The High Court recently decided that although BOTOX is a brand which is well known and recognised by most Australians, its trade marks and other legal rights were not infringed through the use of a rival product ‘PROTOX’ nor through Protox’s use of the phrase “instant Botox® alternative”.
The court delivered important messages in its judgement which all businesses (including trade mark owners) should consider as part of their promotional and marketing strategy.
Background
Self Care sells a range of anti-wrinkle skin care products under the brand name ‘Freezeframe’, including ‘Protox’ (a topical cream styled as an injection-free solution to “prolong the look of Botox®”) and ‘Inhibox’ (marketed with packaging claims including an “instant Botox® alternative”).
The dispute had been through 2 previous hearings and was on appeal from the Full Court of the Federal Court of Australia, which decided that Self Care had both infringed Allergan’s ‘BOTOX’ trade mark and misled consumers about the long-term effectiveness (packaging claims) of Inhibox.
The Decision
The High Court unanimously found in favour of Self Care, holding that its use of ‘Protox’ and of the phrase “instant Botox® alternative” was not an infringement of Allergan’s ‘Botox’ mark.
The specific findings were:
- Self Care’s use of Protox (for anti-wrinkle cream) did not infringe Allergan’s Botox mark because the marks were not ‘substantially identical’ and did not raise a real risk of confusion (so that they were also not ‘deceptively similar’).
- Self Care did not use “instant Botox® alternative” as a trade mark, but rather as a descriptive phrase.
Deceptive similarity
To determine whether Protox was substantially identical with or deceptively similar to Botox required an assessment of whether Protox “so nearly resembles Botox (for anti-wrinkle creams in class 3) that it is likely to deceive or cause confusion as to the source of those products”. The High Court accepted that when recalling trade marks, consumers may have an ‘imperfect recollection’, noting that there were visual and aural similarities between the marks which a notional buyer may have a recollection of, but ultimately no real or substantial risk of actual confusion.
reputation
The court made its intention clear that it wanted to set down established principles in respect of the test for deceptive similarity. Although both parties agreed that reputation was not relevant in determining that question, the court appointed an independent 3rd party known as an Amicus Curiae (friend of the Court) to argue to the contrary. The Amicus Curiae were 2 senior barristers who provided submissions and appeared in a hearing before the High Court.
On that point, the Court held that the reputation which Allergan held in its Botox trade mark should not be taken into account in considering whether Protox was deceptively similar. The Court expressed concern that the “level of protection afforded…would vary and be inherently uncertain” if reputation was considered (in infringement claims).
It was apparent that the court had become concerned about a number of decisions in the Federal Court, which found that trade mark owners may become a “victim of their own success” as consumers who were familiar with them would not have an imperfect recollection of them. On that basis, they were less likely to be infringed.
"Instant Botox® alternative" was not used as a trade mark and not misleading/deceptive
The phrase “instant Botox® alternative” was found not to constitute use as a trade mark, but rather “a descriptive phrase that had an ordinary meaning… descriptive of the product to which it was attached as an alternative product”.
The context of the phrase/mark’s use was critical to the outcome. The fact that:
- the phrase appeared in inconsistent sizes, fonts, and arrangement across its presentation on packaging and the website, indicating the phrase was not being used a ‘badge of origin’; and
- the phrase was featured in smaller font and less prominently alongside clear badges of origin such as Inhibox, which were presented as distinctive and stylised signs bearing the hallmarks of a brand,
were relevant factors in reaching that conclusion.
The context in which representations are made will need to be assessed in each case and it would be dangerous for advertisers or brand owners to rely on this decision without giving those matters further thought, including when other marks are used in comparative advertising.
misleading claims?
Botox asserted that Protox had claimed the effects of its products were both instant and as long-lasting as those of a Botox® injection. The Court ultimately found that the ordinary and reasonable consumer would likely believe those claims were “too good to be true”.
key takeaways
The decision highlights the need for trade mark owners to understand the benefit of registering their marks and developing a suitable protection strategy. It also provides some guidance in relation to the use of other parties’ trade marks in advertising.
However, the decision also highlights the complexities involved in assessing how those principles should be applied in each circumstance and the benefit of obtaining advice at an early stage when considering brand/product development and promotion.
- As part of their overall protection strategy, trade mark owners may need to keep watch over and assess how popular their brands have become, as reputation is not relevant when assessing whether two marks are deceptively similar in an infringement action.
- Australian trade mark owners are now in a different position to those in the US, UK and EU, where the strength or acquired distinctiveness of the trade mark is taken into account. This could prove difficult when creating an offshore protection strategy if trade mark owners have registered and/or wish to bring infringement proceedings in more than one country.
- The High Court’s decision brings some guidance in relation to statements made in advertising goods/services in comparison to competitors’ products. Businesses should be reassessing statements made in comparative advertising as well as when 3rd party marks are referred to in advertising statements.
