FEDERAL COURT OF AUSTRALIA

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530

ORDERS

THE COURT ORDERS THAT:

1.    Within 14 days of these orders or such further period as may be allowed, the parties are to confer and bring in:

(a)    orders that dispose of the proceeding and, so far as relevant, deal with its further conduct, in accordance with the reasons published today;

(b)    orders that deal with the costs of the proceeding thus far;

(c)    proposed redactions of the reasons published today with reference to the suppression orders in the proceeding; and

(d)    failing agreement on the above, competing orders, redactions (if necessary) and short submissions in support of their respective positions.

2.    Until further order, the text of the reasons for judgment published today is to be published and disclosed only to the external lawyers (solicitors and counsel), including foreign lawyers, of the parties who may then disclose the substance of the reasons to their respective clients (the parties) without disclosing any facts or information in the reasons which may be the subject of suppression orders in respect of the evidence in the proceeding from which the facts or information is drawn.

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

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The appellant is to pay the respondent’s costs of the appeal as agreed or taxed.

3.    In terms of r 36.03(b) of the Federal Court Rules 2011, the time for the filing of a notice of appeal from these orders shall be 28 days after final orders are entered in proceeding NSD15/2017 as contemplated by order 1(a) of the orders in that proceeding made on 22 October 2020.

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

REASONS FOR JUDGMENT

STEWART J:

INTRODUCTION

Background

1    The eternal human interest in reducing the appearance of ageing underlies the disputes in these cases. The opposing parties have both respectively developed and promoted products with very different modes of action to attract customers who have this Sisyphean interest.

2    This litigation has spawned sprawling testimony and documents before the Court. Standing out amongst the vast number of exhibits are two short segments from the well-known television series and film, Sex and the City. In each, the character Samantha Jones tries to persuade Carrie Bradshaw to submit to treatment with Botox to lessen the appearance of wrinkles on her face and thereby to maintain her apparent youth despite her chronological age. The extracts were tendered as proof of the ubiquitous reputation of Botox.

3    The applicants – who have rights to BOTOX trade marks – contend that the respondents have sought to sell their products by unlawfully leveraging off the reputation of Botox. That includes by way of trade mark infringement, misrepresentations in contravention of the Australian Consumer Law (ACL) and passing off. The second applicant also appeals against a decision of a delegate of the Registrar of Trade Marks to allow one of the respondents’ trade marks – which includes the word PROTOX – to proceed to registration. The respondents, by way of cross-claim, contend that certain of the applicants’ trade marks should be removed from the register or restricted to a smaller class of goods.

4    It is useful to make a note on nomenclature at the outset. Where in these reasons reference is made to a word as a trade mark, e.g., BOTOX and PROTOX, the word is in capital letters. However, when a word is used as the name of a product, it is used as a proper noun and hence has only the first letter capitalised, e.g., Botox and Protox. That, at least, is the approach that has been sought to be followed.

The applicants, their product and their trade marks

5    Allergan Inc is the manufacturer of Botox and the owner of trade marks including for the word BOTOX. BOTOX is an invented portmanteau word, derived from the active ingredient in Botox, namely botulinum toxin, type A. It was first registered as a word trade mark in the United States of America in 1990.

6    Allergan Australia Pty Ltd is the Australian subsidiary of Allergan Inc. It is the sponsor of the Botox products on the Australian Register of Therapeutic Goods and (the applicants contend) is the authorised user of the BOTOX marks in Australia.

7    I shall refer to Allergan Inc and Allergan Australia together simply as Allergan save where it is necessary to distinguish between them.

8    The Botox product is a particular botulinum toxin type A purified neurotoxin complex, supplied as a powder in vials of 50 ml/units, 100 ml/units and 200 ml/units. In use, the product is reconstituted with sterile saline for injection, usually intramuscularly. Botox is used for numerous therapeutic indications (including for the treatment of overactive bladder, cervical dystonia and hyperhidrosis) as well as the following cosmetic indications: temporary improvement in the appearance of upper facial rhytides – glabellar lines (frown lines), lateral canthal lines (crow’s feet) and forehead lines in adults. The present case is concerned with the cosmetic indications.

9    When Botox is injected into the muscle it is expected that most of the Botox will remain close to the site of injection. The core neurotoxin is surrounded by accessory proteins which protect it as it enters the body. The Botox core then dissociates from its accessory protein and enters the nerve cell. Botox blocks the release of acetylcholine, which is a chemical released by the nerve cells to send signals to other cells. When the release of acetylcholine is stopped, muscle contraction cannot occur.

10    Once the Botox is injected, it inhibits the nerve and within roughly 50 hours (or about 2-3 days) the Botox is removed from the body by passing urine. Over time the nerve heals itself and starts releasing acetylcholine again. This gives movement back to the muscle.

11    The effects of Botox may take a few days to manifest. It has effect by relaxing the muscles at the site of injection. Full results may take up to 10-14 days to be seen. The effects will usually last up to four months, then dramatically decrease. Treatment may be repeated every six months.

12    Botox does not moisturise or tighten the skin. People who have been treated with Botox may feel that their skin looks smoother, shiny and moisturised after the treatment due to the fact that the underlying muscle has been relaxed and cannot move. There is, however, no clinical data to show that Botox has these effects on the skin. Important for present purposes is that Botox has a therapeutic effect, i.e., it has a physiological or pharmacological action.

13    In Australia, Botox has been supplied for certain therapeutic indications under the BOTOX marks since November 1993 when approval by the Therapeutic Goods Administration (TGA) was granted. In 2002, Botox received approval for cosmetic indications and it has been available for sale in Australia for that purpose since about April 2002.

14    In Australia, Botox must be administered by a registered medical practitioner (or registered nurse under the direction of a registered medical practitioner) or other authorised health professional under the relevant state or territory legislation. Allergan supplies Botox to approved medical practitioners and other health professionals that hold an account with Allergan Australia. Botox is not advertised or supplied directly to retail customers as the advertising of therapeutic goods, and poisons, is prohibited: s 42DL, Therapeutic Goods Act 1989 (Cth) (TG Act).

15    The evidence is that one 100 ml vial of Botox is sold for approximately $500 (excl. GST). As the product is reconstituted in saline, one vial can apparently be used for more than one treatment. A single treatment, which is to say five or six injections in a single site (e.g., frown lines), including the health professional’s charges, is in the range of $200-$720.

16    In Australia, Allergan Inc is the registered proprietor of the following pending or registered Australian trade marks (which I will refer to as the BOTOX marks):

(1)    Trade Mark No. 551279, for the word BOTOX, registered (court action pending) in class 5 and having a priority date of 28 February 1991;

(2)    Trade Mark No. 860785 for the composite mark , registered in class 5 and having a priority date of 14 December 2000 (the 785 mark);

(3)    Trade Mark No. 860786, for the word BOTOX, registered (court action pending) in class 5 and having a priority date of 14 December 2000 (the 786 mark);

(4)    Trade Mark No. 1008655 (International Registration 826203) for the word BOTOX, registered (court action pending) in class 3 and having a priority date of 8 March 2004 (the 655 mark); and

(5)    Trade Mark No. 1578426 for the word BOTOX, registered (court action pending) in classes 1, 3, 5, 9, 10, 16, 35, 41, 42, 44, and 45 and having a priority date of 4 September 2013 (the 426 defensive mark).

17    Each of the class 5 registrations is in respect of pharmaceuticals. Relevant to the claim for trade mark infringement under s 120(2) of the TM Act is that the 785 and 786 marks include the following goods: “Pharmaceutical preparations for the treatment of … wrinkles …”.

18    The class 3 registration in respect of the 655 mark is for “cosmetics, face creams and lotions; skin creams and lotions.”

