Federal Court of Australia

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCAFC 180

ORDERS

THE COURT DECLARES THAT:

1.    by the use of the mark PROTOX on or in relation to the respondents’ Protox Product (as identified in paragraph 20 of the Second Further Amended Statement of Claim (2FASOC)), each of the first respondent and the second respondent has infringed Australian Registered Trade Mark Number 1578426 for “BOTOX” (the BOTOX Mark) under s 120(1) of the Trade Marks Act 1995 (Cth) (the TM Act);

2.    by the use of the mark “instant Botox® alternative” on or in relation to the respondents’ Inhibox Product (as identified in paragraph 29C of the 2FASOC), each of the first respondent and the second respondent has infringed the BOTOX Mark under s 120(1) of the TM Act;

3.    the sale or promotion by each of the first and second respondent of the Inhibox Product by reference to the statement “instant Botox® alternative” involved conduct, in trade or commerce, misrepresenting that:

(a)    the respondents’ Inhibox Product (and its use) is of at least the same standard or quality as the Botox Product in respect of the length of time the results would last after treatment has ceased; and

(b)    the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses and/or benefits as the Botox Product, in respect of the length of time the results would last after treatment has ceased,

and, accordingly, each of the first and second respondents has thereby contravened each of ss 18, 29(1)(a) and 29(1)(g) of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).

THE COURT ORDERS:

1.    pursuant to s 126(1)(a) of the TM Act that each of the first and second respondents, whether by itself, its directors, officers, employees, servants, agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the applicants, the word Protox, the phrase “instant Botox® alternative”, or the BOTOX Mark, or any substantially identical or deceptively similar mark in relation to the goods or services in respect of which the BOTOX Mark is registered.

2.    pursuant to s 232 of the ACL that each of the first and second respondents whether by itself, its directors, officers, employees, servants or agents or otherwise, be restrained from selling or promoting the respondents’ Inhibox product by reference to the statement “instant Botox® alternative” or otherwise representing:

(a)    in contravention of each of s 18 and s 29(1)(a) of the ACL, that the respondents’ Inhibox Product (and its use) is of the same standard or quality as the Botox Product in respect of the length of time the results last after treatment has ceased; or

(b)    in contravention of each of s 18 and s 29(1)(g) of the ACL, that the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses or benefits as the Botox Product, in respect of the length of time the results last after treatment has ceased.

3.    The respondents file and serve any application for a stay of these orders together with any affidavit in support within 7 days of the making of these orders.

4.    It be ordered that Orders 1 and 2 of these orders do not take effect:

(a)    initially, for a period of 7 days from the date on which these orders are made; and

(b)    if a stay application is filed within that period, until the determination of that application or until further order.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1    Reasons for judgment in these two appeals were delivered on 7 September 2021: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2021] FCAFC 163 (Allergan No 1). Those reasons included for the parties’ consideration a form of declarations and injunctions to give effect to the reasons for judgment: at [136]. The Court took the view that the parties should be given an opportunity to consider the terms of the declarations and injunctions and, accordingly, made an order requiring the parties to confer with a view to agreeing the appropriate form of declarations and injunctions within 7 days of the date of the order.

2    The parties did not reach agreement and have provided competing versions of what each considers to be appropriate.

3    The declarations and injunctions proposed in Allergan No 1 at [136] were as follows:

(1)    It be declared that:

(a)    by the use of the mark PROTOX on or in relation to the respondents’ Protox Product (as identified in paragraph 20 of the Second Further Amended Statement of Claim (2FASOC)), each of the first respondent and the second respondent, whether by itself, its directors, officers, employees or agents or otherwise, has infringed Australian Registered Trade Mark Number 1578426 for “BOTOX” (the BOTOX Mark) under s 120(1) of the Trade Marks Act 1995 (Cth) (the TM Act);

(b)    by the use of the mark “instant Botox® alternative” on or in relation to the respondents’ Inhibox Product (as identified in paragraph 29C of the 2FASOC), each of the first respondent and the second respondent, whether by itself, its directors, officers, employees or agents or otherwise, has infringed the BOTOX Mark under s 120(1) of the TM Act;

(c)    the sale or promotion by each of the first and second respondent of the Inhibox Product by reference to the statement “instant Botox® alternative” involved conduct, in trade or commerce, misrepresenting that:

(i)    the respondents’ Inhibox Product (and its use) is of at least the same standard or quality as the Botox Product in the length of time the results would last after treatment; and

(ii)    the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses and/or benefits as the Botox Product, in the length of time the results would last after treatment,

and, accordingly, each of the first and second respondents has thereby contravened each of ss 18, 29(1)(a) and 29(1)(g) of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).

