What you need to know
- The Federal Court of Australia has found that the use of the word PROTOX and the word BOTOX when used in composite phrases to promote skincare products does not infringe the prior BOTOX trade mark.
- As is often the case with well-known trade marks, the ubiquitous reputation of the BOTOX marks resulted in the Court finding that consumers would not be deceived or confused by use of a similar mark.
What you need to do
- When bringing an action for trade mark infringement, closely consider both the reputation of the marks and the context in which the potential infringement arises.
Background
In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530, the Federal Court concluded that the use of the word mark PROTOX and the word BOTOX (in composite phrases) for skincare products did not infringe Allergan's prior BOTOX trade marks. Consequently, the majority of Allergan's associated misleading and deceptive conduct, passing off claims and Therapeutic Goods claims also failed.
The importance of BOTOX
Allergan supplies an anti-wrinkle injectable containing botulinum toxin. This product, known as Botox, is reconstituted with sterile saline to be administered by a registered medical practitioner. Allergan holds the rights to a number of BOTOX trade marks in Australia.
Self Care sells a range of more than 30 topical anti-wrinkle skincare cosmetic products, which can be used as an alternative to botulinum toxin injections, under the brand FREEZEFRAME.
Allergan contended that Self Care had sought to sell its FREEZEFRAME products by leveraging off BOTOX's reputation. Self Care counter-claimed seeking the removal or cancellation of two of Allergan's registrations for the marks BOTOX, one of them a defensive registration.
Allergen also appealed a decision of the Australian Registrar of Trade Marks to allow one of Self Care's marks (FREEZEFRAME PROTOX) to proceed to registration.
No infringement of the registered BOTOX trade mark
The Court held that using PROTOX or BOTOX in composite phrases did not constitute trade mark infringement within the meaning of section 120 of the Trade Marks Act 1995.
First, although PROTOX was clearly used as a trade mark and the marks are similar in look and sound, the Court found persons of ordinary intelligence and memory were not likely to confuse them. The Court stated that because of the strong reputation in the BOTOX mark there is unlikely to be imperfect recollection of the mark and even if there is, a consumer seeing or hearing PROTOX is not likely to mistake it for BOTOX but to be reminded of BOTOX. In addition, the goods were not of the same description because, among other reasons, Botox is a therapeutic product supplied by healthcare professionals and Protox is a harmless cosmetic which is widely available.
Second, in relation to use of the BOTOX trade mark in phrases, the Court found that Self Care generally did not use BOTOX as "a badge of origin". The majority of the phrases, such as “clinically proven to prolong the effect of Botox®", were narrative or descriptive phrases amounting to "ad-speak". By describing Self Care’s products as alternatives or enhancers, attaching the ® symbol, the Court was satisfied there is no connection in the course of trade between BOTOX and Self Care.
Removal or cancellation of trade marks
The Court agreed with Self Care that the class 3 registration for the BOTOX mark should be removed for non-use. This was because the mark had only been used in relation to the Botox product and not in relation to any of the class 3 goods (skin creams and lotions).
The challenge to the defensive registration was dismissed by the Court. In the Court's analysis, Self Care had not discharged its onus of proving there was no likely connection between the use of the BOTOX mark in relation to the class 3 goods and Allergan, as the registered owner of the BOTOX mark. BOTOX was seen to be in “the same universe of discourse” as the class 3 goods, despite being different types of treatment.
Other claims
The Court also dismissed the majority of Allergan's claims that Self Care made certain representations their products were either affiliated with BOTOX or were as efficacious as BOTOX. The Court found that only the claim that the Self Care Night (tube) product “delivers the results of a Botox injection in 4 weeks” was misleading under Australian Consumer Law because there were no studies supporting this comparative representation.
Finally, the Court dismissed Allergan's appeal in relation to the FREEZEFRAME PROTOX mark.
*A version of this article first appeared on WTR Daily, part of World Trademark Review, on 25 November 2020. For further information, please go to www.worldtrademarkreview.com.
Authors: Nikkie Xu, Lawyer; Annika Barrett, Senior Expertise Lawyer; and Lisa Ritson, Partner.
