Trade mark owner of PROTOX is all frowns after court decision: What happens if you think someone has copied your trade mark?

Sharon Givoni Consulting Copyright, Trade marks

In Australia, the test for trade mark infringement is whether the use of a mark by another person is likely to deceive or cause confusion among consumers in relation to the origin of the goods or services.

This is determined by considering the similarity of the marks, the similarity of the goods or services, and the likelihood of confusion arising from the use of the marks in the marketplace.

There are a number of tests and one of them focuses on the perception of an ordinary consumer who is assumed to have imperfect recollection of the two trade marks, particularly when it comes to fast moving consumer goods.

If there is a likelihood of confusion, the use of the mark by the other person may be considered infringing. Let’s take a look at how this applies in practise with a recent case.

Credit: Sam Khamseh (Unsplash)

PROTOX Vs. BOTOX – are they too similar as trade marks?

‘PROTOX’, a skincare product advertised as an injection-free solution to ‘prolong the look of Botox®’, and. ‘Inhibox’, a skincare product advertised to be an ‘instant Botox® alternative.

Both PROTOX and BOTOX are injectable neurotoxins used to temporarily paralyse muscles and reduce the appearance of wrinkles.

They are both used in cosmetic procedures, such as to treat crow’s feet, forehead lines, and frown lines. However, there are some differences between the two brands.

BOTOX is approved by the Therapeutic Goods Administration (TGA) for cosmetic and medical uses and it is the most popular non-surgical cosmetic treatment worldwide, used to treat some medical conditions as well.

On the other hand, PROTOX has been marketed as an alternative to BOTOX, and it’s a newer brand, with claims of faster onset and longer-lasting results.

Trade Mark Dispute

The legal dispute arose over the use of the PROTOX brand name in Australia due to its similarity to BOTOX and the potential for confusion among consumers.

What did the High Court have to say on this?

Recently, the High Court delivered its highly awaited decision in the Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2023].

The decision was that PROTOX and BOTOX trade marks are not deceptively similar even though both are for anti-wrinkle products.

This decision overruled the earlier Full Federal Court view.

The BOTOX Trade Mark

The High Court unanimously that the use of the words “instant Botox® alternative” or the word PROTOX did not infringe the trade mark BOTOX.

The court found that the phrase “instant Botox® alternative” was not used as a trade mark but in a descriptive manner. The Court also found that PROTOX was not deceptively similar to the BOTOX mark.

The fact that BOTOX has a huge reputation did not have any bearing on the court’s decision. What mattered was weather they were confusingly similar.

Tips for Trade Mark Owners:

Here are some things to keep in mind if you own a trade mark:

  • Register your trade mark: This High Court decision confirms that registered trade marks have a lot of power, even if there is no actual confusion. So, it’s important to register your trade mark to protect it from infringement.
  • Don’t rely on reputation alone: As that won’t be enough to prove trade mark infringement. So, make sure you have other evidence to support your claim.
  • Understand the difference between trade mark infringement and other claims: It’s important to remember that trade mark infringement is different from claims under the Australian Consumer Law for misleading or deceptive conduct or passing off.
  • If you think that your trade mark has been copied: seek the advice of a lawyer as the tests are very particular under the law and the cases have an influence on how those case a are interpreted.

Please note the above article is general in nature and does not constitute legal advice.
This article was written by Sharon Givoni, Principal Solicitor at the law firm Sharon Givoni Consulting (https://www.sharongivoni.com.au/). We do a lot of work in the area of interior design and understand the industry.

Please email us info@iplegal.com.au if you need legal advice about your brand or another legal matter in this area generally.

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