(2)    It be ordered:

(a)    pursuant to s 126(1)(a) of the TM Act that each of the first and second respondents, whether by itself, its directors, officers, employees, servants, agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the applicants, the word Protox, the phrase “instant Botox® alternative”, or the BOTOX Mark, or any substantially identical or deceptively similar mark.

(b)    pursuant to s 232 of the ACL that each of the first and second respondents whether by itself, its directors, officers, employees, servants or agents or otherwise, be restrained from selling or promoting the respondents’ Inhibox product by reference to the statement “instant Botox® alternative” or otherwise representing:

(i)    in contravention of each of s 18 and s 29(1)(a) of the ACL, that the respondents’ Inhibox Product (and its use) is of the same standard or quality as the Botox Product in respect of the length of time the results last after treatment has ceased; or

(ii)    in contravention of each of s 18 and s 29(1)(g) of the ACL, that the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses or benefits as the Botox Product, in respect of the length of time the results last after treatment has ceased.

Paragraph 1 – Declarations

4    The parties agreed that the words “whether by itself, its directors, officers, employees or agents or otherwise” in declarations 1(a) and (b) should be deleted. We agree.

5    As to subparagraphs (i) and (ii) of declaration 1(c), the respondents (Self Care) proposed the following (additions underlined):

(i)    the respondents’ Inhibox Product (and its use) is of at least the same standard or quality as the Botox Product in respect of the length of time the results would last after treatment has ceased; and

(ii)    the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses and/or benefits as the Botox Product in respect of the length of time the results would last after treatment has ceased,

6    The appellants (Allergan) agreed that the words “respect of” should be included but contended that the words “has ceased” should not be included.

7    We consider the words “has ceased” should be included. This accords with the terms of the injunction which had been suggested in paragraph 2(b)(i) and (ii) in relation to the ACL claims and reflects the reasons, see in particular Allergan No 1 at [110].

Paragraph 2 – Injunctions

8    In relation to paragraph 2(a), Self Care submitted it should be altered as follows:

(a)    pursuant to s 126(1)(a) of the TM Act that each of the first and second respondents, whether by itself, its directors, officers, employees, servants, agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the appellants, the word Protox simpliciter, the phrase “instant Botox® alternative”, or the Botox Mark, or any substantially identical or deceptively similar mark in relation to:

(i)    the goods or services in respect of which the BOTOX Mark is registered; or

(ii)    goods of the same description as that of goods (registered goods) in respect of which the BOTOX Mark is registered; or

(iii)    services that are closely related to registered goods; or

(iv)    services of the same description as that of services (registered services) in respect of which the BOTOX Mark is registered; or

(v)    goods that are closely related to registered services.

9    Self Care submitted that the word “simpliciter” should be inserted to ensure that the injunction applied only to the mark “Protox” alone, noting that the pleaded case related to the mark Protox alone and also that Self Care is the owner of registered trade mark no 1653383 for the words “freezeframe PROTOX”.

10    Allergan submitted that insertion of the word “simpliciter” was “unnecessary given the injunction properly extends to substantially identical or deceptively similar marks”. In our view, the word is unnecessary. The injunction as framed enjoins the use of the word Protox as a trade mark. It does not purport to enjoin any use of the word, including in use of the trade mark “freezeframe PROTOX”.

11    Self Care submitted that the words “or the Botox Mark” should be deleted because the injunction should not be more widely expressed than the infringement as alleged and found; accordingly, it should refer only to the phrase “instant Botox® alternative” as declared in paragraph 1(b).

