The High Court has clearly set out in Self Care v Allergan that the reputation of a trade mark is not relevant when assessing deceptive similarity in infringement proceedings.1 In a unanimous decision, overruling a three-judge bench of the Full Federal Court, the High Court held that Self Care did not infringe Allergan’s ‘BOTOX’ mark by its use of either “instant Botox® alternative” or “PROTOX”, nor did it mislead consumers about the long term efficacy of its product.
Key takeaways
- The reputation of a registered trade mark or its owner is not relevant to the assessment of deceptive similarity in an infringement action under section 120(1) of the Trade Marks Act 1995 (Cth) (Act).
- There are four prescribed and limited circumstances in which the consideration of reputation is expressly addressed by the Act. In all other circumstances, the monopoly of a registered trade mark is limited to the particulars recorded on the public register.
- The two elements in determining infringement under section 120(1) are often conflated. Whether the sign was (1) used as a trade mark, and (2) deceptively similar to the registered mark, must be assessed independently. The factors relevant to the likelihood of deception have no role in determining whether the sign was used as a trade mark in the first place.
- The High Court’s decision brings some relief for advertisers used to advertising their wares by comparison to their competitors, in finding that the phrase “instant BOTOX® alternative” was descriptive and not used as a trade mark.
For further information, please contact:
Shaun McVicar, Partner, Herbert Smith Freehills
shaun.mcvicar@hsf.com