19    The class 3 registration in respect of the 426 defensive mark is for the following:

After sun lotions and preparations; after-shave lotions and creams; anti-ageing creams; anti-wrinkle cream; anti-cellulite preparations; antiperspirant deodorants and preparations; aromatherapy preparations; artificial tanning preparations; astringents for cosmetic purposes; barrier creams and preparations for the skin; bath salts, crystals, oils, lotions and preparations (not medicated); bath soap; beauty care preparations; beauty preparations; beauty care products; beauty products; beauty creams; bleaching preparations (decolourants) for cosmetic purposes; bleaches in the form of creams; bleaching preparations for the hair; body care preparations (non-medicated); body lotions (other than for medical purposes); body moisturisers; body scrubs; breath fresheners; bubble bath preparations; cleaners (preparations) for cleaning surgical instruments; cleaning oils for cosmetic purposes; cleaning preparations; cleaning preparations containing sterilising substances; cleaning preparations for medical and laboratory instruments; cleaning preparations for personal and sanitary use; cleaning preparations for the hands and the skin; cleansers for the face; cleansing facial masks and lotions; cleansing products for removing make-up; collagen preparations for cosmetic application; colouring preparations for cosmetic purposes; conditioners for use on the hair; cosmetic acne creams; cosmetic articles for personal use; cosmetic articles and preparations; cosmetic kits; cosmetic skin care products; cosmetics; deodorant preparations for personal use; deodorants for the body; depilatories; depilatory preparations and products; depilatory wax; dermatological cosmetic preparations; dermatological preparations (other than medicated); detergents having anti-bacterial and disinfecting properties (other than for medical use or for use in manufacturing processes); essential oils; essential oils for cosmetic purposes; exfoliants for the care of the skin; eye make-up; eye wrinkle lotions; facial care products (cosmetic); fragrances; hair care products; hair conditioner; hair colouring preparations; hair cosmetics; hair cream and lotions; hair gel and mousse; hair permanent treatments; hair perming products; hair preparations; hair products; hand cream; impregnated cloths for cosmetic use; impregnated pads for removing make-up; lipsticks; lip gloss; lip pencils and liners; make-up; make-up preparations and products; make-up removing preparations; massage oils and creams (not medicated); moisturisers (cosmetics); mouth washes (not for medical purposes); nail care preparations; nail preparations (cosmetics); non-medicated toiletries; perfumes; perfumery preparations and articles; preparations for care of the teeth; products for cleaning; sanitary preparations (other than for medical purposes); serum (cosmetic preparations); shampoos; shaving soap, creams and gels; skin care preparations and creams (cosmetic); skincare cosmetics; soaps; soap products; sun screen preparations (cosmetics); suntan preparations (cosmetics); tanning preparations (cosmetics); toilet preparations; toiletries; toothpaste

20    The relevance of the details of the class 3 registration, as opposed to all the other classes of registration of the 426 defensive mark, is that the respondents’ challenge to the registration by way of the cross-claim is only to class 3.

21    As dealt with further at [117]-[153] below, sales of Botox have been considerable and BOTOX has achieved significant success as a trade mark and brand, both internationally and in Australia. As at the date of commencement of the proceedings, Botox had a significant and valuable reputation amongst consumers in Australia, including as a highly effective injectable product in reducing the appearance of wrinkles.

22    Allergan maintains a distinction in its business model between the use of Botox for medicinal therapeutic indications and for cosmetic indications. In respect of the cosmetic indications for the Botox product, Allergan uses the website www.botoxcosmetic.com which provides information about the product when used for cosmetic purposes. A different website, www.botox.com, provides information about all uses of the Botox product. That website displays a separate tab to redirect browsers seeking information on its cosmetic uses to the Botox cosmetic website.

23    Consistent with the distinction between the two principal different uses of Botox, Allergan Australia has different sales teams, marketing strategies and marketing material for the Botox product where it is sold for medicinal therapeutic indications and for cosmetic indications. Sales and marketing teams for therapeutic indications target medicinal requirements and treatment of disease as opposed to sales and marketing for cosmetics which focus on the desire for the temporary improvement of appearance. Allergan Australia keeps its business units, including its lists of account holders and records of sales, for the two principal different uses of Botox separate.

24    Other botulinum toxin type A products with therapeutic and cosmetic indications similar to Botox are available in Australia (and overseas), including a product sold under the trade mark DYSPORT manufactured by Ipsen Biopharm Ltd and another under the trade mark XEOMIN manufactured by Merz Pharma GmbH & Co. KGaA.

The respondents, their products and their trade marks

25    Self Care IP Holdings Pty Ltd and Self Care Corporation Pty Ltd are companies incorporated in Australia. When it is not relevant to distinguish between them, I shall refer to them together simply as Self Care. Ms Sonia Amoroso, the third respondent, is a citizen and resident of Australia. Since 24 November 2008, Ms Amoroso has been the sole director and secretary of Self Care IP. Since 14 July 2008, Ms Amoroso has been the sole director and secretary of Self Care Corp.

26    Ms Amoroso was Self Care’s principal witness. She deposed to several affidavits which were read as her evidence in chief, and she was cross-examined for approximately two days. She was a careful witness, by which I mean she was cautious not to be caught out or to give matters away in cross-examination; she required that the questions put to her be clear and understandable by her. I did not get the impression that she was trying particularly to assist the Court, but I also did not get the impression that she was dishonest in her answers. I accept her evidence as honest and, for the most part, as accurately reflecting the facts as they occurred. Where I have reservations as to the reliability of her evidence, I will address those directly. I otherwise accept her evidence.

27    Ms Amoroso founded the Self Care business in about 2008. Self Care supplies cosmetic products, including, in particular, topical anti-wrinkle skincare products under the trade mark FREEZEFRAME.

28    Ms Amoroso came up with the FREEZEFRAME brand and decided that it would be used as an umbrella brand and that various products would form part of the brand. With the Freezeframe products, Ms Amoroso was interested in developing products that could be used as an alternative to botulinum toxin injections.

29    Self Care’s first flagship product was called Freezeframe with Inhibox which was launched in July 2009. The product enjoyed significant retail success.

30    Over subsequent years, Self Care became an award-winning and successful Australian business by reference to the FREEZEFRAME brand. Over time, more than 30 products were developed and sold under that brand, including five that are the subject of these proceedings. Each is dealt with in detail below (at [62]-[106]).

31    Since at least October 2014, Self Care Corp has been the registered owner of the domain name www.freeze-frame.com.au (Freezeframe website), which it uses to promote its Freezeframe range of products.

32    Since at least July 2015, Self Care Corp has been the registered owner of the domain name www.self-care.net.au (Self Care website). Since at least around August 2017, the Self Care website has automatically redirected to the Freezeframe website.

33    In October 2014, Self Care IP lodged an application to the Australian Trade Marks Office to register the trade mark FREEZEFRAME PROTOX. The goods and services in respect of which the FREEZEFRAME PROTOX trade mark is applied for are “anti-ageing serum, anti-wrinkle serum” in class 3.

34    Allergan opposed the registration of the mark, but that opposition was dismissed by a decision of a delegate of the Registrar of Trade Marks on 19 September 2017. That decision is the subject of the appeal in proceeding NSD1802/2017 referred to below (at [340]-[413]).

35    Self Care has a number of other trade marks that are either registered or pending registration, each of which has the word FREEZEFRAME followed by a particular product name. These trade marks thus, relevantly, include FREEZEFRAME NIGHT and FREEZEFRAME BOOST.

The proceedings

36    There are two proceedings that were heard together. There were orders that the evidence in one proceeding is evidence in the other.

37    The parties helpfully agreed a detailed statement of facts which constitutes a substratum of common ground facts which has to be supplemented by factual findings. In that respect, four factual witnesses were cross-examined and two expert witnesses gave evidence concurrently during the course of which they were also cross-examined. There was evidence from several other witnesses, by way of affidavit, who were not required for cross-examination.

NSD15/2017

38    In proceeding NSD15/2017, Allergan Australia is the first applicant and Allergan Inc is the second applicant. Self Care IP is the first respondent, Self Care Corp is the second respondent, and Ms Amoroso is the third respondent.

39    Allergan claims that Self Care:

(1)    has infringed the BOTOX registered trade marks by use of the word BOTOX in various forms (including, e.g., “instant Botox alternative”, “overnight Botox alternative” and “long term Botox alternative”) on the Freezeframe products and packaging, as well as in promotion and advertising contrary to the Trade Marks Act 1995 (Cth) (TM Act). It also claims that use of the trade mark PROTOX is deceptively similar to and infringes the BOTOX mark;

(2)    has contravened the ACL by making representations of affiliation with the applicants or their Botox product (the affiliation representations) and representations concerning the efficacy of the respondents’ products (the efficacy representations);

(3)    has engaged in passing off; and

(4)    has infringed various sections of the TG Act.

