The key to assessing deceptive similarity 3 min read
The Federal Court of Australia has handed down two important trade mark decisions.
Allergan Australia v Self Care IP Holdings and Caterpillar Inc v Puma SE highlight the precise nature of the test required in assessing deceptive similarity, as well as the limits of the comparative advertising defence to infringement.
Key takeaways
- The test of deceptive similarity involves an assessment of likely consumer confusion as to the source of the relevant goods and services.
- Tread carefully when referencing another's trade mark in marketing materials and product packaging. The defence of comparative advertising will not provide a safety net to those seeking to leverage the reputation of other traders.
Who in your organisation needs to know about this?
In-house legal counsel; marketing and advertising teams.
'PROTOX' and 'PROCAT'?
- Allergen manufactures 'Botox', an injectable product containing botulinum toxin. It also owns various trade marks for 'BOTOX'. As previously reported, Allergen brought a trade mark infringement claim against Self Care, relating to the use of the brand name 'PROTOX' and the phrase 'instant Botox® alternative' in connection with Self Care's 'FREEZEFRAME' products.
- Caterpillar Inc owns various trade marks for the 'CAT' brand. Caterpillar licenses its trade marks for use on various 'CAT' branded goods, including clothing and footwear. In 2016, Puma SE applied to register the trade mark 'PROCAT'. Caterpillar opposed the application, arguing that 'PROCAT' was deceptively similar to its 'CAT' trade marks.
Deceptive similarity
- In the PROTOX case, the trial judge held that the 'BOTOX' and 'PROTOX' marks were not deceptively similar, in part because the word 'BOTOX' was so well known that the difference between that word and 'PROTOX' would be immediately apparent to a consumer. However, on appeal, the Full Federal Court held that the relevant test was not whether consumers would consider the words (or the products to which the words relate) to be different, but rather whether a consumer might wonder whether the marks or underlying products had come from the same source. The Full Court held that there was a real risk that 'PROTOX' would deceive or cause confusion as to the source of the goods, as having come from the same source as the 'BOTOX' product.
- Similar reasoning was applied in the PROCAT case. The court held 'PROCAT' was deceptively similar to the 'CAT' marks, especially since 'pro' would likely be understood as a colloquial adjective for the word 'professional' and there was an overlap in the retail channels used by Puma and Caterpillar. The court concluded that there was a tangible risk that consumers would be confused as to whether goods labelled with the 'PROCAT' mark were connected with the 'CAT' branded goods, as being a 'professional' or otherwise special line of 'CAT' goods.
Comparative advertising defence
A fascinating aspect of the PROTOX decision was the Full Court's treatment of the comparative advertising defence. The Full Court held that the defence did not apply since:
- the marking on the Self Care products, 'instant Botox® alternative', was not the same as the infringed mark 'BOTOX' (even though it was wholly contained within that phrase); and
- Self Care was not actually engaged in comparative advertising – 'instant Botox® alternative' was not used as a comparison but was itself a trade mark to leverage the reputation of the BOTOX brand.
The court's strict reading of the comparative advertising defence is an important takeaway and one that should be heeded by marketing teams and counsel alike.