Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 13 October 2021
• Neutral Citation: [2021] FCAFC 180
• Date: 13 October 2021
• Court: Full Federal Court (Australia)

Federal Court of Australia

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCAFC 180

File number(s):	NSD 35 of 2021 NSD 249 of 2021
Judgment of:	JAGOT, LEE AND THAWLEY JJ
Date of judgment:	13 October 2021
Catchwords:	PRACTICE AND PROCEDURE – parties ordered to confer with a view to agreeing orders giving effect to the Full Court’s reasons for judgment or provide competing orders and submissions – parties were not able to agree and provided competing orders and submissions – application to make further submissions in relation to appropriate orders made consequent upon respondents’ change of solicitors – application to make further submissions refused – final orders made
Legislation:	Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) ss 18, 29(1)(a), 29(1)(g), 232 Federal Court of Australia Act 1976 (Cth) Pt VB, s 37M Trade Marks Act 1995 (Cth) ss 120(1), 120(2), 126(1)(a)
Cases cited:	Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 Burrell v The Queen[2008] HCA 34; (2008) 238 CLR 218 Calidad Pty Ltd v Seiko Epson Corporation (No 2)[2019] FCAFC 168; 147 IPR 386 Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 327 ALR 630
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	29
Date of last submission/s:	7 October 2021
Date of hearing:	Determined on the papers
Counsel for the Appellants:	S J Goddard SC with S L Ross
Solicitor for the Appellants:	Griffith Hack Lawyers
Counsel for the Respondents:	A R Lang SC
Solicitor for the Respondents:	MinterEllison (before 27 September 2021)
Solicitor for the Respondents:	Gilbert + Tobin (from 27 September 2021)

Table of Corrections
15 October 2021	In Order 4 ‘It be ordered that Order 2 of these orders…’ has been replaced with ‘It be ordered that Orders 1 and 2 of these orders …’ .
15 October 2021	In Paragraph 29 ‘It be ordered that Order 2 of these orders…’ has been replaced with ‘It be ordered that Orders 1 and 2 of these orders …’.

ORDERS

		NSD 35 of 2021
BETWEEN:	ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831) First Appellant ; ALLERGAN INC Second Appellant
AND:	SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151) First Respondent ; SELF CARE CORPORATION PTY LTD (ACN 132 213 113) Second Respondent

order made by:	JAGOT, LEE AND THAWLEY JJ
DATE OF ORDER:	13 OCTOBER 2021

THE COURT DECLARES THAT:

1. by the use of the mark PROTOX on or in relation to the respondents’ Protox Product (as identified in paragraph 20 of the Second Further Amended Statement of Claim (2FASOC)), each of the first respondent and the second respondent has infringed Australian Registered Trade Mark Number 1578426 for “BOTOX” (the BOTOX Mark) under s 120(1) of the Trade Marks Act 1995 (Cth) (the TM Act);

2. by the use of the mark “instant Botox® alternative” on or in relation to the respondents’ Inhibox Product (as identified in paragraph 29C of the 2FASOC), each of the first respondent and the second respondent has infringed the BOTOX Mark under s 120(1) of the TM Act;

3. the sale or promotion by each of the first and second respondent of the Inhibox Product by reference to the statement “instant Botox® alternative” involved conduct, in trade or commerce, misrepresenting that:

   1. the respondents’ Inhibox Product (and its use) is of at least the same standard or quality as the Botox Product in respect of the length of time the results would last after treatment has ceased; and

   2. the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses and/or benefits as the Botox Product, in respect of the length of time the results would last after treatment has ceased,

and, accordingly, each of the first and second respondents has thereby contravened each of ss 18, 29(1)(a) and 29(1)(g) of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).

THE COURT ORDERS:

1. pursuant to s 126(1)(a) of the TM Act that each of the first and second respondents, whether by itself, its directors, officers, employees, servants, agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the applicants, the word Protox, the phrase “instant Botox® alternative”, or the BOTOX Mark, or any substantially identical or deceptively similar mark in relation to the goods or services in respect of which the BOTOX Mark is registered.

2. pursuant to s 232 of the ACL that each of the first and second respondents whether by itself, its directors, officers, employees, servants or agents or otherwise, be restrained from selling or promoting the respondents’ Inhibox product by reference to the statement “instant Botox® alternative” or otherwise representing:

   1. in contravention of each of s 18 and s 29(1)(a) of the ACL, that the respondents’ Inhibox Product (and its use) is of the same standard or quality as the Botox Product in respect of the length of time the results last after treatment has ceased; or

   2. in contravention of each of s 18 and s 29(1)(g) of the ACL, that the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses or benefits as the Botox Product, in respect of the length of time the results last after treatment has ceased.

3. The respondents file and serve any application for a stay of these orders together with any affidavit in support within 7 days of the making of these orders.

4. It be ordered that Orders 1 and 2 of these orders do not take effect:

   1. initially, for a period of 7 days from the date on which these orders are made; and

   2. if a stay application is filed within that period, until the determination of that application or until further order.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1. Reasons for judgment in these two appeals were delivered on 7 September 2021: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 (Allergan No 1). Those reasons included for the parties’ consideration a form of declarations and injunctions to give effect to the reasons for judgment: at [136]. The Court took the view that the parties should be given an opportunity to consider the terms of the declarations and injunctions and, accordingly, made an order requiring the parties to confer with a view to agreeing the appropriate form of declarations and injunctions within 7 days of the date of the order.

2. The parties did not reach agreement and have provided competing versions of what each considers to be appropriate.

3. The declarations and injunctions proposed in Allergan No 1 at [136] were as follows:

1. It be declared that:

(a) by the use of the mark PROTOX on or in relation to the respondents’ Protox Product (as identified in paragraph 20 of the Second Further Amended Statement...