40    Allergan contends that Ms Amoroso authorised the infringements of the BOTOX marks, procured or entered into a common design as a joint tortfeasor with Self Care to infringe the BOTOX marks and to engage in passing off, and aided, abetted, counselled, or procured Self Care’s conduct in contravention of the ACL. Allergan relies on Ms Amoroso’s close involvement in the creation, promotion, sale and offer for sale of Self Care’s products.

41    In respect of the trade mark infringement, ACL and passing off claims, Allergan seeks declarations, injunctions, equitable compensation and damages, including exemplary damages, or an account of profits. In respect of the trade mark infringement claim, Allergan also seeks delivery up of the relevant stock of products, packaging and promotional and advertising material. In respect of the TG Act claim, Allergan seeks injunctions.

42    In December 2017, it was ordered that the quantification of the loss and damage suffered by Allergan be heard separately from and after all questions of liability. The questions of liability were identified as including:

(1)    Self Care’s liability, if any, for particular heads of loss or damage, the burden falling on Allergan to prove at least one instance of the loss or damage claimed; and

(2)    Self Care’s liability, if any, for additional damages.

43    In summary, Self Care says the following with respect to the claims.

44    With regard to the trade mark infringement claims, it says that there has been no infringement of Allergan’s BOTOX trade mark because Self Care’s use of that word on its products is not use “as a trade mark” within the meaning of s 120 of the TM Act. It says that the function of the word BOTOX on the packaging or in the advertising of Self Care’s creams is to say what the product is not – it is not Botox, but an alternative to Botox; it is not an expensive injectable you receive from your medical practitioner, but a modestly priced self-administered cream. It says that Self Care’s branding shows the origin of the goods to be Self Care. It says that the function of the use of the word BOTOX is to compare and contrast its goods to the goods of another trader, which contrast is magnified by the use of the ® symbol with the word BOTOX. Self Care also says that PROTOX is not used “as a trade mark” and is not deceptively similar to BOTOX because the mark is used only in combination with the word FREEZEFRAME.

45    With regard to the ACL claims alleging affiliation and passing off, Self Care says that there is no doubt that consumers associate the word BOTOX with an injectable product used to reduce the appearance of wrinkles. It says that Self Care’s creams/serums are presented as products that reduce the appearance of wrinkles, but explicitly as a “Botox alternative”. It says that the word “alternative” is powerful enough in itself to tell all reasonable consumers that the products are not Botox and are distinct from Botox and the makers of Botox.

46    Self Care says that that distinction from Botox and the makers of Botox is reinforced by other aspects of the context, including Self Care’s own branding on its creams and in its advertising (in which FREEZEFRAME is always prominent), the character of the goods as creams rather than a formulation to be injected, the method of administration being by the consumer themselves rather than by a medical practitioner, and a substantial difference in price. They say that a consumer could not reasonably think that Self Care’s products were affiliated with the makers of Botox, or that the products were in fact Allergan’s goods.

47    With regard to the ACL claims alleging misleading representations about the efficacy of Self Care’s creams, Self Care says that there is a problematic lack of clarity in Allergan’s case in this respect. It says that the claims should be rejected either because the alleged representations are not conveyed by the product packaging or the advertising, or because such representations as were conveyed are not misleading and there were reasonable grounds to make them. In particular, it relies on a number of in vivo studies which, it says, demonstrate that Self Care’s creams reduce the appearance of wrinkles, which is the central message about efficacy.

48    With regard to the claims seeking injunctions against the alleged commission of offences under the TG Act, Self Care says that Allergan has no standing to prosecute criminal offence proceedings or civil penalty proceedings under the TG Act, and that it has not done so. It says that Allergan’s invocation of the exceptional jurisdiction of a civil court to restrain by injunction the commission of an offence should be rejected, including because Allergan has no standing to seek such an injunction and, in any event, there is no contravention of the TG Act because Self Care is not advertising therapeutic goods.

49    Self Care IP and Self Care Corp, as cross-claimants, allege that Allergan has sought to extend its trade mark rights beyond the field of actual use of the trade mark in relation to injectable anti-wrinkle products, to a different and broader field of skin-care creams by way of the class 3 goods specified for the 655 mark and the 426 defensive mark (see [17]-[19] above for the relevant specified goods). It is claimed that those specifications are not valid. It is accordingly sought by Self Care that the 655 mark in relation to those goods be removed and for the 426 defensive mark to be cancelled.

50    With regard to the claims against Ms Amoroso, she says that her actions relevant to the proceeding are squarely within her roles as director and officer of Self Care. She says that they involve, in particular, making and participating in decisions concerning the marketing of Self Care’s products and the claims made about them in marketing materials. Ms Amoroso accepts that her role involves having ultimate responsibility over the operations of Self Care, including over what goes out to consumers and the public, although she is not involved in every decision.

51    Ms Amoroso says that the activities of Self Care of which Allergan complains are squarely activities within the ordinary course of Self Care’s business, which is the supply to the Australian market of topical cosmetics. She says that this is not a case in which she caused Self Care to divert from the usual course of its business.

NSD1802/2017

52    In proceeding NSD1802/2017, Allergan Inc, as appellant, appeals from a decision of a delegate of the Registrar of Trade Marks to allow Self Care IP’s Trade Mark Application No. 1653383 for the words FREEZEFRAME PROTOX to proceed to registration in respect of goods in class 3 (being anti-aging serum and anti-wrinkle serum). Allergan Inc raises ss 42(b), 44, 58, 59, 60 and 62A of the TM Act as grounds of opposition.

53    In summary, Self Care says that each of the numerous grounds on which Allergan opposes the registration of FREEZEFRAME PROTOX ought to be rejected, including because its trade mark is not misleadingly similar to the word BOTOX.

SELF CARE’S MARKET, PRODUCTS AND PACKAGING

The market

54    Ms Amoroso gave evidence that in her experience people who are concerned to reduce the appearance of wrinkles fall into two separate markets, those who are prepared to undergo procedures such as injections which may be painful, invasive and involve the risk of potentially serious side-effects, and those who are interested in the use of anti-wrinkle creams and lotions. Obviously, there are people in the first category who will also use products of interest to the second category.

55    Ms Amoroso also accepted in cross-examination that the market can be split in three ways, namely those who use injectables such as Botox, those who are undecided about whether they will use injectables and those who will not use injectables.

56    In Ms Amoroso’s experience, the term Botox (or botox) is most frequently used to refer to any brand of botulinum toxin injection and not necessarily the particular product traded by Allergan under the BOTOX name. Thus, people refer to “having Botox” even when they are having a different brand of botulinum toxin injection. BOTOX is to a significant degree like marks such as HOOVER, XEROX or BAND-AID which have gained use to describe a whole category of product rather than specifically a particular brand within the category. Ms Amoroso was not challenged on this evidence, and I accept it.

57    The Freezeframe range of products has been sold to retail outlets such as department stores Myer and David Jones and retail chemists such as Priceline, Terry White Chemists, My Chemist and Chemist Warehouse, and to some online stores such as Adore Beauty and AMCAL Pharmacy Online.

58    Self Care’s FREEZEFRAME brand has many competitors in the skincare market. The competitors specialise in cosmetic creams and lotions. They do not manufacture or distribute anti-wrinkle injections. There is no brand which has a skincare product such as skin creams or lotions as well as botulinum toxin injections.

59    Ms Amoroso exhibited photographs of typical in-store displays for the sale of Freezeframe products. These show the whole range of Freezeframe products being displayed together where the common branding is obvious. The same is true of the sale of the products on the Freezeframe website – although each product has its own name, some more obviously incorporating the name FREEZEFRAME than others, all appear clearly and unmistakably within the Freezeframe range. Similarly, products available for sale on the Priceline website are all clearly indicated as being Freezeframe products.

