Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 22 October 2020
• Neutral Citation: [2020] FCA 1530
• Court: Federal Court
• Date: 22 October 2020

FEDERAL COURT OF AUSTRALIA

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530

Appeal from:	Allergan Inc v Self Care IP Holdings Pty Ltd [2017] ATMO 102
File numbers:	NSD 15 of 2017NSD 1802 of 2017
Judgment of:	STEWART J
Date of judgment:	22 October 2020
Catchwords:	TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) – whether respondents infringed applicants’ BOTOX marks by using PROTOX as a trade mark – whether use of applicants’ trade mark in composite phrases such as “Instant BOTOX® Alternative” is use as a trade mark – whether PROTOX or composite phrases substantially identical with, or deceptively similar to applicants’ marks – whether goods in respect of which trade mark registered or goods of the same description ; TRADE MARKS – whether director of respondents directed, procured or entered into a common design with respondents in any acts of infringement – whether director had “close personal involvement” in any infringing conduct – whether director’s conduct was such as to “go beyond” causing the company to act – whether the director was “standing apart” from the company ; TRADE MARKS – cross-claim for removal from the Register of Trade Marks for non-use pursuant to s 92(4)(b) of the Act – whether the BOTOX marks have been used in relation to specified goods in class 3 – whether Botox product is a cosmetic product ; TRADE MARKS – cross-claim for rectification of the Register of Trade Marks to cancel registration of BOTOX trade mark pursuant to s 88(1) of the Act – defensive trade marks – whether use of the mark would indicate a connection between those goods and the registered owner of the BOTOX marks – where strong reputation of marks – potential for confusion ; TRADE MARKS – registration – opposition – appeal under s 56 of the Act against decision of the Registrar of Trade Marks allowing registration of the mark FREEZEFRAME PROTOX – whether a ground of opposition to registration of the marks is established pursuant to ss 42(b), 44, 58, 59, 60 or 62A of the Act – whether respondent’s mark is deceptively similar to the appellant’s marks in respect of similar goods – whether respondent’s mark likely to deceive or cause confusion because of reputation of appellant’s marks – whether respondent intended to use or authorise use of mark at priority date – whether respondent owner of the opposed mark – whether registration application made in bad faith ; CONSUMER LAW – misleading or deceptive conduct – use of allegedly similar trade marks in relation to the sale of cosmetic products –whether respondents intended to mislead or deceive consumers – whether respondents’ mark or marks adopted for the purpose of appropriating the reputation of the applicant – where no relationship between applicants and respondents and use of marks by respondents not authorised by applicants – whether respondents represented by the use of applicants’ trade marks that their goods were provided by or associated with the applicants or provided with the endorsement, approval, licence, authority or sponsorship of the applicants ; CONSUMER LAW – misleading or deceptive conduct – efficacy representations – representations as to a future matter – whether representations that product will give similar results, achieve the same performance characteristics or work complementarily with applicants’ product made – whether reasonable grounds for such representations as made – analysis of scientific studies ; CONSUMER LAW – whether director should be held personally liable for any contravention – whether the director aided, abetted, counselled or procured any contravention ; TORTS – passing off – whether goodwill or reputation attached to Botox product by association with the identifying “get-up” – whether there was a misrepresentation by the respondents leading or likely to lead the public to believe that goods offered by them are the goods of the applicants ; PRACTICE AND PROCEDURE – injunctive relief against contravention of statute – whether contraventions of Therapeutic Goods Act 1989 (Cth) – whether claims in relation to respondents’ products are claims of therapeutic use – whether applicants have standing to enforce criminal prohibitions by injunction
Legislation:	Acts Interpretation Act 1901 (Cth) ss 2G, 36(1) Competition and Consumer Act 2010 (Cth) s 75B and Sch 2 (Australian Consumer Law) ss 2, 4, 18, 29(1)(a), 29(1)(g), 29(1)(h), 236 Evidence Act 1995 (Cth) s 91 Therapeutic Goods Act 1989 (Cth) ss 3, 42DLB, 42DL Trade Marks Act 1995 (Cth) ss 6, 8, 10, 17, 20, 27, 42, 44, 58, 59, 60, 62A, 88, 92, 100, 101, 120, 187, 219 Federal Court Rules 2011 (Cth) r 22.01 Trade Mark Regulations 1995 (Cth) reg 17A.48D Trade Marks Act 1955 (Cth) ss 66, 93(1) Trade Marks Act 1938 (UK) s 27(1)
Cases cited:	AFT Pharmaceuticals (Au) Pty Ltd v Reckitt Benckiser (Australia) Pty Ltd [2020] FCAFC 45; 143 ACSR 522 Allergan Inc v Di Giacomo [2011] FCA 1540; 199 FCR 126 Allergan Inc v Self Care IP Holdings Pty Ltd [2017] ATMO 102 AMI Australia Holdings Pty Ltd v Bade Medical Institute (Australia) Pty Ltd (No 2) [2009] FCA 1437; 262 ALR 458 Anheuser Busch v Budejovický Budvar Národní Podnik [2002] FCA 390; 56 IPR 182 Aston v Harlee Manufacturing Co [1960] HCA 47; 103 CLR 391 Australian Competition and Consumer Commission v ACM Group Ltd (No 2) [2018] FCA 1115 Australian Competition and Consumer Commission v Birubi Art Pty Ltd [2018] FCA 1595 Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634; 317 ALR 73 Australian Competition and Consumer Commission v Giraffe World Australia Pty Ltd (No 2) [1999] FCA 1161; 95 FCR 302 Australian Competition and Consumer Commission v Jetstar Airways Pty Ltd [2015] FCA 1263 Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd [2001] FCA 1062 Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; 381 ALR 507 Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2013] HCA 54; 250 CLR 640 Australian Competition and Consumer Commission v Woolworths Ltd [2019] FCA 1039 Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 624 Australian Woollen Mills Limited v F S Walton and Company Ltd [1937] HCA 51; 58 CLR 641 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2017] FCA 507; 349 ALR 679 Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760; 79 IPR 454 Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60; 218 CLR 592 CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42 Cadbury Schweppes Pty Ltd v Darrell Lea...