In brief 4 min read
In recent proceedings before the Federal Court, Allergan was unsuccessful in its claim for infringement of its registered BOTOX trade marks against Self Care. Allergan alleged that Self Care infringed its BOTOX marks by its use of various phrases on the packaging of its Freezeframe products which contained the BOTOX mark, including 'instant Botox alternative'.
A key part of the judgment assesses whether these uses of the word BOTOX amounted to use as trade marks, or whether they were used for the purposes of comparative advertising.
- Using a competitor's registered trade mark to highlight the advantages of your products or services may not be trade mark infringement.
- This will more likely be the case where the comparative advertising makes clear that your products and those of your competitor have different origins, such as by including the ® (registered trade mark) sign adjacent to your competitor's registered marks.
General counsel, design team, marketing team
Allergan’s BOTOX product is an intramuscularly administered neurotoxin complex used for temporary cosmetic improvement in the appearance of upper facial wrinkles. Allergan has Australian trade mark registrations for BOTOX in classes 3 and 5 in respect of cosmetic and pharmaceutical products respectively.
Self Care manufactures and sells topical anti-wrinkle skincare products under the trade mark FREEZEFRAME. In October 2014, Self Care applied for registration for the trade mark FREEZEFRAME PROTOX for anti-ageing serum and anti-wrinkle serum products in class 3. Allergan's opposition to the application before the Registrar was unsuccessful (also on appeal) but this article focuses on the infringement issues raised in the case.
In 2017, Allergan commenced infringement proceedings against Self Care claiming it had infringed the BOTOX trade marks by using the word BOTOX in various forms on Freezeframe products and packaging, including 'instant Botox alternative' and 'Freezeframe Protox is clinically proven to make Botox look better'. Allergan also claimed that Selfcare's use of the PROTOX trade mark infringed its BOTOX trade mark registrations.
Self Care said that there had been no infringement of Allergan's BOTOX trade marks because Self Care's use of that word on its products was not 'as a trade mark' but rather to say that its products were alternatives to BOTOX.
Justice Stewart of the Federal Court held that the manner in which Self Care used the word BOTOX in its various composite phrases was not use as a trade mark, which is a requirement for trade mark infringement. This is because each of the phrases used the marks in a nominative fashion: they were narrative or descriptive phrases which included within them badges of origin such as PROTOX, FREEZEFRAME and BOTOX, meaning the phrases themselves were not used as trade marks. The court instead found that these phrases amounted to ‘ad-speak’, which contrasted the relevant product to BOTOX by saying it can be used to improve the results of BOTOX.
In relation to whether the word BOTOX itself was used as a trade mark, the Judge held that Self Care used BOTOX in a manner which distinguished BOTOX from Self Care's products and suggested that they had different origins. Additionally, the use of the ® (registered trade mark) sign adjacent to BOTOX acknowledged that it was a badge of origin for the well-known product of that name. Finally, by describing Self Care’s products as alternatives or enhancers, Self Care’s use of BOTOX was considered to indicate the opposite of a connection in the course of trade between Self Care and Allergan.
In relation to Allergan's claims that the PROTOX trade mark infringed the BOTOX registrations, Justice Stewart found that the PROTOX mark is not deceptively similar to the BOTOX mark so there was no infringement.
Another route the court could have taken to reach the same result would have been to find that Self Care's use of BOTOX amounted to non-infringing use as a trade mark by virtue of s122(1)(d) of the Trade Marks Act 1995 (Cth). Section 122(1)(d) provides that a trade mark is not infringed where a person uses a mark for the purposes of comparative advertising. As the court did not find that the use of the mark was as a trade mark, it did not consider the application of this subsection. This is unfortunate given that few cases have considered its scope.
Additionally, by reaching the conclusion that none of the composite phrases or the word BOTOX itself were used as badges of origin for Self Care, the court potentially missed the more salient point that Self Care had used BOTOX as a trade mark in relation to the products being provided by Allergan. Ultimately, this would not have affected the result: if the marks were considered to have been used as trade marks to describe the Allergan products, this would have been non-infringing use due to s122(1)(d) of the Act.
- Ensure that your comparative advertising material makes clear that there is no connection in the course of trade between your products and those of your competitor.
- Seek advice from Allens' Intellectual Property team regarding your marketing and advertising material when engaging in comparative advertising.