How to assess trade mark infringement claims and deceptive similarity

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 [2023] 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).

Background

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”.

How can you assess ‘use as a trade mark’?

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:

• context is important: The High Court’s decision emphasises the importance of context when assessing whether a sign has been used as trade mark. It stated that the assessment should examine, in particular, the way in which the words are displayed when used. The High Court considered the following factors relevant in relation to context:
  • the phrase appeared in inconsistent sizes, fonts and presentations across the packaging and Self Care’s website. This indicated that the phrase “Instant Botox ® alternative” was not being used as a “badge of origin” to distinguish Self Care’s good
  • the phrase appeared alongside two clear badges of origin, being FREEZEFRAME and INHIBOX. These were both distinctive and stylised signs which further reduced the likelihood that the phrase "instant Botox® alternative" could be objectively understood to indicate origin in itself.
• the assessment is objective: This means that whether a sign has been “used as a trade mark” is to be assessed objectively without reference to the subjective intentions of the user
• whether there is a misrepresentation or likelihood of deception is not the right question: The High Court said that the Full Court of the Federal Court had made the “not uncommon” mistake of asking whether the phrase “Instant Botox ® alternative” indicated a connection between Self Care’s goods and the owner of the BOTOX mark, Allergan. The High Court reiterated that factors relevant to whether there is a misrepresentation or likelihood of confusion have no role to play in deciding what constitutes “use as a trade mark”. 

When are two trade marks considered ‘deceptively similar’?

In terms of how to assess whether two trade marks are deceptively similar, the High Court provided the following guidance:

• reputation is not relevant: It was made clear that the reputation of a registered mark or its owner is not relevant to an assessment of deceptive similarity under section 120(1) of the Trade Marks Act. The High Court clarified that reputation is considered only in certain “prescribed and limited” circumstances, under the Trade Marks Act, being:
  • in opposition under section 60
  • in the registration of a defensive mark under section 185
  • in assessing infringement under section 120(3)
  • under section 24, where the reputation of a trade mark is such that it becomes the generic description of the good or service.

In summary, in assessing deceptive similarity, it is impermissible to attribute to the notional buyer any familiarity with the actual use of the mark

• not a side-by-side comparison: The comparison between the two marks is not a side-by-side comparison. Instead, the High Court applied the “imperfect recollection” test, which considers whether an ordinary consumer with an imperfect recollection of the registered mark would likely be deceived or confused by the allegedly infringing mark. In doing so, it is necessary to observe the marks as a whole, taking into account their look and sound. Applying the imperfect recollection test, the High Court found that the words BOTOX and PROTOX were sufficiently different, and that a notional buyer would not be confused by the marks or the products they denote. Specifically, their Honours considered that on assessing look and sound alone, while similar, consumers would be unlikely to confuse the two
• evidence of actual confusion is of great weight but not essential: The High Court also considered it relevant that there was no evidence of confusion. The High Court stated that evidence of actual confusion was of “great weight but not necessary”. 

Key takeaways

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.

Disclaimer
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.

Published by:

Sarah Butler

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