NUMB: BOTOX reputation insufficient to stop PROTOX

Earlier this month, the High Court of Australia ultimately rejected trade mark infringement and misleading/deceptive conduct claims by Allergan (owner of the injectable BOTOX®) against Self Care’s anti-wrinkle skincare products PROTOX and INHIBOX (marketed under the slogan ‘instant Botox® alternative’). The case has been running for 6 years.

Allergan relied on the overwhelming reputation of its brand BOTOX. It argued that PROTOX was a deceptively similar trade mark and that use of the slogan (‘instant Botox® alternative’) constituted infringing use of BOTOX.

The High Court overturned the previous decision of the Full Federal Court favourable to Allergan by ruling that:

1. reputation of a brand was not a relevant consideration in assessing deceptive similarity of trade marks – this test must be applied uniformly to both newly registered and well-known marks;
2. the trade marks PROTOX and BOTOX were sufficiently different; and
3. Self Care did not use the slogan in an infringing manner (as a trade mark) but rather only descriptively.

Allergan also argued that the slogan misrepresented to consumers that the effects of skincare INHIBOX were not only comparable to those of BOTOX but would also last for a similar period. The High Court disagreed, concluding that the reasonable consumer would likely believe it too good to be true that the effects of a topical cream would be both instant and as long lasting as those of a pharmaceutical injection.

For brand owners, trade mark reputation has long been a double-edged sword, which either reinforced or mitigated differences between the trade marks under comparison in infringement proceedings. The High Court’s decision reinforces the value of registered trade mark rights and their power, irrespective of reputation – even a small brand will now be able to prevent a famous infringer on the basis of its trade mark registration alone rather than having to probe ephemeral issues, such as reputation in the marketplace.

Otherwise, reputation remains a relevant consideration in passing off suits, actions for misleading/deceptive conduct under the Australian Consumer Law and trade mark oppositions. These actions are all still available to be deployed by brand owners in protecting their trade marks.