Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163

PROTOX and 'instant Botox® alternative' so nearly resemble BOTOX that there is a real risk ordinary consumers would be confused or deceived as to whether products come from the same source, constituting trade mark infringement. The statements regarding product efficacy were misleading or deceptive under the ACL because respondents did not have reasonable grounds for representing Inhibox's long-term effects equivalent to BOTOX.

Jurisdiction
Australia
Judgment Date
07 September 2021
Procedural Posture
Appeal / Judgment of Full Court
Outcome
Appeal allowed; judgment for appellants
Legal Topics
['trade Marks' 'misleading or Deceptive Conduct' 'comparative Advertising' 'passing Off']
['intellectual Property' 'consumer Law'] ['trade Marks' 'misleading or Deceptive Conduct' 'comparative Advertising' 'passing Off']

Case Brief

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Procedural Posture

Appeal / Judgment of Full Court

Legal Issues

  1. 1 ['Whether PROTOX is deceptively similar to BOTOX under s 10 of the Trade Marks Act 1995 (Cth)' "Whether use of the phrase 'instant Botox® alternative' constitutes trade mark use and is deceptively similar" 'Whether statements constituted misleading or deceptive conduct under Australian Consumer Law' "Availability of statutory 'defences' to trade mark infringement under s 122 of the Trade Marks Act"]

Ratio Decidendi

PROTOX and 'instant Botox® alternative' so nearly resemble BOTOX that there is a real risk ordinary consumers would be confused or deceived as to whether products come from the same source, constituting trade mark infringement. The statements regarding product efficacy were misleading or deceptive under the ACL because respondents did not have reasonable grounds for representing Inhibox's long-term effects equivalent to BOTOX.

Court Disposition

Appeal allowed; judgment for appellants

Orders

  • ['Leave granted to rely on amended notice of contention' 'Appeal allowed; order 7 of orders made on 7 December 2020 set aside and cross-claim dismissed' 'Proceedings remitted for damages/account of profits for infringement and contravention of ACL' 'Parties to confer on form of declarations and injunctions within 7...