Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd – Part 3: removal or cancellation of marks

[2020] FCA 1530

By way of cross-claim in proceeding NSD1802/2017, Self Care IP and Self Care Corp alleged that Allergan had sought to extend its trade mark rights beyond the field of actual use of the trade mark in relation to injectable anti-wrinkle products, to a different and broader field of skin-care creams by way of the class 3 goods specified for the 655 mark and the 426 defensive mark. It claimed that those specifications were not valid. Self Care sought that the 655 mark be removed in relation to those goods and for the 426 defensive mark to be cancelled.

Self Care’s cross-claim sought:

• removal (including cessation of protection) from the register of the word mark BOTOX in class 3 of the 655 mark for non-use pursuant to s 92(4)(b) of the Trade Marks Act and reg 17A.48D of the Trade Mark Regulations 1995 (Cth) in respect of all goods covered by the registration, that is, “cosmetics, face creams and lotions; skin creams and lotions”; and
• cancellation of the BOTOX 426 defensive mark pursuant to ss 88(2)(a) and 187(d) of the Trade Marks Act in respect of all the class 3 goods, and such other goods as are relied on by Allergan in their claims of trade mark infringement.

Cancellation of the 655 mark

The 655 mark had only been used in relation to the product Botox. There was no suggestion that that product might be classified or described as “face creams and lotions; skin creams and lotions”. Allergan focused its opposition on the category ‘cosmetics’, contending that Botox is a cosmetic within the meaning of that word as used in the trade mark registration. Stewart J did not accept this contention, concluding that Allergan has not used the 655 mark in respect of any of the goods covered by the registration: [284].

In relation to the possible exercise of the Court’s discretion to not remove the mark, Allergan referred in particular to s 101(4)(a) and submitted that it has used the 655 mark in respect of “similar goods or closely related services”. Allergan submitted that Botox and the service of providing cosmetic procedures that use Botox are addressed to the same market of consumers of cosmetics and often in the same place as cosmetics are offered for sale. The Court found that there was no evidence that Allergan has used the 655 mark, or indeed any other BOTOX mark, in respect of “closely related services”. The service of administering Botox injections is offered by others, not by Allergan. The question was whether Botox is a closely related good such as to justify the exercise of the discretion. The Court concluded it was not; Botox is a pharmaceutical and not a cosmetic: [291].

Cancellation of the 426 defensive mark

Cancellation of the 426 defensive mark was sought by Self Care on the basis that the use of the word mark BOTOX in relation to the goods or services covered by that mark was not likely to be taken to indicate that there is a connection between those goods or services and the registered owner. Self Care bore the onus of proof.

The Court considered the operation of ss 185(1) and 187(d) of the Trade Marks Act, of which there had been no previous judicial consideration.

Section 185 of the Trade Marks Act relevantly provides:

(1)     If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a defensive trade mark in respect of any or all of those other goods or services.

Section 187 of the TM Act relevantly provides:

187 Additional grounds for rejecting application for registration or opposing registration

In addition to any other ground on which:

(a)     an application for the registration of a trade mark as a defensive trade mark may be rejected; or

(b)     the registration of a trade mark as a defensive trade mark may be opposed;

the application must be rejected or the registration may be opposed:

(c)     […]; or

(d)     in the case of a registered trade mark—if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner.

The Court found that although the registered defensive mark does not have to be famous, and neither s 185(1) nor s 187 uses the word reputation, it is obvious that the mark must have some reputation in relation to all or some of the goods and services in respect of which it is non-defensively registered. That is because without that reputation the (unauthorised) use of the mark in relation to other goods or services would not be likely to suggest a connection with the owner of the registered mark.

The question was whether it is likely that the use of the trade mark BOTOX in relation to any of the class 3 goods would be taken to indicate that there is a connection between those goods and Allergan, being the registered owner of the BOTOX trade mark.

Stewart J stated that the evidence of the ubiquitous reputation of BOTOX was overwhelming, although “the reputation of BOTOX is in relation to a very particular type of product”: [327]. However, the Court found that the class 3 goods and pharmaceutical treatments for skin ageing and wrinkling such as Botox share a substantially common market and there was ample evidence of complementary use of certain skin care products and pharmaceuticals. The mere fact that injectable products such as Botox do not ordinarily share a common trade source with topical cosmetic products, and that Allergan had not up until the trial itself traded topical cosmetic products, was insufficient to displace a connection that was otherwise likely to be drawn between topical cosmetic products and the owner of the BOTOX mark if that mark was used in relation to such products.

Stewart J accepted that amongst ordinary reasonable consumers the word BOTOX is frequently used in a general sense to refer to a category of product, being anti-wrinkle injections, rather than a brand. However, his Honour stated that BOTOX is nevertheless a powerful brand with a widespread reputation. If it was applied to a topical cosmetic product, that is, a product that is not an anti-wrinkle injection, it is likely that ordinary reasonable consumers would draw a connection between the product and the owner of the trade mark BOTOX.

Several of the goods in the registration were found to be products of a type not so dissimilar from Botox that it is not likely that the use of the mark BOTOX in relation to them would not be taken to indicate that there is a connection between them and Allergan. While some other goods were less similar, Self Care had the onus of proof and failed to establish this ground.