12    Allergan submitted that the words “or the Botox Mark” should remain, it being common practice in trade mark (and patent) infringement cases to grant an injunction in general form. Various authorities in relation to this issue were considered by the Full Court in Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386 (Greenwood, Jagot and Yates JJ). The Full Court concluded in Calidad at [44]:

[T]he course of authority to which we have referred does not support the proposition that, generally, an injunction in general form is not appropriate in cases involving the infringement of patent rights or trade mark rights or, indeed, a number of other intellectual property rights. To the contrary, the course of authority establishes, persuasively, that it is conventional for injunctions in general form to be granted.

13    The authorities considered in Calidad included Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153; 327 ALR 630 (Bennett, Katzmann and Davies JJ) in which the Full Court had taken the view that, in the circumstances of that case, an order “which merely repeats the prohibition in the Act, is not appropriate”: Christian at [181].

14    In our view, an injunction in general form is appropriate in the circumstances of this case, in particular having regard to the commercial context, the continuing business operations of the parties, and the unchallenged finding that Self Care intended to leverage off the reputation of Botox.

15    Allergan did not object to the insertion of subparagraph (i) into order 2(a), which reflects the terms of s 120(1) of the TM Act. The matters in subparagraphs (ii) to (v), which Self Care submitted should also be added, reflect the terms of s 120(2) of the Act which the appellants correctly observed were not in issue in the appeal.

16    In our view, the addition of the words in subparagraph (i) are appropriate and the remaining subparagraphs do not add anything sufficient to warrant their inclusion. Including the words in subparagraph (i), but not in subparagraphs (ii) to (v), also better fits the terms of the declarations in paragraphs 1(a) and (b) which refer to s 120(1) and not s 120(2), in turn reflecting the fact that the proceedings did not concern allegations of infringement under s 120(2).

Application to re-open

17    On 29 September 2021, over a week after receiving submissions in relation to the appropriate orders, the Court received an email from Self Care’s then newly retained solicitors seeking leave to make “a short supplementary submission”. The email included:

Form of declarations and injunctions

Self Care seeks leave to make a short supplementary submission on the form of the declarations and injunctions to the effect that:

(a)    the declarations and injunctions consequent on the ACL case should reflect the fact that the findings of the Court concerning the efficacy representations are limited to the use of the phrase “instant Botox® alternative” in a particular context, in particular, where reference is also made to the long term effect of Inhibox; and

(b)    the form of the injunctions should take account of the fact that many uses of phrases incorporating the words “Botox alternative” found to be permissible by the primary judge were not appealed  and remain permissible.

The appellants do not agree that Self Care should have any additional opportunity to make further submissions or to reopen submissions on the final orders and have raised the following matters in response: 

-    Self Care was represented by a very experienced law firm and experienced Senior Counsel at the Full Court hearing and in respect of the further submissions filed.  Self Care have had their opportunity to address the Court, and, with respect, it is not appropriate to seek to file further submissions simply because Self Care have subsequently changed solicitors. 

-    In any event, the appellants do not agree with the matters concerning the form of the orders, raised in (a) and (b) above and it is therefore not suitable for Self Care to make quasi submissions about them in the email to the Associate.  As concerns (a), the appellants do not agree that the Full Court’s findings are limited in the manner suggested.  Rather, as the Court found at [114], it is the statement ‘instant Botox® alternative’, in context, that “conveyed a representation that the effect [of the Inhibox product] would last after treatment for a period equivalent to that which would be achieved with treatment by Botox injection”.  And see [111].  As to (b), the case at trial was not whether the use of the words “Botox alternative” per se was acceptable and the primary Judge made no findings as to the use of that phrase. 

18    By an email sent on 5 October 2021, the Court asked Self Care whether it wished to make any further submission in support of its application for leave to make a short supplementary submission on the form of the declarations and injunctions.

19    By an email sent on 7 October 2021, Self Care’s solicitors relevantly responded:

The respondents wish to make the following further submission in support of their application for leave to make a short supplementary submission on the form of the declarations and injunctions.

Order 5 made on 7 September 2021 provided 7 days for the parties to confer regarding the form of declarations and injunctions and provide an agreed position or competing versions, together with supporting submissions.  The respondents sought the consent of Allergan for a short extension of time to confer and file the submissions, due to difficulties obtaining instructions.  That extension was not agreed, which meant that there was effectively no time for the parties to confer, and very limited time for Self Care to prepare its submissions on those issues.  In those circumstances, Self Care did not address the matters it now wishes to address briefly. 

