Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd – Part 4: Trade Marks Office Appeal

[2020] FCA 1530

This part of the case involved an appeal from the decision of the Trade Marks Office to allow Self Care IP’s application for the registration of the mark FREEZEFRAME PROTOX in class 3 in respect of the goods “anti-ageing serum, anti-wrinkle serum”. The grounds of opposition relied upon by Allergan were ss 60, 42(b), 44, 58, 59 and 62A.

In relation to s 60, the BOTOX mark had acquired a reputation in Australia before the priority date for the registration of the FREEZEFRAME PROTOX mark (that is, 2014) but that reputation was in relation to an injectable anti-wrinkle product administered by healthcare professionals. There was no reputation in the mark BOTOX that extended to topically applied cosmetics or general cosmetic products or treatments. For the same reasons as dealt with in relation to why the mark PROTOX was not deceptively similar to the mark BOTOX, the mark FREEZEFRAME PROTOX was not likely to deceive or cause confusion.

Allergan similarly failed in relation to ss 42(b) and 44.

In relation to s 58, Allergan argued that while Self Care IP applied for the mark, Self Care Corp was the owner of the mark. The Self Care case was that Self Care IP intended to license use of the mark to Self Care Corp. The Court concluded that Ms Amoroso was the controlling mind of both companies and had it within her capacity to decide which company would own the intellectual property, and she decided that in the case of the mark FREEZEFRAME PROTOX it would be Self Care IP. The s 58 claim failed.

In relation to the no intention to use ground under s 59 of the TM Act, Stewart J did not accept that Allergan Inc had established that Self Care IP did not have the intention on lodging the application for registration of the opposed mark to use it.

Allegan’s s 62A case hinged on its trade mark infringement, ACL and passing off actions. The relevant parts of each of those actions failed, so this ground likewise failed.

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

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