Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd

• Jurisdiction: Australia Federal only
• Judge: Kiefel CJ,Gageler,Gordon,Edelman,Gleeson JJ
• Judgment Date: 15 March 2023
• Neutral Citation: [2023] HCA 8
• Court: High Court
• Docket Number: S79/2022 & S80/2022

[2023] HCA 8

HIGH COURT OF AUSTRALIA

Kiefel CJ, Gageler, Gordon, Edelman And Gleeson JJ

S79/2022 & S80/2022

Self Care IP Holdings Pty Ltd & Anor

Appellants

and

Allergan Australia Pty Ltd & Anor

Respondents

Representation

A J L Bannon SC with A R Lang SC for the appellants in each matter (instructed by Gilbert + Tobin)

J T Gleeson SC with H P T Bevan SC and K I H Lindeman for the respondents in each matter (instructed by Griffith Hack Lawyers)

J M Beaumont SC with G R Rubagotti, appearing as amicus curiae (at the hearing on 14 December 2022)

Trade Marks Act 1995 (Cth), ss 10, 120, 185.

Competition and Consumer Act 2010 (Cth), Sch 2, ss 4, 18, 29.

Intellectual property — Trade marks — Trade Marks Act 1995 (Cth) (“Act”) — Trade mark infringement under s 120(1) of Act — Where BOTOX registered as defensive trade mark — Whether “instant Botox® alternative” used as trade mark — Whether “instant Botox® alternative” and PROTOX deceptively similar to defensive trade mark — Whether reputation relevant to deceptive similarity.

Consumer law — Misleading or deceptive conduct — False or misleading representations — Where alleged representation that wrinkle reducing effects of Inhibox would last, after treatment, for period equivalent to that achieved with treatment by Botox injection — Whether alleged representation conveyed.

Words and phrases — “badge of origin”, “deceptive similarity”, “defensive trade mark”, “imperfect recollection”, “notional buyer”, “reasonable consumer”, “reputation”, “use as a trade mark”.

ORDER

In Matter No S79 of 2022:

• 1. The appeal be allowed with costs.

• 2. Orders 2 to 6 of the orders made by the Full Court of the Federal Court of Australia on 7 September 2021 and the declarations and orders made by the Full Court of the Federal Court of Australia on 13 October 2021 in proceeding NSD 35 of 2021 be set aside and, in their place, order that the appeal be dismissed with costs.

In Matter No S80 of 2022:

• 1. The appeal be allowed with costs.

• 2. The orders made by the Full Court of the Federal Court of Australia on 7 September 2021 in proceeding NSD 249 of 2021 be set aside and, in their place, order that the appeal be dismissed with costs.

On appeal from the Federal Court of Australia

1 Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ. Botox is an injectable pharmaceutical product containing botulinum toxin, type A. Allergan Inc, the second respondent, manufactures Botox and is registered under the Trade Marks Act 1995 (Cth) (“the TM Act”) as the owner of various trade marks, including the BOTOX mark in class 5 for goods including “[p]harmaceutical preparations for the treatment of … wrinkles” and in class 3 for goods including “anti-ageing creams” and “anti-wrinkle cream”. The class 3 mark is referred to in this judgment as the “BOTOX mark”. Allergan 1 does not use the BOTOX mark on any class 3 goods – that mark is a “defensive trade mark” under s 185 of the TM Act.

2 The appellants (collectively, “Self Care”) supply cosmetic products in class 3, including anti-wrinkle skincare products, under the trade mark FREEZEFRAME. Self Care's products are topical creams, serums and lotions that are typically self-applied. The issues in this Court were confined to just two of Self Care's products – Inhibox and Protox.

3 Under the TM Act, in relation to alleged infringement of the BOTOX mark contrary to s 120(1), there were relevantly two issues. First, did Self Care use the phrase “instant Botox® alternative” on Packaging A, Packaging B and its website 2 in relation to Inhibox as a mark and, if so, was it deceptively similar to the BOTOX mark? Second, when Self Care used PROTOX as a mark 3 (about which there was no dispute) was it deceptively similar to the BOTOX mark? Addressing both those issues required this Court to squarely confront the question of the relevance, if any, of reputation in assessing deceptive similarity in infringement proceedings under s 120(1) of the TM Act. As these reasons will show, reputation is not relevant to that inquiry. And, contrary to the findings of the Full Court of the Federal Court of Australia, Self Care did not infringe Allergan's BOTOX mark under s 120(1) of the TM Act by its use of either “instant Botox® alternative” or PROTOX.

