In this article I look at some problems with the High Court’s treatment of the issue of ‘deceptive similarity’ in its recent Self Care IP Holdings v Allergan [2023] HCA 8 decision, and suggest how future courts may respond.
Warwick Rothnie’s (also of List G) article on this case is well worth a read (link below), in which he raises some significant difficulties with the Court’s analysis of whether PROTOX was ‘deceptively similar’ to the registered mark BOTOX, relating to the scope of the surrounding factual matters that the Court took into consideration. https://ipwars.com/did-the-high-court-change-the-law-of-trade-mark-infringement-to-a-kind-of-registered-passing-off/ I have added some further thoughts below.
As widely reported, a key ruling by the unanimous High Court was that reputation cannot be considered in assessing deceptive similarity. The High Court overruled the Full Court’s 1999 decision in Registrar of Trade Marks v Woolworths, although the applicable reasoning in that case was limited to elements of a mark that had achieved notoriety for which judicial notice may be taken into account. The apparent irony on the facts in Allergan is that it is difficult to see how, applying an orthodox approach, the Court could have reached the conclusion that PROTOX was not deceptively similar to BOTOX when used for topical creams (the registered mark was a s 185 defensive mark) other than by being influenced by their familiarity with BOTOX, as a well-known trade mark.
As Warwick notes in his article, in assessing whether the two marks were deceptively similar the Court took the surprising approach of considering: the impact of a disclaimer on the packaging which stated that Botox was a registered trade mark of Allergan; a consumer’s likely understanding of the phrase ‘prolong the look of Botox®’; and the proximity on the packaging of a FREEZEFRAME mark.
It seems reasonable that some surrounding circumstances involving packaging might be relevant to an assessment of deceptive similarity, if it influences the meaning or perception of a component of a mark. For example, the word or component ‘bat’ might be understood quite differently if it was presented with a picture of a cricket bat, compared with a picture of a fruit bat. But the High Court’s treatment of surrounding circumstances was more extensive, and involved considerations that are difficult to reconcile with established principles for comparing trade marks for the purposes of the Trade Marks Act. The Court’s consideration of broader surrounding circumstances might potentially have been relevant to the defence in s 120(2) (had that been under consideration), but even then such considerations only become necessary once there is a finding of deceptive similarity (or substantial identity), and not as part of the assessment of deceptive similarity.
Looking at each of the Court’s factual considerations in paragraphs [70] and[71]:
- The statement on the packaging that the product is to ‘prolong the look of Botox®’: [70]. The Court’s treatment of this statement was focused on rejecting any argument that the statement suggests a commercial connection with Botox, saying that it was the ‘common experience’
of consumers that one trader’s products might be used with those of another trader. Their Honours’ analysis suggests that this was therefore a neutral consideration overall. But the Court did not explain why the statement had any relevance for an assessment of deceptive similarity, and did not reject that argument on this simpler basis.
Playing devil’s advocate, it might be argued that the express reference on the packaging to the comparator mark (the registered mark) would in practical terms assist a consumer to differentiate between the registered mark and the allegedly infringing mark because an ‘imperfect recollection’ is then not required. However, first, this was not an analysis adopted by the Court. Second, it is a distorting consideration because why should the consumer be assumed to know that the presented mark (here, Botox) is in fact the same mark as the hypothetically imperfectly remembered mark – i.e. why should this relevantly jog their memory? (And how would such considerations factor into an application to register the mark, which, if successful, provides a defence under ss 20(1) and 122(1)(e), or alternatively to consideration of the defence in ss 122(1)(f) and (fa))? - The statement that ‘Botox is a registered trademark of Allergan Inc’: [70]. This reference was made as an adjunct to the above discussion. It is unclear whether the Court was only seeking to buttress its view that the reference to Botox® did not suggest a connection between the two marks. Nevertheless, from a notional consumer’s perspective, Allergan may, or may not, also be the owner of the PROTOX mark, and it can have no rational impact on whether the two marks are assessed to be similar to the requisite degree or not. Interestingly, while the High Court referenced the unchallenged findings of the trial judge as to the significance of the words ‘prolong the look of Botox®’, in footnote 136 the Court also noted that those findings were made in the context of considering the ACL and passing off allegations, as distinct from deceptive similarity and trade mark infringement.
