A fine line between Protox & Botox: overturned Trade Mark Decision  

Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023], HCA 8

In overturning the decision of the Full Federal Court, the High Court of Australia has asserted that the reputation of a trade mark has no bearing when considering the possibility of deceptive infringement under s 120(1) of the Trade Marks Act 1995 (the Act).

The High Court seems to have based its decision on the point that the strength of the Act, and the Trade Mark Register it provides, must be reinforced. After all, the reputation of a trade mark is not listed on the register alongside such tangible qualities as the date of registration and the owner. [1] It would also not make sense for it to be so because a reputation can shift and change between registration and the point where it is involved in some legal proceeding. The Court quotes the 2003 decision Nikken Wellness Pty Ltd v van Voorst (2003), which said

“Parliament must have intended the Register to speak for itself. People who peruse the Register, or an extract from it, must be able to act on the basis of what it says, without being obliged to make inquiries about the business history or previous conduct of the registered owner of the trade mark.” [2]

The fact is that four other sections of the Act deal with reputation, and s 120(1) isn’t one of them. These are s 24, s 60, s 120(3) and s 185.

Section 24 deals with the uncommon case of genericide: when a trade mark becomes so well known, it becomes the generic term for the product, which can cause the registered owner to lose their rights. Some well-known genericide examples include aspirin, escalator, nylon, pilates, zipper and linoleum to name a few.

Under section 60, grounds for opposition to the registration of a trade mark can be found when another trade mark has a reputation in Australia. If the applied-for trade mark would ‘be likely to deceive or cause confusion’ because of the second mark’s reputation, then the first mark’s application can be opposed.

Pexels Thirdman 5862315v2

Under s 120(3), an infringed trade mark being well-known in Australia can be a cause of action even when used in an area unrelated to the initially registered mark if there is a likelihood of causing confusion. That is, if a brand is well known enough, a new trade mark may infringe upon it even if the brand is not actively operating in that area: as a gross example, under section 120(3), you would not be able to register your new masonry tool with the trade mark ‘coca cola’, even though that is for a beverage.

The Court concludes from this ‘that in all other circumstances under the TM Act, the registration of a trade mark alone determines the rights of the owner of a registered trade mark.’

More can and has been said about this case. Still, the key takeaway is that your reputation, or the reputation of your trade mark, is not considered relevant in the light of this decision regarding infringement that may confuse or mislead. Instead, the actual circumstance of using the potentially infringing mark, and the immediate context around them, will be prioritised. Even in light of the recent judgment, businesses should still proceed with caution before using third party marks in comparative advertising.

If you have questions about this decision, or you would like assistance with registering and enforcing your trade marks, our trade marks team are here to help.  Contact us on 07 3369 2226 or email mail@mbip.com.au to get advice on your specific situation.

[1] HCA Botox at 38.

[2] Nikken Wellness Pty Ltd v van Voorst (2003) AIPC ¶91-904 at 35,907 [44]