Is PROTOX 'deceptively similar' to BOTOX? Does using the BOTOX mark in a marketing statement constitute use 'as a trade mark'? No, on both counts, says the Federal Court in Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd  FCA 1530 (Allergan v Self Care).
Of particular note is the Court's reliance on the ubiquitous reputation of BOTOX when assessing deceptive similarity and the likelihood of consumer confusion. While the fame of BOTOX led to a finding of no trade mark infringement, it proved useful in saving Allergan's defensive trade marks.
Below, we discuss these interesting aspects of the decision, which was a case relating to the 'eternal human interest in reducing the appearance of ageing' and 'customers who have this Sisyphean interest'.
A trade mark's reputation is generally not relevant when assessing deceptive similarity. But as Allergan v Self Care shows, a mark's reputation and notoriety can be used by a defendant to successfully counter a finding of deceptive similarity. Finding against Allergan Australia (Allergan), the Court held that consumers would be unlikely to have an imperfect recollection of the renowned mark BOTOX, due to its ubiquitous reputation – a reputation so ubiquitous in fact, that the evidence included two short segments from the well-known television series and film Sex and the City. In each, the character Samantha Jones tries to persuade Carrie Bradshaw to submit to treatment with Botox to lessen the appearance of wrinkles on her face and thereby to maintain her apparent youth despite her chronological age.
Nevertheless, trade mark owners can rely on their mark's reputation to defend an attack against a defensive mark registration. Stewart J found that consumers would be more likely to draw the required connection between a skincare product and the BOTOX mark owner because the mark was well-known, despite the fact that it had never manufactured or sold a product of that type before.
This case also demonstrates that the mere use of a third party's mark to advertise a product is not necessarily trade mark infringement. The question is whether the mark was used as a badge of origin. Describing a product as an 'alternative' to a third party's product was found not to be 'use as a trade mark'.
Botox raises an eyebrow to Protox
Allergan, the supplier of Botox in Australia, is the registered owner of several BOTOX trade marks, including two BOTOX marks registered in class 5 for 'pharmaceutical preparations', and two other marks, including a defensive mark, in class 3 for 'cosmetics, ... skin creams and lotions'.
Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd (Self Care) sell cosmetic products, including Protox, under the umbrella brand FREEZEFRAME. Self Care's marketing and packaging depicted the word BOTOX in composite phrases, such as 'clinically proven to prolong the effect of Botox®'.
Allergan claimed this use constituted, amongst other things, trade mark infringement as the PROTOX mark was 'deceptively similar' to the BOTOX mark and Self Care used the BOTOX mark on Freezeframe products, packaging and advertising.
Allergan fails to establish infringement of the BOTOX trade mark – why?
Self Care's uses of the word PROTOX and the word BOTOX in composite phrases to advertise anti-wrinkle skincare products did not infringe the BOTOX mark. Consequently, Allergan's other claims (including an opposition to the PROTOX registration, misleading or deceptive conduct and passing off) largely failed.
- The PROTOX mark was used 'as a trade mark'.
The word PROTOX was clearly used 'as a trade mark'. The Court held that the use of PROTOX 'badges the goods [and] is indicative of trade origin by linking the goods to Self Care which applied the mark'.
- The PROTOX mark was not 'deceptively similar' to BOTOX
Allergan's trade mark infringement claim failed on this second limb. The PROTOX mark was not 'deceptively similar' to BOTOX. Justice Stewart placed emphasis on two key considerations: the nature and reputation of the BOTOX mark, and the manner of use of the PROTOX mark.
Ordinarily, a mark's reputation is not generally relevant to the question of deceptive similarity. However, the Full Court has previously reasoned that what is to be considered is the significance of a particular word or phrase among traders and consumers in a particular market. 1 It has also recently noted the proposition that deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection. 2 Following these authorities, Stewart J considered that the fame of the BOTOX mark was a relevant factor when considering the issue of deceptive similarity as it impacted on a consumer's imperfect recollection of a mark.
There was evidence showing that the word Botox had become a common noun in ordinary usage, like BAND-AID. The ordinary consumer was unlikely to have an imperfect recollection of such a well-known mark, leading to no finding of deceptive similarity. Further, BOTOX's reputation was 'in its nature specific' – it did not extend to cosmetics. As such, even if consumers' recollection was imperfect, they were unlikely to mistake or confuse PROTOX for BOTOX.
The finding of lack of deceptive similarity was reinforced by the manner of actual use of the PROTOX mark. The Protox product was described as an 'alternative to Botox', and Self Care's own brand Freezeframe was featured prominently. His Honour found that Self Care made a play on and differentiated Protox from Botox – the intention was not to say to the public "this is Botox", but to indicate the opposite – "this is not BOTOX".
- Protox was a cosmetic product, not a pharmaceutical like BOTOX – not used in relation to the registered goods or goods of the same description
As an 'anti-wrinkle balm serum', Protox was a good 'of the same description' as the class 5 goods covered by the Botox marks despite its classification as a class 3 product. This was important as Botox is a 'toxic poison ... administered in a highly regulated manner', while Protox is an 'easily purchased and applied harmless cosmetic'. The products are also different in price, result of pain, bodily invasion and length of action.
Why using the BOTOX mark in advertising was not trade mark infringement
The use of BOTOX in composite phrases did not constitute trade mark infringement for several reasons. Again, Self Care used the word BOTOX to distinguish it from its own products. Self Care acknowledged BOTOX as a badge of origin itself by including its registered mark sign ®, and on occasion expressly listed it as the alternative product.
One decisive factor was that each product was generally prominently branded with 'clearly identifiable badges of origin', PROTOX and FREEZEFRAME. Another was that the composite phrases were 'narrative or descriptive'. Serving less to identify the products, such phrases were clearly 'ad-speak'.
Allergan's defensive mark to remain
In a cross-claim, Self Care sought to cancel the class 3 description of goods of two of Allergan's trade mark registrations. It succeeded in relation to one of those registrations (being a standard trade mark registration). However, the Court did not cancel the class 3 description of goods covered by Allergan's defensive trade mark registration. This is because consumers were found to be likely to expect a cosmetic product bearing the BOTOX trade mark to emanate from or be authorised by Allergen.
1 See, for e.g. CA Henschke & Co v
Rosemount Estates Pty Ltd  FCA 1539, .
2 Meat Group Pty Ltd v JBS Australia Pty Ltd  FCAFC 207, .
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