High Court finds no wrinkles in PROTOX and INHIBOX brands

The High Court recently issued its decision in the case of Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023] HCA 8. The court surprised many by overturning the Full Federal Court’s decision and ruling that reputation should not be considered when determining deceptive similarity in trademark infringement cases. This ruling is expected to significantly impact future trademark infringement proceedings by narrowing the factors considered in assessing deceptive similarity and clarifying the actions for trademark infringement and passing off.

Background: The case involves a dispute between Allergan and Self Care over their respective products: Allergan’s injectable anti-wrinkle product sold under the trademark BOTOX, and Self Care’s anti-wrinkle creams sold under the marks PROTOX and INHIBOX.

At first, Justice Stewart dismissed Allergan’s claims that Self Care’s use of the phrase “instant Botox® alternative” and the mark PROTOX infringed the BOTOX trademark. However, on appeal, the Full Federal Court found Self Care liable for trademark infringement and misleading conduct. Self Care then appealed to the High Court.

The High Court addressed three main questions in this appeal:

1. Did Self Care use the phrase “instant Botox® alternative” as a trademark, and if so, was it deceptively similar to the BOTOX mark?
2. When Self Care used PROTOX as a mark, was it deceptively similar to the BOTOX mark?
3. Did Self Care’s use of the phrase “instant Botox® alternative” imply that INHIBOX had the same long-term efficacy as BOTOX injections?

Trade Mark Infringement:

1. The High Court found that the phrase “instant Botox® alternative” was not used as a trademark by Self Care. Instead, it served a descriptive purpose and did not act as a badge of origin, as two other distinctive brand names (FREEZEFRAME and INHIBOX) were more prominently displayed on the packaging.
2. The High Court considered the deceptive similarity between PROTOX and BOTOX. It also examined whether reputation should be considered in trademark infringement cases. The court rejected the notion of considering reputation, stating that trademark registration only grants protection for specific goods and services. It found that the BOTOX and PROTOX marks were sufficiently different, and there would be no confusion among consumers.
3. The High Court determined that Self Care’s use of the phrase “instant Botox® alternative” did not represent that INHIBOX had the same long-term efficacy as BOTOX injections. Consumers would understand that there are differences between the products and would not expect the same results from a topical cream as from an injectable treatment.

In conclusion, the High Court’s decision narrows the considerations in assessing deceptive similarity in trademark infringement cases and clarifies the scope of protection granted by trademark registration. It also rejected the idea that reputation should play a role in determining deceptive similarity.

About Pearce IP

​Pearce IP is a boutique firm offering intellectual property specialist lawyers, patent attorneys and trade mark attorneys to the pharmaceutical, biopharmaceutical and life sciences industries. Pearce IP is the 2021 ‘Intellectual Property Team of the Year’ (Lawyers Weekly Australian Law Awards) and was shortlisted for the same award in 2022. Pearce IP is ranked in IAM Patent 1000 and Managing IP (MIP) IP Stars, in Australasian Lawyer 5 Star Awards as a ‘5 Star’ firm, and the Legal 500 APAC Guide for Intellectual Property. Pearce IP leaders are well recognised as leading IP practitioners.

Our leaders have been recognised in virtually every notable IP listing for their legal, patent and trade mark excellence including: IAM Patent 1000, IAM Strategy 300, MIP IP Stars, Doyles Guide, WIPR Leaders, 5 Star IP Lawyers, Women in Law Awards – Partner of the Year, Best Lawyers and Australasian Lawyer 5 Star Awards, Women in Business Law Awards – Patent Lawyer of the Year (Asia Pacific), Most Influential Lawyers (Changemaker), among other awards.