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

FEDERAL COURT OF AUSTRALIA

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 Appeal from: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530 Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCA 185

File numbers: NSD 35 of 2021 NSD 249 of 2021

Judgment of: JAGOT, LEE AND THAWLEY JJ

Date of judgment: 7 September 2021

Catchwords: TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) – whether primary judge erred in concluding that the respondents did not infringe the appellant's BOTOX mark by using PROTOX as a trade mark – whether primary judge erred in concluding that PROTOX was not deceptively similar to BOTOX – held that PROTOX is deceptively similar to BOTOX mark – infringement established TRADE MARKS – infringement claim pursuant to s 120 of the Act – whether the respondents used the composite phrase "instant Botox® alternative" as a trade mark – whether "instant BOTOX® alternative" deceptively similar to appellant's BOTOX marks – phrase was used as a trade mark – phrase was deceptively similar to BOTOX mark – whether comparative advertising "defence" under s 122(1)(d) of the Act available and established – meaning of "comparative advertising – whether "defences" under s 122(1)(b) and (c) and (e) of the Act available and established – discussion of the nature of s 122 "defences" – defences not made out – infringement established CONSUMER LAW – misleading or deceptive conduct – performance characteristics, uses or benefits – representations as to period of time effect of treatment would last – whether the use by the respondents of the phrase "instant Botox® alternative", assessed in context, conveyed a representation that the respondents' Inhibox product would provide results which would, after treatment has ceased, last about as long as treatment with Botox – contraventions of s 18, s 29(1)(a) and s 29(1)(g) Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) established