

The High Court agreed with the primary judge that although Self Care had used the words “instant Botox® alternative” it was not use as a trade mark, so Self Care did not infringe the BOTOX trade mark and the question of deceptive similarity under s 120(1) of the Trade Marks Act 1995 (Cth) did not arise.

The High Court also found that Self Care’s use of the mark PROTOX (which was undisputed by the parties) did not infringe the BOTOX trade mark as there was no “real, tangible danger” of confusion or deception occurring” such that the notional buyer will be caused to wonder whether it might be that the products come from the same source (applying a case called Southern Cross (1953) 91 CLR 592).

The court clarified that reputation is not relevant to assessing deceptive similarity in infringement proceedings under s 120(1). The notional buyer’s imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity under s 120(1), the notional buyer being “a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, … any reputation associated with the registered mark”.

It also found that Self Care’s use of the words “instant Botox® alternative” in relation to its anti-wrinkle skincare products did not contravene the Australian Consumer Law in Sch 2 of the Competition and Consumer Act 2010 (Cth), stating that “[t]he ordinary and reasonable consumer is a hypothetical construct to whom the court attributes characteristics and knowledge in order to characterise the impugned conduct”(at para 90) and agreeing with the primary judge that the reasonable consumer would appreciate “that there are many variables to take into account in choosing one product over another”, including “the trouble, pain and expense of purchase and administration or application, how long the effects of the product last, and how significant the effects are” (at para 101).

Decision available HERE.

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