60    Ms Amoroso accepted that some clinics that provide medical treatments also provide cosmetic moisturising products. But, she said that FREEZEFRAME branded products are not sold at such clinics. She was not challenged on that evidence, and I accept it.

61    The Freezeframe range of products has been extremely successful – both in terms of annual revenue and in product units sold. It has been particularly successful at Priceline, which is one of the biggest beauty retailers in Australia.

Protox product

62    Since the second half of 2014, Self Care has caused to be manufactured and sold in Australia a skincare product which I will refer to as the Protox product. It is sold in a 20 ml tube which is packaged in an elongated box. The packaging includes the word PROTOX prominently on its own, as well as the word FREEZEFRAME® prominently on its own. It also includes the phrases “prolong the look of Botox®” and “clinically proven to prolong the effect of Botox®”.

63    The packaging relevantly looks like this:

64    The tube itself has the words PROTOX and FREEZEFRAME® in close proximity and the phrase “prolongs the skin smoothing effect of Botox® injections”.

65    Inside the Protox product packaging is a product information sheet which contains information about several of Self Care’s products, including the Protox product. Generally, the information sheet prominently displays the word FREEZEFRAME and the phrase “injection free alternatives”.

66    At various times since October 2014, Self Care has sold the Protox product in Australia to various retail outlets and selected pharmacies, as well as through the Freezeframe website. The recommended retail price of the Protox product is around $69.00, including GST.

67    Since April 2015, advertisements that included the Protox product appeared in publications such as the Body+Soul supplement, Woman’s Day and Marie Claire. Also, an article or editorial discussing “cosmeceuticals” with accompanying mini-features of select products in the form of panel advertisements was published in Body+Soul supplements that were included in a number of newspapers in the period between November 2014 and October 2016. The mini-features, or advertisements, on Protox included the following statements:

(1)    “Freezeframe Protox ($69, 1800 662 686), can make Botox last longer, and reduce wrinkles even if you haven’t had injections”

(2)    “Get smoother skin without Botox”

(3)    “IMAGINE A SERUM THAT MAKES BOTOX LAST LONGER

Introducing freezeframe Protox, the anti-aging serum so powerful, it not only gives you a dramatic skin smoothing without the use of Botox, it can actually make the visual effects of Botox last up to three times longer. See smoother, fresher, younger-looking skin in as little as two-to-four weeks. Call 1800 662 686 or visit freeze-frame.com

*Botox is a registered trademark of Allergan, Inc.”

(4)    “MAKE BOTOX LAST Imagine a serum that makes Botox® last longer”

(5)    “Better without Botox Freezeframe Protox is clinically proven to make Botox look better and last up to three times longer, but it’s the dramatic results this power serum can produce without Botox that has everyone talking. On its own, Freezeframe Protox has a strong Botox-like effect and is proven to reduce deep wrinkles and smooth skin in just 15 days”.

68    From about October 2014, the Protox product together with the statements below have been included on the Freezeframe website at various times, for various periods of time:

(1)    “At Last! A serum that can prolong the look of Botox®”

(2)    “THE MOST POWERFUL BOTOX® ALTERNATIVE EVER DISCOVERED”

(3)    “Introducing freezeframe PROTOX, the anti-aging serum so powerful, it not only gives you dramatic skin smoothing without the use of Botox, it can actually make the visual effect of Botox injections last up to 3 times longer!”

(4)    “The Accidental Botox Alternative”

(5)    “which could produce a Botox-like visual effect when applied topically to the skin”

(6)    “for the first time ever cosmetic ingredients were tested to see what effects they had on skin that has been administered Botox injections”

(7)    “freezeframe PROTOX’s peptide complex was proven to make the visual skin smoothing effect achieved from Botox injections last up to 3 times longer than they would on their own!”

(8)    “it actually made the visual effect, that lovely smooth skin look achieved with Botox, look even more dramatic than injections alone”

(9)    “In fact, skin looked better 6 months after injections than at 2 months, when Botox injections are still at their peak. Botox injections alone would have worn off by then”

(10)    “Look better without Botox, or make Botox look better for longer – the power is now in your hands!”

(11)    “the ultimate proof: freezeframe PROTOX is so powerful, it can even make Botox look better”

(12)    “freezeframe PROTOX intensified the skin smoothing look achieved by Botox, and had prolonged it even after 6 months.”

69    Ms Amoroso came up with the word PROTOX. She intended it to be a play on words, where PRO refers to prolonging and TOX refers to botulinum toxin. She intended the product to be part of the Freezeframe range of products and to be referred to as FREEZEFRAME PROTOX. She expressly disputed that the play on words was intended to reference Allergan’s product Botox, as opposed to the generic understanding of “botox”, namely botulinum toxin.

70    Ms Amoroso said that she decided to use a capital B for Botox in the packaging and advertising to acknowledge the trade mark owner, Allergan, and to avoid the issues that she had had with Allergan during her time at Cat Media Pty Ltd (Cat Media). She was the founder of Cat Media and its managing director from March 1997 until December 2006 when she sold her interest in it.

71    Ms Amoroso denied that she had chosen names like BITOX (when she was at Cat Media), PROTOX and INHIBOX because of the closeness to the BOTOX mark or to play on the name BOTOX. She said that in choosing those names she was interested in communicating an alternative to botulinum toxin, but not that her product had any connection with Botox. She said that the PROTOX name was intended to convey that the product prolongs the effect of botulinum toxin.

72    It might be thought that that is rather undermined by the use of the ® symbol and the recordal that BOTOX is the registered trade mark of Allergan on the product packaging and in some of the advertising. However, in view of the general understanding in the market that “botox” refers to anti-wrinkle injections that are not necessarily Allergan’s product, and Ms Amoroso’s prior experience of Allergan complaining of Cat Media having appropriated its BOTOX mark, she could have had the intention to refer to botulinum toxin injections generically and to wish to take the precaution to specifically acknowledge that BOTOX is Allergan’s trade mark.

73    In email correspondence with people making a video commercial in 2009 when Self Care’s first product, Freezeframe with Inhibox, was launched Ms Amoroso said that “box” or “ox” in the name was a play on “botox” and that she thought that the target market would get the inference. She says that by “botox” she meant botulinum toxin, not the mark BOTOX, which, she says, is shown by the fact that she did not use capital letters. I do not accept that evidence. It strikes me as a convenient reconstruction. Given the fame of BOTOX, the intention was obviously to leverage off that fame by the reference. That is the inference that the target market would “get”.

74    As recorded above, the Protox product was initially advertised and promoted under the lead message that it could be used to prolong the effect of Botox. That was found to be unsuccessful because, on Ms Amoroso’s understanding and assessment, Self Care’s customers do not as a rule use Botox and were accordingly not interested in a product for prolonging its effects. Therefore, the lead messaging was switched to Protox being an alternative to Botox.

75    Where the term “Botox alternative” is used in a statement, Ms Amoroso’s understanding and intention in relation to the meaning of that term was that the product is something that the customer would use themselves instead of using Botox. That is, it is a product which does not involve injections of botulinum toxin.

Inhibox product

76    Since around July 2009, Self Care has promoted, sold or offered for sale, in Australia a skincare product which I will refer to as the Inhibox product. It is sold in 10 ml units in a hard plastic syringe-like applicator.

77    Until about February 2017, the applicator was packaged in a box containing a clear plastic window through which one can see the syringe-like applicator. The packaging included the words FREEZEFRAME and WITH INHIBOX appearing separately as well as together. It also included the phrases “instant Botox® alternative”, “Clinically proven to erase wrinkle appearance in 5 minutes” and “The world’s first Instant and Long Term Botox® Alternative”.

78    Since about September 2016 to date, the applicator has also been packaged in a different box without a window. The box prominently displays the words FREEZEFRAME and INHIBOX. It also includes the phrases “instant Botox® alternative”, “clinically proven to erase eye wrinkles & puffiness in 5 minutes” and “The original instant and long-term Botox® alternative”.

79    The current packaging relevantly looks like this:

80    Included in the old and the new packaging is a product information sheet which appears to be the same in each case and the same as the product information sheet for the Protox product.

