Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCAFC 180

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCAFC 180

The Court found that the respondents' use of 'PROTOX' and 'instant Botox® alternative' infringed the BOTOX registered trade mark under s 120(1) of the Trade Marks Act 1995 (Cth), and that use of the statement 'instant Botox® alternative' in the promotion of the Inhibox product misrepresented product qualities in contravention of ss 18, 29(1)(a), and 29(1)(g) of the Australian Consumer Law. The injunctions granted were warranted in general form given the findings of reputation leveraging and established practice.

Jurisdiction
Australia
Judgment Date
13 October 2021
Procedural Posture
Appeal / Final Orders Following Full Court Decision
Outcome
Final declarations of infringement and contravention; injunctions and directions for stay application ordered.
Legal Topics
['trade Mark Infringement' 'misleading or Deceptive Conduct' 'restraining Orders' 'declarations']
['intellectual Property' 'competition and Consumer Law'] ['trade Mark Infringement' 'misleading or Deceptive Conduct' 'restraining Orders' 'declarations']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Appeal / Final Orders Following Full Court Decision

Legal Issues

  1. 1 ["Whether use of PROTOX and 'instant Botox® alternative' infringed the BOTOX trade mark under s 120(1) of the Trade Marks Act 1995 (Cth)" "Whether use of the phrase 'instant Botox® alternative' constituted misleading or deceptive conduct or false representations under the Australian Consumer Law"]

Ratio Decidendi

The Court found that the respondents' use of 'PROTOX' and 'instant Botox® alternative' infringed the BOTOX registered trade mark under s 120(1) of the Trade Marks Act 1995 (Cth), and that use of the statement 'instant Botox® alternative' in the promotion of the Inhibox product misrepresented product qualities in contravention of ss 18, 29(1)(a), and 29(1)(g) of the Australian Consumer Law. The injunctions granted were warranted in general form given the findings of reputation leveraging and established practice.

Court Disposition

Final declarations of infringement and contravention; injunctions and directions for stay application ordered.

Orders

  • ["Declaration of trade mark infringement regarding 'PROTOX' mark by respondents." "Declaration of trade mark infringement regarding the 'instant Botox® alternative' mark by respondents." "Declaration of contravention of Australian Consumer Law ss 18, 29(1)(a), 29(1)(g) due to misrepresentations relating to 'instant...