Self Care IP Holdings Pty Ltd & Anor v. Allergan Australia Pty Ltd & Anor

Lower Court Judgment

07/09/2021 Federal Court of Australia (Jagot, Lee and Thawley JJ)

[2021] FCAFC 163

13/10/2021 Federal Court of Australia (Jagot, Lee and Thawley JJ)

[2021] FCAFC 180

Catchwords

Intellectual property – Trade marks – Infringement claim – Section 120 of Trade Marks Act 1995 (Cth) – Where respondents authorised user and owner of registered trade mark for word "BOTOX" – Where respondents claimed appellants used brand name "PROTOX" as trade mark and "PROTOX" deceptively similar to BOTOX trade mark, constituting infringement under s 120(1) of Trade Marks Act – Where respondents claimed appellants used phrase "instant Botox® alternative" as trade mark, which constituted infringement of BOTOX trade mark – Whether appellant infringed BOTOX trade mark by using "instant Botox® alternative" or "PROTOX" – Whether phrase "instant Botox® alternative" deceptively similar to "BOTOX" within meaning of s 120(1) of Trade Marks Act – Whether appellants' use of phrase "instant Botox® alternative" attracts defences under s 122(1)(b)(i) and (d) of Trade Marks Act regarding use in good faith and use not infringing exclusive right of registered owner.

Consumer law – Misleading or deceptive conduct – Where respondent claimed appellants' statement "instant Botox® alternative" constituted representation appellants' Inhibox product would give same results as BOTOX products in contravention of s 18 or s 29(1)(a) of Australian Consumer Law ("ACL"), being Schedule 2 to Competition and Consumer Act 2010 (Cth), or Inhibox would achieve or had same performance characteristics, uses and/or benefits as Botox in contravention of s 18 or 29(1)(g) of ACL – Whether appellants' made misleading or false representations contrary to ss 18, 29(1)(a) and 29(1)(g) of ACL.