81    Self Care has sold and offered for sale the Inhibox product in Australia to various retail outlets and pharmacies. The recommended retail price is about $89.00 including GST.

82    From at least October 2012 to date, the Inhibox product has been promoted and sold from the Freezeframe website.

83    From about October 2012, the Inhibox product together with the statements below have been included on the Freezeframe website at various times, for various periods of time:

(1)    “CLINICALLY PROVEN

INSTANT BOTOX® ALTERNATIVE

FREEZES WRINKLES INSTANTLY

REDUCES WRINKLES LONG TERM”

(2)    “Freezeframe with INHIBOX is the original Instant Botox® Alternative, clinically proven to erase wrinkle appearance under the eyes and on the forehead in just 5 minutes, whilst delivering up to 63.23% reduction invisible [sic] wrinkles in just 28 days”

(3)    “a topical alternative to Botox® injections”

(4)    “The original Instant Botox® Alternative, freezeframe with INHIBOX has been a number 1 seller all over the world”.

84    The original Freezeframe with Inhibox packaging (Exhibit A) includes the phrase “Stop Time – freezeframe”. Ms Amoroso did not agree that the intention of that phrase was to depict the idea of stopping the passage of time or stopping the ageing process. She said that FREEZEFRAME as a word was intended to give people the impression of being able to capture a point in time. That is because it is an instant product and is not a treatment as such; it does not have long-lasting effects. Ms Amoroso denied that the intention with Freezeframe was to evoke Botox in the sense of “freezing wrinkles”.

85    Ms Amoroso accepted that the syringe-like applicator for the Inhibox product had the intended implication that it is an alternative to a syringe: “a playful, novelty way of not associating with Botox but associating with an alternative to anti-wrinkle injections in a very playful and non-invasive way”.

Night (tube) product

86    From about February 2017 to date, Self Care has sold or offered for sale a skincare product in Australia which I will refer to as the Night (tube) product. This is to distinguish it from the Night (tub) product which is dealt with next. The Night (tube) product is sold in a 30 ml tube which is packaged in an elongated box. The packaging includes the word NIGHT prominently on its own, as well as the word FREEZEFRAME® prominently on its own.

87    The packaging also includes the phrases “No Needle Topical Micro Injection” and “overnight Collagen and Botox Alternative for advanced line filling and wrinkle relaxing” on the front and side of the box respectively.

88    On the back of the box, the following statements are included:

(1)    “Delivers the results of a collagen injection in 5 sleeps, and a Botox injection in 4 weeks!”

(2)    “Our famous NIGHT cream now includes 2 alternatives to doctor administered injections, with results clinically proven to visually match those of injections – topical line filling equivalent to a collagen injection* and topical wrinkle freezing with visible results rivalling Botox injections…

*American Society of Plastic Surgeons

Botox® is a Registered trademark of Allergan Inc.”

(3)    “See results equivalent to ... A Botox Injection in 28 days”.

(4)    “Better than injections? With the visual benefits of both a collagen injection and a Botox injection, our multi action formula works in 3 ways to freeze and fill wrinkles, as well as lift skin for a dramatically younger appearance – without needles or invasive procedures.”

(5)    “Our Topical Botox Alternative now delivers up to 94% wrinkle reduction in just 4 weeks!”

89    The packaging relevantly looks like this:

90    The tube itself has the words NIGHT and FREEZEFRAME® in close proximity and the phrase “Discover the overnight Botox® Alternative which relaxes wrinkles and rejuvenates skin whilst you sleep!”

91    Inside the Night (tube) product packaging is a product information sheet which includes the following statements:

(1)    “Overnight Collagen and Botox Alternative for advanced line filling and wrinkle relaxing.”

(2)    “Our famous NIGHT cream has been reinvented to include not 1, but 2 alternatives to doctor administered injections, with results clinically proven to visually match those of injections – topical line filling equivalent to a collagen injection and topical wrinkle freezing with visible results rivalling Botox injections ... American Society of Plastic Surgeons Botox® is a Registered trademark of Allergan Inc.”

(3)    “See results equivalent to... A Botox Injection in 28 days”.

(4)    “Better than injections? With the visual benefits of both a collagen injection and a Botox injection, our multi action formula works in 3 ways to freeze and fill wrinkles, as well as lift skin for a dramatically younger appearance – without invasive procedures”

(5)    “Our Topical Botox Alternative now delivers up to 94% wrinkle reduction in just 4 weeks!”

(6)    “Delivers the results of a collagen injection in 5 sleeps, and a Botox injection in 4 weeks!”

92    Since about February 2017 to date, Self Care sold or offered the Night (tube) product for sale at pharmacy retail outlets and on the Freezeframe website. The recommended retail price of the Night (tube) product is around $79.00, including GST.

93    From about February 2017, the Night (tube) product together with the statements below have been included on the Freezeframe website at various times, for various periods of time:

(1)    On the website banner:

(a)    “The same visible results of a COLLAGEN INJECTION 15 NIGHTS And a BOTOX® INJECTION 4 WEEKS”

(b)    “Collagen Injection 15 DAYS

Botox Injection 28 DAYS

Mini Face Lift 84 DAYS

2 x TOPICAL MICRO INJECTORS”

(2)    On the website:

(a)    “Imagine ... the same visible results of a collagen injection in just 15 sleeps*, and a Botox® injection in 4 weeks*! ...

*American society of plastic surgeons confirms results ...

*Results may vary. Botox® is a registered trade mark of Allergan Inc. freezeframe NIGHT has no association with any anti-wrinkle injection brand”

(b)    “New freezeframe NIGHT contains 2 Topical Micro Injection technologies, both clinically proven to visually match those of injections – topical line filling equivalent to a collagen injection and topical wrinkle freezing with visible results rivaling Botox Injections”

(c)    “What’s better than a topical alternative to wrinkle fillers? One formula that includes both an alternative to fillers and alternative to Botox Injections!”

(d)    “The same visible results of a COLLAGEN INJECTION 15 NIGHTS And a BOTOX® INJECTION 4 WEEKS

Reduces wrinkle appearance by as much as 94% in 28 days!”

94    Advertisements for the Night (tube) product featured in print advertising in 2017 which included the following statements:

(1)    “Imagine... the same visible results of a collagen injection in just 15 sleeps*, and a Botox® injection in 4 weeks*! …

*American Society of Plastic Surgeons – collagen injections deliver a 15% wrinkle reduction

*Botox is a Registered trademark of Allergan Inc.

*NIGHT actives can reduce the appearance of wrinkles by up to 96% as compared to 84% in one Botox study. Data on file. Refers only to the visible effects on skin surface”

(2)    “2 x TOPICAL MICRO INJECTORS Collagen Injection 15 DAYS Botox Injection 28 DAYS Mini Facelift 84 DAYS”

(3)    “New freezeframe NIGHT contains 2 Topical Micro Injection technologies, both clinically proven to visually match those of injections – topical line filling equivalent to a collagen injection and topical wrinkle freezing with visible results rivaling Botox Injections. But it’s the dramatic face lifting effects that have astounded customers and experts alike, with skin structure brought back to baby’s skin in less than 3 months.”

(4)    “What’s better than a topical alternative to wrinkle fillers? One formula that includes both an alternative to fillers and alternative to Botox Injections!”

95    In respect of the Night (tube) product, Ms Amoroso denied that her intention was to convey that the product would do as well as Botox; her intention was to convey that the product achieves a very high level of wrinkle smoothing which is comparable to Botox.

Night (tub) product

96    In or around 2009, Self Care developed a skincare product which I will refer to as the Night (tub) product. From about October 2012 to about March 2017, Self Care sold or offered for sale the Night (tub) product in a 30 ml glass jar/tub packaged in a cube-shaped box.

97    Inside the Night (tub) product packaging was a product information sheet.

98    Self Care sold the Night (tub) product in Australia to certain retail outlets and pharmacies. The recommended retail price was around $79.00, including GST.

99    Self Care promoted, sold or offered for sale the Night (tub) product in Australia on the Freezeframe website where the following statements were made at various times and for various periods of time:

(1)    “Overnight Botox® ALTERNATIVE!”

