When a rhyme is a crime PROTOX found to infringe BOTOX mark

What you need to know

• The Full Court of the Federal Court of Australia overturned the first instance decision in this matter and found that the word PROTOX is deceptively similar to the trade mark BOTOX and therefore infringed the trade mark registration for the BOTOX mark.  
• The Full Court also found that the statement "instant Botox alternative" both infringed the BOTOX mark and was misleading or deceptive under the Australian Consumer Law.
• The Full Court clarified that the focus of the test for deceptive similarity is on confusion as to trade source not confusion about the marks and products themselves.

What you need to do

• Take care when referring to a competitor's product to promote your own competing product.  In this case, Self Care referring to its product as being a Botox "alternative" was not enough to fall within the comparative advertising defence to trade mark infringement.

The first instance decision

Allergan manufactures and supplies anti-wrinkle injectables containing botulinum toxin, known as BOTOX, and owns a number of BOTOX trade marks in Australia.  Self Care sells a range of topical anti-wrinkle skincare products, which are promoted as an alternative to BOTOX, under the brand FREEZEFRAME.  

Allergan contended that Self Care sought to sell its FREEZEFRAME products by leveraging off BOTOX's reputation.  Allergan also argued that by using the sub-brand PROTOX and referring on packaging and in marketing materials to the BOTOX mark, Self Care infringed its trade mark registrations for the mark BOTOX.  Allergan made claims of trade mark infringement, contravention of the Australian Consumer Law, passing off and contravention of the Therapeutic Goods Act 1989 (Cth).

At first instance the Court held that using PROTOX, or BOTOX in composite phrases (such as "instant Botox alternative"), did not constitute trade mark infringement.  In relation to the ACL claims, the Court found only one of the 35 statements claimed by Allergan to be misleading or deceptive contravening the ACL.  Allergan's passing off claims and its claims relating to contravention of the Therapeutic Goods Act were dismissed.

The appeal

Allergan's appeal related to two key issues.  Allergan argued that the Court should have found that:

• the word PROTOX is deceptively similar to the mark BOTOX (and therefore infringed the BOTOX mark); and 
• use of the phrase "instant Botox alternative" by Self Care infringes the BOTOX mark and is misleading or deceptive in contravention of the ACL. 

BOTOX and PROTOX - Deceptive similarity

The Full Court found that the first instance judge erred when assessing whether the PROTOX and BOTOX marks were deceptively similar and concluded that the marks are deceptively similar and therefore use of the word PROTOX infringed the BOTOX trade mark.  

The Full Court found that the primary judge did not consider a key element of the test for assessing deceptively similarity, being whether consumers would wonder whether the products offered by reference to the BOTOX and PROTOX marks came from the same source.  Rather, the primary judge only considered whether consumers would confuse the marks themselves or the products for which those marks are used.  

Concluding that the marks are deceptively similar, the Full Court stated that "the similarities in the words imply an association" and that "some consumers are likely … to have wondered whether PROTOX was an alternative product being offered by those behind BOTOX, perhaps targeted to those who did not like injections or who wanted the convenience of a home treatment."  

"Instant Botox alternative" – trade mark infringement

The Full Court also disagreed with the primary judge on whether the phrase "instant Botox alternative" amounted to use of the BOTOX mark as a trade mark.  The Full Court found that it amounted to use of the BOTOX mark as a trade mark and therefore infringed the BOTOX mark.  

In particular, the Full Court disagreed with the primary judge's assessment of the impact of the word "alternative".  In its view, the word "alternative" "merely describes something as another possibility or choice" and suggests that the products mentioned are different but does not necessarily suggest that the trade source also differs.  While the Full Court noted that use of the descriptive words "instant" and "alternative" make the phrase less similar to the BOTOX mark, it concluded that there is a still a real risk that use of the phrase would make consumers wonder whether the different products emanated from the same trade source.  

"Defences" argued by Self Care – section 122(1) Trade Marks Act

Self Care argued that the following defences applied:

• the mark was used for comparative advertising (s 122(1)(d));
• the mark/ a sign was used in good faith to indicate the intended purpose or some other characteristic of the goods (s 122(1)(b) and (c)); and
• it was exercising a right to use a trade mark given to it under the Act (s 122(1)(e)).

The Full Court dismissed all of these defences.  

In relation to section 122(1)(d) the Full Court stated that "it is difficult to imagine a conclusion could be reached that a person used a trade mark for the purposes of comparative advertising if consumers would be misled into thinking the compared products came from the same source."  Accordingly, the Full Court found that the phrase "instant Botox alternative" was not used for comparative advertising but rather to leverage off the reputation of the BOTOX brand.

The good faith defences (s 122(1)(b) and (c)) failed because the Full Court found that "instant Botox alternative" was use as a trade mark and was therefore not use in good faith to indicate the intended purpose or some other characteristic of the goods.  Finally in relation to s 122(1)(e), Self Care argued that because it owned a registration for the mark FREEZEFRAME PROTOX that gave it a defence to infringement.  The Full Court dismissed this argument because the use in question was of the word PROTOX without the word FREEZEFRAME.

"Instant Botox alternative – misleading or deceptive conduct

The Full Court also concluded that the "instant Botox alternative" statement was misleading because there were no reasonable grounds for the representation made by the statement that the effect of using the PROTOX product would last for a period equivalent to that which would be achieved with a BOTOX injection.  The primary judge found that the statement was not misleading based on a study which said that the Self Care product produces a significant reduction in the appearance of wrinkles over a 28-day period of application.  The Full Court thought that the representation made was that use of the PROTOX product would last for an equivalent period to a BOTOX injection and therefore the study did not support that representation because it did not consider the effect of the product (beyond 28 days) once treatment stops.  Accordingly, the representation was found to contravene sections 19 and 29(a) and (g) of the ACL.  

Next steps

The matter has been remitted to the primary judge to assess damages or an account of profits for the trade mark infringement and damages for the contraventions of the ACL. 

Authors: Lisa Ritson, Partner; and Annika Barrett, Senior Expertise Lawyer.