Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163
Property law; trademarks; infringement; ‘deceptively similar’ product name
Facts: Allergan Australia (Allergan) owned the trademark ‘BOTOX’, a name used in relation to various products including anti-wrinkle creams. Self Care IP Holdings (Self Care) marketed an anti-wrinkle product under the trademark ‘PROTOX’. Allergan claimed that PROTOX was deceptively similar to BOTOX and was therefore an infringement of the BOTOX trademark.
Issue: Was the trademark PROTOX deceptively similar to the trademark BOTOX?
Decision: PROTOX was deceptively similar to BOTOX and infringed Allergan’s trademark.
Reason: A registered trademark is infringed if another person uses a trademark that is substantially identical with, or deceptively similar to, the registered mark. Whether a mark is deceptively similar is determined by considering the impression likely to be left with ordinary persons seeing the marks, whether next to each other or independently. The offending mark is deceptively similar if the possible purchasers of such goods might think the different products possibly come from the same source. The court said [at 42]:
PROTOX so nearly resembles BOTOX that there is a real risk that PROTOX would deceive or cause confusion as to whether the two might come from the same source. As the primary judge found, most consumers on seeing PROTOX on an anti-wrinkle cream would immediately have been reminded about BOTOX. Consumers would not confuse the words PROTOX with BOTOX because the words are sufficiently distinct for the two not to be confused. … However, the similarities between the two words would naturally have led consumers to wonder if perhaps the underlying products came from the same source. The similarities in the words imply an association.