(2)    “LONG TERM BOTOX® ALTERNATIVE”

(3)    “This luxurious cream is clinically proven to relax facial expressions and reduce the appearance of wrinkles by up to 63.23% in just 28 days, providing a long term alternative to Botox® injections”.

Boost Product

100    From about March 2017 to date, Self Care has sold or offered for sale a skincare product in Australia which I will refer to as the Boost product. The product is sold in a 12 ml tube with a combined pump/rollerball applicator which is packaged in an elongated box.

101    The Boost product packaging prominently displays the words FREEZEFRAME and BOOST SERUM and contains the statement “Botox® alternative peptides provide targeted results on even the deepest wrinkles.”

102    The packaging relevantly looks like this:

103    The product information inside the Boost product packaging contains the statement “Botox® alternative peptides also add to the anti aging cocktail for dramatic, targeted results on even the deepest wrinkles”.

104    Self Care has promoted, sold or offered for sale the Boost product in Australia on the Freezeframe website and sold it in Australia to the retail outlet Priceline. The recommended retail price is around $59.00, including GST.

105    From March 2017, the Boost product was included on the Freezeframe website with the following statement at various times, for various periods of time: “Botox® alternative peptides also add to the anti aging cocktail for dramatic, targeted results on even the deepest wrinkles”.

106    Since at least October 2012, the Boost Product was included on the Freezeframe website with the following statement at various times, for various periods of time: “LONG TERM BOTOX® ALTERNATIVE”.

SELF CARE’S IMPUGNED STATEMENTS AND ITS UNDERTAKINGS

107    On 18 February 2019, after the filing of Allergan’s further amended statement of claim, and with reference to that pleading, Self Care made a number of undertakings to the Court. The undertakings were expressly made without admission, in order to narrow the issues in dispute.

108    The undertakings were that Self Care will not make certain of the statements of which Allergan has complained. Self Care nevertheless stated that it intends to, and considers that it is entitled to, continue to make a number of statements, including various statements to the effect that the Self Care products are “Botox alternatives”.

109    As indicated, Allergan complains of statements by the respondents in four ways, namely as trade mark infringements, as affiliation representations, as efficacy representations and as contraventions of the TG Act.

110    The tables below, in respect of each product, reflect the statements that Allergan complains of, the ground for the complaint in each case (trade mark infringement, affiliation representation, efficacy representation and TG Act), and whether Self Care has undertaken not to make the statements anymore. These tables are prepared from Schs A, B and C to Allergan’s closing submissions.

111    Protox product:

112    It should be noted that the Protox product statements in the table above that are shaded and numbered 7-10 and 19 appeared in the Body+Soul supplement mini-features referred to at [67] above. That is recorded in the parties’ statement of agreed facts. In Sch A to its closing submissions, Allergan gave various references to the court book as evidence of the statements having been made by Self Care. Some of the references are to pages of the Freezeframe website but the shaded impugned statements do not appear there. The other references are to the Body+Soul mini-features.

113    Ms Amoroso’s evidence, which was not challenged, was that the content of the mini-features in which the statements appeared were controlled by the publishers of Body + Soul and that Self Care had no control over the content. On that basis, I am not able to find that Self Care made the statements, or adopted them or that the statements are otherwise attributable to Self Care. For that reason, those statements are left out of account in what follows.

114    Inhibox product:

115    Night products (tube and tub):

116    Boost product:

THE REPUTATION OF BOTOX

117    The reputation of the BOTOX word mark is relevant to a number of the claims that fall to be decided. It is thus convenient to consider the reputation of BOTOX as a separate issue. That is undertaken in this section.

118    Ms Dawn Judith De Cruz, the Associate Director, Legal & Compliance – Australia & New Zealand of Allergan Australia gave evidence. Ms De Cruz testified that in Australia there is coverage of the Botox product by journalists and that Allergan’s overseas marketing material is reproduced or mentioned by third parties in publications circulating in Australia. She annexed to her affidavit internet Google search results for the word BOTOX and publications that were linked to the search results. The search was conducted on 20 November 2017.

119    Most of the search results, even in their summary forms as appearing on Google’s search engine results page, refer to Botox as being an “anti-wrinkle injection”. Also, the knowledge panel (right-hand panel) identifies Botox as botulinum toxin.

120    The media articles identified by Ms De Cruz discuss Botox injections, including their cost and the pain associated with their administration.

121    As recorded above, Ms De Cruz explained that for the purposes of selling, marketing and promoting Botox, Allergan makes a distinction in its business model between the use of Botox for the purpose of medicinal therapeutic indications and its use for cosmetic indications.

122    Ms De Cruz explained that Allergan engaged the company Edelman Australia to provide public relations and media communications related services to Allergan. Edelman regularly monitors Australian media coverage for and on behalf of Allergan in relation to the mark BOTOX. Edelman provided a media audit report on the media coverage of Botox in Australia for the period June 2016 to July 2017. The report shows that there were 1,054 mentions of Botox in the media surveyed in that period, which covered both positive and negative sentiment for Botox.

123    Edelman concluded that most often BOTOX is used as a category term rather than as a brand which, Edelman said, would be used for familiarity with their audience over “anti-wrinkle treatment” or “anti wrinkle injections”. However, given that Edelman’s methodology for reaching that conclusion was not revealed, and it obviously involved some level of judgement and hence opinion, I am not able to give much weight to that conclusion.

124    In the “anti-wrinkle” category of this survey, Edelman found that in every month in the survey BOTOX had overwhelmingly more mentions than any of the other 13 brands surveyed.

125    Ms De Cruz exhibited to her affidavit more than 200 articles from the media that mentioned Botox in the period 2003 to 2017. I reviewed the articles. Almost all of the articles refer to Botox being administered by way of injection and many of them refer to Botox being a toxin. Frequently Botox was referred to in the context of cosmetic surgeries. None of the articles suggests that Botox can be topically applied.

126    Ms De Cruz also exhibited reports of surveys conducted for Allergan by AC Nielsen in relation to brand awareness. Twice in 2004 and then once in each of the following years through to and including 2008, AC Nielsen conducted surveys of more than 400 female respondents over the age of 25 in Australian capital cities. Each survey showed that more than 80%, and in later years more than 90%, of respondents were aware of Botox and more than 20% were aware of botulinum toxin therapy. I do not think that the relatively low awareness of botulinum toxin therapy is indicative of a low awareness that Botox is an injectable product that is only administered by healthcare professionals. All it indicates is that most of the respondents who were aware of Botox were not aware that Botox is constituted by botulinum toxin.

127    Ms De Cruz testified that the survey reports also show that the mark BOTOX had the highest brand awareness for “wrinkle removal procedures” in Australian women aged 25-54. That can be accepted, it being significant that it is “procedures” rather than treatments for which Botox is known.

128    Ms De Cruz also cited mainstream media and television programs that frequently referred to Botox. One of those, as I have already mentioned, is the film Sex and the City. That film was released in Australia in June 2008 and box office sales for the period June to September 2008 grossed more than US$25 million. I take that to indicate that a large number of people watched the film.

129    An episode of the television series Sex and the City, in season five, included a scene mentioning Botox. Season five apparently premiered to nearly eight million viewers, as reported in August 2017, although the evidence does not show when season five aired in Australia.

130    I have reviewed the scenes in the movie and in the episode in season five that mentioned Botox. There is nothing in those scenes to suggest that Botox is topically applied, and in one scene “having Botox” is associated with pain implying widespread knowledge that Botox is an injectable.

131    Ms De Cruz also referred to several other popular television programs that mentioned Botox. One of those is an episode called “Skin Deep” on Catalyst, a television program that aired on ABC in September 2012 to approximately 800,000 viewers in Australia. The program discussed, amongst other things, the use of Botox as an injectable that is required to be administered by a healthcare professional. The program also made a distinction between Botox and its active ingredient botulinum toxin, however referred throughout to “botox” as short hand for anti-wrinkle injections. Other programs include Real Housewives of Sydney and The Bachelorette. The submission is that Botox occupies a place in Australian popular culture. That can be accepted.

