It is not often that the High Court of Australia considers the law relating trade marks. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 a critical issue for consideration was whether reputation is relevant to the consideration of deceptive similarity as it pertains to infringement under s120(1) of the Trade Marks Act (1995) (the “Act”). In a unanimous decision, the Court found that reputation in a trade mark or its owner is irrelevant to the deceptive similarity enquiry for alleged infringement under s120(1).

Allergan Australian Pty Ltd (“Allergan”) is the owner of the BOTOX mark in Class 5 for goods including “pharmaceutical preparations for the treatment of … wrinkles” and in class 3 for goods including “anti ageing creams” and “anti wrinkle cream. The class 3 registration is a defensive trade mark. The appellants, Self Care IP Holdings Pty Ltd (“Self Care”), supply cosmetic products in class 3, including anti-wrinkle skincare products, under the trade mark FREEZEFRAME. Allergan alleged that Self Care infringed the BOTOX mark in relation to two products: Inhibox and Protox. Self Care used the phrase “instant Botox® alternative” on various forms of packaging and on its website in relation to the Inhibox product. The PROTOX mark was used by Self Care in relation to Class 3 goods. Allergan was unsuccessful at first instance, with this decision being overturned by the Full Court on appeal. Self Care was granted special leave to appeal by the High Court.

Section 120(1) sets out that a registered trade mark is infringed if a person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to goods or services in respect of which the trade mark is registered. Allergan alleged that Self Care used a deceptively similar mark on the goods of their registration.

Regarding deceptive similarity, the Court considered two issues: (i) is use of “instant Botox® alternative” use as a trade mark and if so, was the mark deceptively similar to BOTOX; and (ii) is PROTOX deceptively similar to BOTOX? Central to both considerations for the High Court is whether there is any role or relevance of reputation in assessing deceptive similarity in infringement proceedings under s 120(1) of the Act.

The primary judge and the Full Court referenced the reputation of BOTOX when considering deceptive similarity under s120(1). Before the High Court, both parties agreed that reputation had no role to play in this assessment and as such, the Court appointed an amicae curiae to contradict the parties’ contentions since the issue of reputation is a significant issue of trade mark law that has been contentious for many years. The High Court examined the arguments advanced by the amicae but concluded that “[t]he so-called reputation principle in the context of an infringement proceeding under s 120(1), in all its forms, is rejected.” (paragraph 50). The Court referred to the Act and limited instances where reputation was explicitly mentioned, noting that s120(1) is not such an instance. Moreover, as a property right, the Court held that it is the registered mark alone against which the alleged infringing conduct is assessed, and “[i]f 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” (paragraph 40) and is contrary to the intent of the Act to incentivise and contribute to a transparent registration system.

The Court also cited practical reasons why reputation must not be relevant under s120(1) including the possible difficulties to ascertain reputation in the absence of evidence and if evidence is adduced, what forms of evidence are permissible. In combination, evidence “would distract from, if not defeat, the well understood and straightforward test which has been the hallmark of infringement actions” (paragraph 48).

With expungement of reputation as a factor in s120(1), the High Court reinforced the commonly understood approach that “there are two separate and essential elements to establish infringement under s 120(1): (1) that the person has “use[d] as a trade mark” a sign in relation to goods or services; and (2) that the trade mark was “substantially identical” or (as alleged in this case) “deceptively similar” to a trade mark registered in relation to those goods or services.” (paragraph 22).

To the question of use of a trade mark, the Court set out that whether a sign is used as a trade mark is “assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade , the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote” (paragraph 24). It appears that the contextual consideration was relied heavily upon by the Court to overturn the Full Court’s finding and conclude that the phrase “instant Botox® alternative” is not used as a trade mark by Self Care. Or put another way, the phrase “instant Botox® alternative” is not use of the phrase as a badge of origin indicating a connection in the course of trade between goods and the person who applies the mark to the goods.

In reaching this finding, the Court analysed in detail the use of the phrase on packaging and the website. The use of the phrase in respect of size, font and presentation was not consistent across these forums. Moreover, there were instances of this phrase being used alongside the trade marks FREEZEFRAME and INHIBOX, but its use in this context was in a junior or less dominant fashion, for example appearing in a much smaller font than FREEZEFRAME or INHIBOX, and sometimes only appearing once on product packaging, and the marks FREEZEFRAME or INHIBOX appearing in distinctive and stylised get ups so as to be perceived as brands. According to the Court, “[t]his diminishes the likelihood that the phrase “instant Botox® alternative” could be objectively understood to indicate origin in itself” (paragraph 56). Rather, the Court held that the phrase was a descriptive phrase with an ordinary meaning and had only a descriptive purpose and nature relating to Self Care’s alternative product, noting that Self Care clearly delineated the comparator product BOTOX identified with a ® symbol. The Court affirmed the primary judge’s finding that the phrase is “ad-speak” and not a trade mark per se.

To the question of whether PROTOX is deceptively similar to BOTOX, the Court applied the well-worn test for deceptive similarity absent a consideration of reputation. The error made by the Full Court in finding infringement is that although the marks are distinctive and would not cause confusion, some potential customers “would wonder whether those behind BOTOX had decided to expand into topical cosmetic anti-wrinkle products” ie. importation of a reputation consideration.

The Court commenced by analysing the marks visually and aurally and in the context of the relevant surrounding circumstances and considered that the marks are sufficiently distinctive that there is no real danger that a consumer with an imperfect recollection would confuse the marks or products. This finding was reinforced by the absence of evidence of actual confusion, and the fact that PROTOX was used in close proximity to the mark FREEZEFRAME.

In summary, the High Court has laid to rest the spectre of reputation when considering infringement under s120(1). It is also noteworthy that factors such as evidence of actual confusion and the myriad of contextual uses informed the Court’s decision making process.