Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd – Part 1: Introduction

[2020] FCA 1530

Background

This enormous read commences with the opening lines:

The eternal human interest in reducing the appearance of ageing underlies the disputes in these cases. The opposing parties have both respectively developed and promoted products with very different modes of action to attract customers who have this Sisyphean interest.

The second paragraph relays scenes from Sex and the City, tendered as proof of the ubiquitous reputation of Botox.

Botox, the product, manufactured by Allergan Inc, needs no introduction. The mark BOTOX was first registered in the United States in 1990. Allergan Australia Pty Ltd, a subsidiary of Allergan Inc, is the sponsor of Botox products on the Australian Register of Therapeutic Goods, and the authorised user of the BOTOX marks in Australia. While Botox is used for numerous therapeutic indications, it is the cosmetic indications that were relevant to this case.

The applicants, owners of rights to various BOTOX trade marks, alleged that the respondents sought to sell their products by unlawfully leveraging off the reputation of Botox (the product). The claims included trade mark infringement, claims under the Australian Consumer Law (‘ACL’)[i] and passing off. The second applicant also appealed against a decision of the delegate of the Registrar of Trade Marks to allow one of the respondents’ trade marks, which included the word PROTOX, to proceed to registration.

By way of cross-claim, the respondents sought to have certain of the applicants’ trade marks removed from the Register, or restricted to a smaller class of goods. The respondents’ challenge to the registration of the various marks was only to goods in class 3.

The BOTOX marks consisted of the following:

• Trade mark number 551279 for the word BOTOX in class 5 with a priority date of 28 February 1991;
• Trade mark number 860785 for the word BOTOX stylised, in class 5 with a priority date of 14 December 2000 (the ‘785 mark’);
• Trade mark number 860786 for the word BOTOX in class 3 with a priority date of 14 December 2000 (the ‘786 mark’);
• Trade mark number 1008655 for the word BOTOX in class 3 with a priority date of 8 March 2004 (the ‘655 mark’); and
• Trade mark number 1578426 for the word BOTOX in classes 1, 3, 5, 9, 10, 16, 35, 41, 42, 44 and 45 (the ‘426 defensive mark’).

Each of the class 5 registrations is in respect of pharmaceuticals. Relevant to the infringement claim under section 120(2) is that the 785 and 786 marks include the following goods: “Pharmaceutical preparations for the treatment of […] wrinkles […]”. The class 3 registration in respect of the 655 mark is for “cosmetics, face creams and lotions; skin creams and lotions.”

The Respondents in this action are Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd. The third Respondent, Ms Amoroso is the sole director and secretary of Self Care IP and Self Care Corp.

Ms Amoroso founded the Self Care business in about 2008, supplying cosmetic products, including, in particular, topical anti-wrinkle skincare products under the trade mark FREEZEFRAME, which was the umbrella brand. Self Care’s first flagship product was called Freezeframe with Inhibox.

In October 2014, Self Care IP lodged an application to register the mark FREEZEFRAME PROTOX for goods in class 3. Allergan was unsuccessful in an opposition to this mark. Self Care has a number of other pending or registered marks that include the word FREEZEFRAME followed by a particular product name.

Self Care’s market, products and packaging

The Self Care products at the centre of the proceedings were the PROTOX, Inhibox, Night products (tube and tub), and Boost product. Each had various statements made on the product or packaging that included references to Botox and that this was an alternative product to Botox.

The reputation of BOTOX

There was considerable evidence given about the reputation of BOTOX, which was relevant to a number of the claims.

Stewart J found that BOTOX has a strong and widespread market reputation. BOTOX is widely known of, frequently referenced in popular culture, and the product by that name has strong sales and substantial advertising spend. However, his Honour found that the evidence overwhelmingly supports the conclusion that the reputation of Botox is as an injectable anti-wrinkle product administered by healthcare professionals. His Honour found at [152] that there is no reputation in the mark BOTOX that extends to topically applied cosmetics or general cosmetic products or treatments. The reputation, whilst widespread and strong, is in its nature specific. Stewart J also found that the general understanding of the use of the word BOTOX is not necessarily as a reference to Allergan’s product which is branded BOTOX, but is rather understood in a generic sense as referring to an anti-wrinkle injection which could be Allergan’s product or one of the other botulinum toxin products on the market.

The next three notes about this case deal with the following topics: the second note deals with trade mark infringement, ACL, passing off, the TGA claim and the liability of director, the third note deals with rectification action, and the fourth and final note addresses the appeal from the decision of the Trade Marks Office in relation to opposition by Allergan.

[i] Competition and Consumer Act 2010 (Cth), Schedule 2.