Further consideration by senior counsel has raised the substantive matters set out in our email of 29 September 2021, which are the subject of the proposed short supplementary submission. 

20    Allergan disputed that Self Care had sought Allergan’s agreement to an extension of time in relation to the timeframe to confer in relation to the orders. It is unnecessary to reach a conclusion about that issue.

21    We do not consider leave should be granted to Self Care to make a further short submission to the effect contended, namely that:

(1)    the declarations and injunctions consequent on the ACL case should reflect the fact that the findings of the Court concerning the efficacy representations are limited to the use of the phrase “instant Botox® alternative” in a particular context, in particular, where reference is also made to the long term effect of Inhibox; and

(2)    the form of the injunctions should take account of the fact that many uses of phrases incorporating the words “Botox alternative” found to be permissible by the primary judge were not appealed and remain permissible.

22    Self Care was represented by experienced senior counsel and solicitors and was provided a reasonable time to make submissions. It is inconsistent with the case management objectives in Pt VB of the Federal Court of Australia Act 1976 (Cth) (FCA Act) (requiring the resolution of this dispute as quickly, inexpensively and efficiently as possible) for Self Care to attempt to re-open argument because the new representatives apparently consider different or further argument ought to have been put to the Court by their predecessors. Any discretion to allow re-opening of argument must be exercised in a way that best promotes the overarching purpose: see s 37M FCA Act. There will be cases where it is appropriate to receive supplementary submissions, but this is not one of them. This is a sufficient basis to refuse leave.

23    In any event, we are not satisfied that the submissions which Self Care wishes to put forward would result in any meaningful alteration to the declarations and injunctions proposed.

24    Accordingly, leave to make a short supplementary submission is refused.

Do the Court’s reasons contain a ‘slip’ which should be corrected?

25    In its submissions in relation to the appropriate declarations and injunctions, Allergan contended that the Full Court made a slip in its reasons in Allergan No 1 at [57]. It is necessary also to set out part of [56] (emphasis added):

[56]     ... The respondents submitted that the primary judge adopted the ordinary meaning of the word “alternative” and correctly concluded that, by use of the word, Self Care was indicating that its product was different to Botox. It was submitted that the word “alternative” dispelled any possible conclusion that there was an association or approval.

[57]     This submission cannot be accepted. The word “alternative” merely describes something as another possibility or choice. Self Care’s argument that “alternative” necessarily implies differentiation, accepted by the primary judge, is only helpful if one also identifies what is differentiated. The word “alternative” implies that the products are different, and there is a choice between them, but it does not necessarily imply that the trade source is different. Given the similarities in the words PROTOX and BOTOX, the labelling of PROTOX as “instant Botox® alternative” implies an association in the trade source of the different products. The inferences which might be drawn from use of a word such as “alternative” or “substitute” (Yeast-Vite) depends on context and there may well be more than one available inference to draw. Describing a product as an “alternative” to another product does not, of itself, say anything about who is offering the choice. The primary judge did not address whether he considered the use of the word “alternative” implied that the different products were not connected to the same source; rather, his Honour concluded that the word implied that the products were different. The latter implication must be accepted, but it is not clear that a single source would not be offering two product alternatives. The use of the word “alternative” does not necessarily negative use as a trade mark.

26    Allergan submitted that the reference to PROTOX was intended to be a reference to INHIBOX. Self Care submitted, by reference to Burrell v The Queen [2008] HCA 34; (2008) 238 CLR 218, that the power to correct an error arising from an accidental slip or omission directs attention to what the Court did or intended to do and does not permit reconsideration or alteration of the substance of the result reached and recorded. Self Care submitted that the reference to PROTOX was in error because it was the INHIBOX product which was labelled “instant Botox® alternative”, not its Protox product. Self Care submitted that the Court was not, at [57], undertaking a comparison of the words INHIBOX and BOTOX.