- The statement on a website that ‘PROTOX has no association with any anti-wrinkle injection brand’: [70]. The first significant difficulty with this consideration is that it is a statement on a website, not on the packaging itself (and so must be confined to consideration of the website as constituting infringing conduct). But the difficulties compound because for this statement to have any relevant impact on confusion requires a consumer to know that BOTOX is an anti-wrinkle injection brand in circumstances where the Court has held that reputation must be disregarded. It is no answer to say that Botox is assumed to be a brand for anti-wrinkle creams (which in any event are not an injectable) since the trade mark was registered for that product, because the Court is introducing a real-world factual statement (as to there being no association) into a hypothetical comparison. To illustrate this (and ignoring the s 185 defensive mark issue for the moment), the statement that PROTOX has no association with any anti-wrinkle injection brand could be true because the trade mark owner had not yet started using the mark. Yet an assessment of deceptive similarity with a registered trade mark should not be impacted by whether that registered mark has in fact been used or not.
- Use in proximity to the FREEZEFRAME mark: [71]. The proximity of other marks can have an impact on whether a mark is found to be used ‘as a trade mark’ (an issue that the High Court addressed in Allergan
at [25] in relation to a distinct factual issue, where it overruled the Full Court’s ‘finding that ‘instant Botox®
alternative’ had been used ‘as a trade mark’). But the proximity of this mark cannot be relevant to deceptive similarity – the word ‘FREEZEFRAME’ cannot impact the meaning or perception of PROTOX. And its presence must be neutral – a notional consumer could not know whether FREEZEFRAME is, or is not, owned by the same person as the (imperfectly recollected) BOTOX mark. Its presence does not point in either direction on the question of similarity, or likelihood of confusion more generally. No reasoning was given by the Court as to the asserted relevance of the proximity of the mark.
- No evidence of actual confusion: [71]. This consideration is more orthodox; evidence of actual confusion between marks can be relevant to an assessment of deceptive similarity (see for example Australian Woollen Mills, cited at [30] in Allergan). The weight to give to an absence
of evidence of confusion will depend on all of the facts – it might simply reflect the difficulties in obtaining such evidence, and if a registered mark has not yet been used, or has not been extensively used, an absence of evidence of actual confusion will be of no or negligible value.
The impact of paragraphs [70] and [71] on future trade mark cases is (of course) uncertain. At [71] the High Court referred to the need to apply the ‘applicable principles’ that it had set out at [26] to [33] of its reasons. At [33] it had expressly noted that a court does not look to the totality of the defendant’s conduct as would occur for a passing off case, although the High Court’s focus then switched to the need to disregard the actual reputation in the registered mark (as a prologue to its consideration of whether reputation should be relevant to deceptive similarity).
The factual matters that the High Court referenced in [70] might potentially be disregarded by a future court on two bases: first, the Court only purported to apply the ‘applicable principles’
for deceptive similarity in paragraph [71] of its judgment, which may suggest that the discussion in [70], which it did not cross-reference in [71], was obiter; and second, it may be concluded that the Court in [70] was merely explaining why any argument that the identified aspects of the packaging made it more likely for confusion to result was a flawed argument, factually. This flawed argument was partly introduced in the second sentence of [70]. The Court did not expressly endorse that such an argument was legally relevant. That still leaves the issue of the proximity of the ‘FREEZEFRAME’ mark. With respect, the simplest way to sideline that problematic issue is on the basis that it was unreasoned, and furthermore is of no clear logical relevance to an assessment of deceptive similarity.