19 April 2023
Monitoring third party usages of your trade mark portfolio, knowing when your trade mark is being infringed and when to take action is a critical aspect of brand protection.
Trade mark infringement is the unauthorised use of a registered trade mark. Conduct will amount to trade mark infringement when a sign is used as a trade mark and is substantially identical or deceptively similar to a registered trade mark.
There are several grounds of trade mark infringement under section 120 of the Trade Marks Act. One of those grounds is section 120(1), which provides that “[a] person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered”.
The High Court of Australia recently provided some important guidance on the test for assessing deceptive similarity under section 120(1) in the case of Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd  HCA 8. Five Justices of the High Court heard the appeal from the Full Court of the Federal Court and delivered joint reasons, rendering the decision particularly significant.
In this article, we take a look at the High Court’s view on how ‘use as a trade mark’ and ‘deceptive similarity’ should be applied in the context of section 120(1).
Allergan manufactures a well-known injectable pharmaceutical product marketed under the name BOTOX, which is used to reduce the appearance of facial wrinkles. Allergan owns a defensive trade mark registration for the word BOTOX in class 3 claiming anti-aging and anti-wrinkle creams.
Self Care sells non-invasive cosmetic products under the name FREEZEFRAME, which includes PROTOX and INHIBOX (which is marketed as an “instant Botox® alternative”).
Allergan took the matter to the Federal Court of Australia, alleging that the phrase “instant Botox® alternative” and the use of the trade mark PROTOX infringed Allergan’s BOTOX trade mark under section 120(1) of the Trade Marks Act. The primary judge ruled in favour of Self Care. Allergan appealed to the Full Court of the Federal Court of Australia, which overturned the primary judge’s decision. Self Care then appealed the decision to the High Court, which unanimously allowed the appeal, finding that Self Care did not use “instant Botox® alternative” as a trade mark and that “PROTOX” was not deceptively similar to “BOTOX”.
The High Court held that the phrase “instant Botox® alternative” was being used in a descriptive way and that its use amounted to “ad-speak”. In reaching its decision that the phrase was not used as a trade mark by Self Care, the High Court reiterated the following principles for assessing whether a sign has been used as a trade mark:
In terms of how to assess whether two trade marks are deceptively similar, the High Court provided the following guidance:
In summary, in assessing deceptive similarity, it is impermissible to attribute to the notional buyer any familiarity with the actual use of the mark
The decision of the High Court draws a clear line in the sand - reputation is not relevant for the purposes of assessing deceptive similarity under section 120(1). The decision also assists in making a clear distinction between an action for trade mark infringement and the actions under the ACL for misleading or deceptive conduct or for passing off (in which reputation is relevant).
Additionally, the decision serves as a useful reminder that context is all-important in assessing whether a sign is being used “as a trade mark”, and provides some important guidance in relation to analysing use of a sign in advertisements and on packaging.
If you have any questions about this article or whether your trade mark may be infringed, please get in touch with a member of our Intellectual Property team below.
The information in this article is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this article is accurate at the date it is received or that it will continue to be accurate in the future.