4 The third issue in this Court concerned whether Self Care contravened ss 18(1) and 29(1)(a) and (g) of the Australian Consumer Law4 (“the ACL”). The Full Court found that Self Care's use of the phrase “instant Botox® alternative” on Packaging A, Packaging B and the website in relation to Inhibox conveyed a representation that the wrinkle reducing effects of Inhibox would last, after treatment, for a period equivalent to that which would be achieved with treatment by Botox injection (“the long term efficacy representation”). Self Care appealed that finding in this Court. There was no dispute that, if conveyed, the long term efficacy representation was misleading contrary to ss 18 and 29 of the ACL. The only issue was whether Self Care made the long term efficacy representation. As these reasons will explain, contrary to the findings of the Full Court, the long term efficacy representation was not made. Self Care's appeals should be allowed.

5 These reasons will address relevant aspects of the TM Act, focusing particularly on the scheme for registration of a trade mark (including the grounds for opposition and refusal of registration) and the provisions relating to defensive trade marks. The reasons will then address the principles applicable to assessing whether a sign is used as a trade mark and, if so, whether the mark is deceptively similar to a registered trade mark contrary to s 120(1) of the TM Act. In that context, the reasons will consider Self Care's use of the signs “instant Botox® alternative” and PROTOX. The reasons will then turn to the third issue on appeal – the correct approach when determining the meaning conveyed by conduct alleged to contravene the ACL and whether Self Care made the long term efficacy representation.

Relevant aspects of the TM Act

6 The TM Act provides for the registration of trade marks and sets out and protects the rights deriving from registration. The structure and policy of the Act may be relevantly summarised as follows: (1) the Register of Trade Marks will protect distinctive trade marks 5; (2) a trade mark is registered in respect of particular goods or services in one or more of the classes of goods or services recognised in the internationally agreed Nice Classification and adopted by the TM

Act and the Trade Marks Regulations 1995 (Cth) (“the TM Regs”) 6; (3) the registered trade mark is treated as property itself 7 and the registered owner of a trade mark has rights including the exclusive right to use the trade mark in relation to the goods or services in respect of which it is registered (“the monopoly”) 8; (4) the monopoly following registration is a sufficient basis upon which to seek relief from infringement 9; and (5) the likelihood of deception and confusion between trade marks should be avoided 10

7 A “trade mark” is defined in s 17 as “a sign used, or intended to be used, to distinguish” one trader's goods or services from those of another (emphasis added). A “sign” includes a word and a combination of words 11. The concept of “use” of and as a trade mark is central to the operation of the TM Act. A registered owner of a trade mark, from the date of registration 12, has exclusive rights to use and authorise the use of the trade mark 13. A trade mark can be removed from the Register for non-use14. And, as will be seen, use of a sign as a trade mark is an essential element of the infringement of registered marks 15.

8 In light of the issues raised in these appeals, in particular the question of whether the reputation of a trade mark is relevant in infringement proceedings

under s 120(1), it is necessary at the outset to address two aspects of the TM Act in some detail – registration of a trade mark, and defensive trade marks

Registration of a trade mark

9 A person may apply for registration of a trade mark in respect of specific goods in one or more of the classes of goods specified in Sch 1 to the TM Regs if the person claims to be the owner of the trade mark, and the person is using or intends to use the trade mark in relation to those goods 16. The particular goods in respect of which it is sought to register the trade mark must be specified in the application 17. Particulars of the application, including the class numbers of the goods in respect of which registration is sought, are published by the Registrar of Trade Marks 18.

10 The Registrar must examine, and report on, whether the application is made in accordance with the Act and whether there are grounds for rejecting it 19. There is a presumption of registrability: the Registrar must, after examination, accept the application unless satisfied that the application is not made in accordance with the Act or that there are grounds for rejecting it 20, and then must, unless the registration is successfully opposed, register the trade mark within a set period 21.

11 Division 2 of Pt 4 of the TM Act (ss 39-44) sets out the grounds upon which an application to register a trade mark must be rejected by the Registrar. An application must be rejected if, among other things, (1) the trade mark is not capable of distinguishing the applicant's goods in respect of which the trade mark

is sought to be registered from the goods of other persons 22; (2) the use of the trade mark in relation to the particular goods would be likely to deceive or cause confusion, because of some connotation that the trade mark or a sign contained in the trade mark has 23; or (3) the applicant's trade mark in respect of the applicant's goods is substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of...