Cosmetics is a $22 billion dollar per year industry in Australia.1 Cosmetic companies regularly register trade marks to protect their brands. For one cosmetic company, Selfcare IP Holdings Pty Ltd (Self Care), its trade marks took centre stage in an infringement action brought by a competing cosmetic company, Allergan, Inc (Allergan). In its claim, Allergan, who was (and continues to be) the registered owner of the BOTOX trade mark, alleged that Self Care had engaged in misleading and deceptive conduct and had infringed trade marks registered by Allergan by using the phrases “instant Botox® alternative” and “PROTOX” (the latter being one of Self Care’s anti-wrinkle skincare products).
The dispute between Self Care and Allergan reached the High Court and, on 15 March 2023, the Court handed down its decision.2 In a unanimous judgment, the Court, comprising Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ, overturned the decision of the Full Court of the Federal Court of Australia3 and found that:
- the use of “instant Botox® alternative” was not deceptively similar to the “BOTOX” trade mark;4
- the use of “PROTOX” was not deceptively similar to the “BOTOX” trade mark;5 and
- Self Care did not engage in misleading or deceptive conduct, or make false or misleading representations by use of the phrase “instant Botox® alternative”,6 and therefore did not contravene the relevant provisions of the Australian Consumer Law (ACL).7
In handing down its decision, the High Court took the opportunity to clarify a number of trade mark law principles. Notably, the Court determined that reputation is not a relevant consideration under section 120(1) of the Trade Marks Act (TM Act) in determining whether a trade mark has been used, and subsequently whether that use of a trade mark was deceptively similar to another mark.
Is reputation a relevant consideration?
In determining whether the phrases used by Self Care were “deceptively similar”, the High Court considered the question of the relevance, if any, of reputation in assessing deceptive similarity.8
In its reasons, the Court recognised that the relevance of reputation in an action for infringement has been a “contentious” issue.9 The Court reflected on the provisions of the TM Act in which a consideration of reputation was expressly required,10 the registration framework, the concept of the “use” of a trade mark and the ultimate purpose of section 120(1) in protecting trade mark rights in respect of particular goods, as distinct from protecting the “commercial value” of a trade mark itself.11
Despite precedent supporting the position that the “reputation principle” is a relevant consideration, the Court held that, in determining whether an infringement has occurred under section 120(1), reputation is not relevant.12
Their Honours’ reasoning included the following:
- registration of the trade mark alone confers the right to its exclusive use on the registered owner or, in the case of a defensive trade mark, the right to exclude use. If reputation was considered after registration other than where expressly provided for in the TM Act, the level of protection afforded to that right would vary and be uncertain;13
- inspection of the Register should enable a person to assess the likelihood of infringement, without needing to make inquiries about the business history or previous conduct of the registered owner of the trade mark;14
- identifying which aspects of reputation and what forms of evidence would be permissible would be a complex exercise, and would distract from the current test for infringement which is straightforward and well-established;15 and
- introducing reputation as a relevant consideration would be contrary to an objective of the registered trade mark system, which is to provide “a bright line that delineates the property rights” of a registered owner, for the benefit of the owner and the public.16
Did Self Care use the phrase “instant Botox® alternative” as a trademark?
The High Court then proceeded to consider section 120(1) of the TM Act, which provides that the use of a trade mark that is “substantially identical with, or deceptively similar to” an existing trade mark is an infringement of that existing trade mark.17
In its claim, Allergan alleged that Self Care had used the phrase “instant Botox® alternative” as a trade mark.18 As a preliminary point, the Court noted that a trade mark is a “badge of origin” indicating a connection in the course of trade between goods and the person who applies the mark to the goods.19 The Court also noted that, in determining whether there is a misrepresentation or likelihood of deception, the correct approach is “to ask whether the sign used indicates origin of goods in the user of the sign”.20
In short, the High Court was satisfied that the phrase “instant Botox® alternative” was not used by Self Care as a trade mark,21 for reasons which included the following:
- the presentation of “instant Botox® alternative” was inconsistent in size, font and presentation, which indicated that “instant Botox® alternative” was not being used to distinguish Self Care’s goods from those dealt with by another trader;22 and
- the phrase “instant Botox® alternative” appeared alongside two clear badges of origin, namely the umbrella brand FREEZEFRAME and the name of the relevant product, INHIBOX, which diminishes the likelihood that the phrase “instant Botox® alternative” could be objectively understood to indicate origin in itself.23
It was therefore held that, contrary to the findings of the Full Court, Self Care did not infringe Allergan’s BOTOX mark by its use of the phrase “instant Botox® alternative”.24
Claims under the ACL
The High Court also considered whether Self Care contravened certain provisions of the ACL,25 namely whether Self Care had engaged in misleading or deceptive conduct or made a false or misleading representation.
In determining whether Self Care had contravened these provisions, the Court considered whether Self Care’s use of the phrase “instant Botox® alternative” conveyed a representation that the wrinkle reducing effects of “Inhibox” (another of Self Care’s skincare products) would last, after treatment, for a period equivalent to that which would be achieved by Botox injection (otherwise known as “the long term efficacy representation”).26 If it was found that the long term efficacy representation had been made, it would follow that the representation was misleading contrary to sections 18 and 29 of the ACL.
However, the Court held that the long term efficacy representation was not made. Their Honours reasoned that, in the circumstances, a reasonable consumer would not think that “a topically self-applied cream obtained from the pharmacy at a relatively low cost and worn in the course of the usual activities of life (including bathing and exercise) would have the same period of efficacy after treatment as an injectable anti-wrinkle treatment that is only available to be administered by healthcare professionals at a higher cost“.27
For those reasons, it was held that Self Care had not engaged in misleading or deceptive conduct, and had not made a false or misleading representation, pursuant to sections 18 and 29 of the ACL.
How this decision may impact your business
The decision of Self Care v Allergan clarifies a number of legal principles, particularly the interpretation and application of these principles in the context of trade mark law and consumer protection disputes.
Notwithstanding that the decision provides a useful guide in legal matters, the decision also provides businesses with insight as to how they could protect their own trade marks, and minimise risk of infringing other marks. The Court has recognised that, even though there may be some similarities between two different brands, consumers will not be confused by advertising in circumstances where the two brands can be distinguished by other elements (for example, by pricing or by the way and to whom the product is marketed). If you have questions about the Self Care v Allergan decision, or would like to know more about how to protect your intellectual property rights and business interests generally, please let us know and our team can assist.
This article was written by Simone Basso, Solicitor, and Alexandra Beal, Solicitor, and reviewed by Peter Campbell, Partner.
1Anthony Saunders, ‘Australian Beauty Industry Statistics 2023’, Accumulate Australia, (WebPage, 14 February 2023) <https://accumulate.com.au/australian-beauty-industry-statistics-2023/>.
2Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd  HCA 8 (Self Care v Allergan).
3Allergan, Inc v Selfcare IP Holdings Pty Ltd  ATMO 102; (2017) 131 IPR 180.
4Self Care v Allergan .
7Competition and Consumer Act 2010 (Cth), sch 2, ss 18 and 29.
8Self Care v Allergan .
17Trade Marks Act 1995 (Cth), s 120(1).
18We note that whether Self Care had used the phrase “PROTOX” was not in contention – Self Care did not appeal the Full Courts’ finding that PROTOX was used as a trade mark.
19Self Care v Allergan .
20Ibid , citing Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107 at 115-116 .
21Self Care v Allergan .
26Ibid , .