27    The reasons at [45] to [70] make clear that the Court was examining the use of the phrase “instant Botox® alternative” with Self Care’s INHIBOX product. In the fifth sentence of [57], however, the reasons refer to the use of “instant Botox® alternative” on the PROTOX rather than the INHIBOX product. At one level, this involves a clear slip as the phrase “instant Botox® alternative” was used on the INHIBOX and not the PROTOX product. Relevantly, the primary judge had rejected Self Care’s denial that Ms Amoroso had chosen names including PROTOX and INHIBOX because of the closeness of the words to the BOTOX Mark, saying that the use of “box” and “ox”, given the fame of BOTOX, were “obviously to leverage off that fame by the reference”: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530 at [71] to [73]. PROTOX and INHIBOX use “ox” and “box” respectively as part of this intended leveraging off the reputation of BOTOX. On this basis, while it can be inferred that the Court would have reached the same conclusion in [57] if it had compared INHIBOX and BOTOX and the use of “instant Botox® alternative” on that product, that is not the point. It cannot be inferred that, in [57], the Court was undertaking a comparative exercise by reference to INHIBOX rather than PROTOX. The error, accordingly, is not now amenable to correction because it cannot be concluded that, in the fifth sentence in [57], the Court was in fact comparing INHIBOX and BOTOX, as opposed to PROTOX AND BOTOX.

Stay

28    In their email sent on 29 September 2021, Self Care’s solicitors indicated that the parties agreed to certain orders for a stay. We accept this consent position as being appropriate.

Conclusion

29    The declarations and injunctions which the Court now makes are as follows:

The Court declares that:

(1)    by the use of the mark PROTOX on or in relation to the respondents’ Protox Product (as identified in paragraph 20 of the Second Further Amended Statement of Claim (2FASOC)), each of the first respondent and the second respondent has infringed Australian Registered Trade Mark Number 1578426 for “BOTOX” (the BOTOX Mark) under s 120(1) of the Trade Marks Act 1995 (Cth) (the TM Act);

(2)    by the use of the mark “instant Botox® alternative” on or in relation to the respondents’ Inhibox Product (as identified in paragraph 29C of the 2FASOC), each of the first respondent and the second respondent has infringed the BOTOX Mark under s 120(1) of the TM Act;

(3)    the sale or promotion by each of the first and second respondent of the Inhibox Product by reference to the statement “instant Botox® alternative” involved conduct, in trade or commerce, misrepresenting that:

(a)    the respondents’ Inhibox Product (and its use) is of at least the same standard or quality as the Botox Product in respect of the length of time the results would last after treatment has ceased; and

(b)    the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses and/or benefits as the Botox Product, in respect of the length of time the results would last after treatment has ceased,

and, accordingly, each of the first and second respondents has thereby contravened each of ss 18, 29(1)(a) and 29(1)(g) of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL).

The Court orders:

(1)    pursuant to s 126(1)(a) of the TM Act that each of the first and second respondents, whether by itself, its directors, officers, employees, servants, agents or otherwise, be restrained from using as a trade mark, without the licence or authority of the applicants, the word Protox, the phrase “instant Botox® alternative”, or the BOTOX Mark, or any substantially identical or deceptively similar mark in relation to the goods or services in respect of which the BOTOX Mark is registered.

(2)    pursuant to s 232 of the ACL that each of the first and second respondents whether by itself, its directors, officers, employees, servants or agents or otherwise, be restrained from selling or promoting the respondents’ Inhibox product by reference to the statement “instant Botox® alternative” or otherwise representing:

(a)    in contravention of each of s 18 and s 29(1)(a) of the ACL, that the respondents’ Inhibox Product (and its use) is of the same standard or quality as the Botox Product in respect of the length of time the results last after treatment has ceased; or

(b)    in contravention of each of s 18 and s 29(1)(g) of the ACL, that the respondents’ Inhibox Product (and its use) has the same performance characteristics, uses or benefits as the Botox Product, in respect of the length of time the results last after treatment has ceased.

(3)    The respondents file and serve any application for a stay of these orders together with any affidavit in support within 7 days of the making of these orders.

(4)    It be ordered that Orders 1 and 2 of these orders do not take effect:

(a)    initially, for a period of 7 days from the date on which these orders are made; and

(b)    if a stay application is filed within that period, until the determination of that application or until further order.

Associate:

Dated:    15 October 2021