132    As one would expect, Allergan regularly publishes press releases to the media, although the evidence does not reveal the extent to which the press releases are picked up by the media and reported on. Allergan also has websites, both internationally and in Australia, where Botox is promoted. The Australian website for Allergan reflects that the active ingredient in Botox is botulinum toxin and that Botox is available only by prescription.

133    Ms De Cruz also gave evidence as to Allergan’s global revenue from sales of the Botox product. That rose from a little under US$1 billion in 2006 to US$2.7 billion in 2016. As at 30 September 2017, Allergan’s revenue for sales of the Botox product for the calendar year 2017 was US$2.3 billion.

134    With regard to the sales of Botox in Australia for cosmetic uses, the evidence is that annual sales in 2016 were about 44% higher than they were in 2009. The annual sales for cosmetic uses have, since 2014, increased year on year by more than 9%. By October 2017, the growth rate for the calendar year 2017 was already reflected at 10.7%.

135    With regard to the sale of Botox for cosmetic uses in Australia, Ms De Cruz referred to a confidential exhibit showing such sales to be worth very substantial amounts each year for the period 2003 to 2017. The strong growth and high net value of sales are indicative of a strong brand awareness.

136    Ms De Cruz gave evidence, the details of which are the subject of a suppression order due to their commercial confidentiality, of the amount spent by Allergan in Australia on promoting the Botox product for cosmetic uses. For present purposes, it is sufficient to observe that the annual spend is, by any measure, very substantial. It can be taken that that spend contributes to widespread brand awareness.

137    Mr Franky Prochilo, Allergan Australia’s Associate Director of Marketing, Facial Aesthetics – Australia & New Zealand, gave evidence. Mr Prochilo testified that Botox has been on the market for almost 30 years, and in Australia for cosmetic indications for more than 15 years.

138    Mr Prochilo said that Allergan provides clinical literature to healthcare professionals, and he refers them to information published by Allergan to help them understand the Botox product and to enable them to provide information to consumers about the product and the procedure for its administration. That information, as would be expected, includes that Botox is a regulated toxin administered by way of injection.

139    An information brochure published by Allergan for healthcare professionals to provide to their patients distinguishes between three types of treatment for facial aging, namely skin treatments that correct texture and pigmentation issues, treatments that can enhance and replace facial volume, and Botox treatments that can relax wrinkle-causing facial muscles. Mr Prochilo accepted in cross-examination, with reference to that information, that Allergan was not putting itself forward as providing any skincare products.

140    A similar brochure also directed to the patients of healthcare professionals identifies different skin treatments amongst which is Botox, which is described as a prescription medicine that should be administered only by trained medical professionals.

141    Mr Prochilo also referred to information that is widely available on the internet which includes that Botox is a regulated toxin administered by way of injection and that Botox therapy is only available on prescription from a doctor.

142    Mr Prochilo gave evidence with regard to the promotional and advertising material produced by Allergan and distributed in Australia. That includes information booklets on how Botox is used for cosmetic purposes, flip charts and consumer brochures containing information for doctors and patients regarding the cosmetic use of Botox, notepads featuring the BOTOX trade marks, anatomical charts of facial muscles featuring the BOTOX trade marks and other selling aids, and sticky notes featuring the BOTOX trade marks. As expected, the consumer information booklets, website material and other promotional materials explain that Botox is a neurotoxin that is administered by way of injection by medical practitioners on a prescription basis only.

143    Mr Prochilo explained that Allergan Australia also produces marketing materials which advertise that Allergan has available injectable muscle relaxants or anti-wrinkle injections, or which provide information about the cosmetic indications and the types of products available for treatment indications. This advertising material refers to the products generally using words such as “injectable muscle relaxants” or “anti-wrinkle injections” without reference to the BOTOX trade mark due to TG Act regulatory requirements. That type of advertising is designed to promote non-brand product category awareness.

144    Allergan’s information and marketing material that it publishes about Botox includes descriptions as to what Botox achieves in its cosmetic applications. This includes descriptions such as “improvement in the severity of [frown] lines”, “improvement in the severity of [crow’s feet] lines”, “relaxes wrinkle-causing muscles, creating an improved appearance”, “improvement after BOTOX® treatment for glabellar lines”, “improvement in crow’s feet”, “enhance and rejuvenate your facial appearance with natural looking results” and “create a rejuvenated appearance”. Thus, as would be expected in respect of the cosmetic applications for Botox, Allergan emphasises the wrinkle-reducing enhancement in the appearance of patients after treatment.

145    The information available on the www.botoxcosmetic.com website that is maintained by Allergan is consistent with that in the information brochures referred to by Mr Prochilo. The home page of the website opens with a warning that Botox may cause serious side effects that can be life-threatening and directs that medical help should be sought right away if any side-effects are experienced at any time “after injection of BOTOX”. The message that Botox is administered by injection is front and centre.

146    In submissions, Allergan relies on the judgment of Stone J in Allergan Inc v Di Giacomo [2011] FCA 1540; 199 FCR 126 in support of the proposition that at least by 2008 Allergan Inc had acquired a significant reputation in the BOTOX marks in respect of a general cosmetic product or procedure for the treatment of facial lines, rather than one specifically involving the use of botulinum toxin. There are, however, a number of reasons why that judgment is not good authority, or evidence, for that proposition.

147    First, and foremost, under s 91 of the Evidence Act 1995 (Cth) a finding of fact in an Australian proceeding is not admissible to prove the existence of a fact that was in issue in that proceeding. The judgment is therefore not admissible to prove the nature of the reputation of the BOTOX marks.

148    Second, that proceeding was undefended with the result that the evidence was unchallenged and no evidence in opposition was adduced.

149    On the basis of the evidence, Allergan submits that the reputation of Allergan in the BOTOX marks in Australia is in connection with a general cosmetic product or procedure for the treatment of facial lines, rather than one specifically involving the use of botulinum toxin.

150    Against that, Self Care submits that the reputation of the mark BOTOX is confined to an injectable anti-wrinkle product. This is because the word BOTOX has only been used in relation to an injectable anti-wrinkle product which must be prescribed by a medical practitioner; it is a focused reputation. Self Care submits that the reputation of BOTOX does not extend to topical cosmetic products rather than an injectable product.

151    There can be no doubt on the evidence, which is accepted by Self Care, that BOTOX has a strong and widespread market reputation. BOTOX is widely known of, frequently referenced in popular culture, and the product by that name has strong sales and substantial advertising spend.

152    As to the nature of that reputation, in my view the evidence, the relevant aspects of which I have sought to identify above, overwhelmingly supports the conclusion that the reputation of Botox is as an injectable anti-wrinkle product administered by healthcare professionals. There is no reputation in the mark BOTOX that extends to topically applied cosmetics or general cosmetic products or treatments. The reputation whilst widespread and strong, is in its nature specific.

153    As already identified, I accept that the general understanding of the use of the word BOTOX is not necessarily as a reference to Allergan’s product which is branded BOTOX, but is rather understood in a generic sense as referring to an anti-wrinkle injection which could be Allergan’s product or one of the other botulinum toxin products on the market.

TRADE MARK INFRINGEMENT

Infringement of BOTOX trade mark under ss 120(1) and 120(2) of TM Act

154    Allergan provided the following summary of the issues for determination in this part of their claim:

(1)    PROTOX as a word mark:

Allergan submits that the use by Self Care of the word PROTOX is an infringement because it is used as a trade mark and it is deceptively similar to BOTOX. Self Care has undertaken to permanently refrain from making what is defined as the “Freezeframe PROTOX statements”, none of which involves the use of PROTOX independently of FREEZEFRAME. Ms Amoroso also gave evidence that Self Care does not use PROTOX independently. Nevertheless, Allergan submits that an infringement of their trade marks by past and possible future uses of PROTOX is still in issue.

(2)    Uses of BOTOX in composite phrases – Inhibox:

This refers to the use of phrases such as “Instant Botox® alternative” and “The World’s first Instant and Long Term Botox® Alternative” in relation to the Inhibox product. Self Care has undertaken not to use the phrase “Long Term Botox® alternative” but does not consent to declarations and pecuniary relief for past uses, and expressly does not give an undertaking not to use the statement “Botox Alternative”. It also does not undertake not to use “Instant Botox® Alternative”. Thus, Allergan says that infringement and threatened infringement by uses of the phrases in the manner used by Self Care is in issue, but that infringement by “Botox Alternative” simpliciter is not in issue, and that there are no such uses put in evidence by either party.

(3)    Uses of BOTOX in composite phrases – Night (tube):

This refers to the use of phrases such as “overnight Collagen and Botox Alternative”, “Discover the overnight BOTOX® Alternative”, “Delivers the results of a collagen injection in 5 weeks and a Botox injection in 4 weeks!”, and similar phrases. Self Care has undertaken not to use the “Delivers the results of a … Botox injection in 4 weeks” phrases, but expressly states that it does not undertake not to make the statement “provides an alternative to a Botox injection”. Self Care does not undertake not to use the “overnight Botox Alternative” phrases.

(4)    Uses of BOTOX in composite phrases – Night (tub):

This refers to the use of phrases such as “Overnight Botox® Alternative” and “Long term BOTOX® alternative”. Self Care has undertaken not to use these phrases but it does not consent to declarations and pecuniary relief for past uses. It also makes it explicit that it does not undertake not to make the statement “Botox Alternative” or “alternative to Botox injections”.

(5)    Uses of BOTOX in composite phrases – Boost:

This refers to the use of phrases such as “Long term BOTOX® alternative” and “Botox® alternative peptides”. Self Care has not undertaken not to use these phrases. Infringement and threatened infringement by the use of these phrases is thus in issue.

(6)    Use of BOTOX in composite phrases – Protox:

This refers to the use of the phrase “prolong the look of BOTOX®”. Self Care has undertaken not to use this phrase, but it does not consent to declarations and pecuniary relief. Infringement by past use of the phrase is thus in issue. It also makes express that it does not undertake not to make the statement “Botox alternative”.

Section 120 of the TM Act

155    It is convenient to commence with ss 120(1) and 120(2) of the TM Act which provide:

120     When is a registered trade mark infringed?

(1)     A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

(2)     A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)      goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

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

(c)      services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

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

    However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

156    By s 17, “a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” A sign includes any word or combination of words: s 6.

157    There are three main elements to be established for infringement under s 120(1) or (2), namely: (1) the impugned sign must be used “as a trade mark”; (2) it must be substantially identical with or deceptively similar to the registered trade mark; and (3) it must be used in relation to the registered goods (s 120(1)) or goods of the same description as the registered goods (s 120(2)(a)).

158    In this case, all three elements are in issue in relation to different parts of the claim.

(1)    Use as a trade mark – principles

159    Use of a mark “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods. That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else. See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144 at [43] per French CJ, Gummow, Crennan and Bell JJ, and [87] per Heydon J, approving the statement in Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107 at [19] per Black CJ, Sundberg and Finkelstein JJ.

160    In Coca-Cola (at [20]) it was concluded that the authorities provide no support for the view that in determining whether a sign is used as a trade mark one asks whether the sign indicates a connection between the alleged infringer’s goods and those of the registered owner. The question is whether the sign used indicates origin of goods in the user of the sign; whether there is a connection in the course of trade between the goods and the user of the sign.

161    To determine whether the use of a mark constitutes use as a trade mark, the “purpose and nature” of the impugned use must be understood: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; 109 CLR 407 at 426 per Kitto J (Dixon CJ, Taylor and Owen JJ agreeing). The purpose and nature of the use must be assessed by reference to the context, including the way in which the words have been displayed: PepsiCo Australia Pty Ltd v Kettle Chip Co Pty Ltd [1996] FCA 48; 135 ALR 192 at 211-212 per Sackville J (Lockhart and Sheppard JJ agreeing).

162    It is unhelpful to assess the objectives or intention that was sought to be achieved by the use of the mark because whether or not it was used as a trade mark is to be determined by considering the words as they present themselves to the persons who are to read them and form a view about what they are meant to connote: PepsiCo at 218 per Sackville J; Anheuser Busch v Budejovický Budvar Národní Podnik [2002] FCA 390; 56 IPR 182 at [186] per Allsop J. The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: Anheuser Busch at [185] per Allsop J, citing Shell Company at 425 per Kitto J and Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402; 30 FCR 326 at 347 per Gummow J.

163    The decision of the House of Lords in Irving’s Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 is particularly pertinent in the present context. Irving complained that Horsenail infringed its YEAST-VITE trade mark by using the phrase “Yeast Tablets, a substitute for Yeast-Vite” in relation to the product. It was held that the impugned use was to distinguish the products from each other: “It is not a use of the word as a trade mark, that is, to indicate the origin of the goods in the Respondent by virtue of manufacture, selection, certification, dealing with or offering for sale” (at 115 per Lord Tomlin).

(2)    Deceptive similarity – principles

164    The approach to determining whether two marks are substantially identical and whether they are deceptively similar is different.

165    In considering whether marks are substantially identical they should be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison; whether there is substantial identity is a question of fact. See Shell Company at 414 per Windeyer J.

166    As will be seen, Allergan does not rely on substantial identity; it confines its case to deceptive similarity.

167    On the question of deceptive similarity, the marks are not to be looked at side by side. The comparison is between, on the one hand, the impression based on recollection of the applicants’ mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the respondents’ mark or sign; marks are remembered by general impressions or by some significant detail rather than by any photographic recollection of the whole. See Shell Company at 415 per Windeyer J.

168    In Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; 58 CLR 641, an infringement case, Dixon and McTiernan JJ (at 658-659) explained the exercise as follows:

But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of the potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

…

It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

169    It is sufficient if persons who only know one of the marks and have perhaps an imperfect recollection of it are likely to be deceived: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; 86 CLR 536 at 538 per Dixon, Williams and Kitto JJ. A mere possibility of confusion is not enough; there must be a real, tangible danger of its occurring: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 595 per Kitto J (adopted on appeal at 608 per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ).

170    By s 10 of the TM Act, “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.”

171    In the present case, important issues arise as to whether the following can be taken into account in assessing whether the PROTOX mark is deceptively similar to the BOTOX mark: (1) the nature and reputation of the BOTOX mark, and (2) the manner of use of the PROTOX mark. The issues arise in part from the statement by Kitto J in Southern Cross (at 595) that:

In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v Scarlett [(1937) 57 CLR 115 at 120].)

172    However, Southern Cross and Jafferjee v Scarlett [1937] HCA 36; 57 CLR 115 concerned deceptive similarity in the context of opposition to registration rather than in the context of infringement. It is necessary to consider infringement separately.

1.    Surrounding circumstances

173    As Gummow J explained in Wingate Pty Ltd v Levi Strauss & Co [1994] FCA 163; 49 FCR 89 at 128, where the comparison of the marks is necessary to determine whether that of the defendant is deceptively similar to the registered mark of the plaintiff, who sues for infringement, the primary comparison must be between any normal use of the registered mark on the one hand and the mark as used by the defendant on the other. The reason for the difference is that in order to give effect to the plaintiff’s monopoly arising from the registration of its mark, protection must be given even if its mark has not been used or, if it has, also in respect of designated goods and services in respect of which it has not been used. Thus it is any normal use of the plaintiff’s mark comprised within the registration that must be considered. On the other hand, it is the infringement by the defendant which is constituted by the actual use of that mark that must be considered. See MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616; 90 FCR 236 at 245 per Burchett, Sackville and Lehane JJ.

174    Nevertheless, there are circumstances in which matters relevant to the plaintiff’s mark that are broader than the mark itself might be taken into consideration. Section 219 of the TM Act provides that “evidence is admissible of the usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons.” In the context of s 66 of the previous Act, which was in the same terms, in Mond Staffordshire Refining Co Ltd v Harlem [1929] HCA 6; 41 CLR 475 it was concluded that the registered trade mark MONSOL was not infringed by the use of MULSOL on the basis of evidence of a number of marks used for pharmaceutical products, such as those with which that case was concerned, which ended with –SOL or –OL: at 477-478 per Knox CJ, Gavan Duffy and Starke JJ. See Wingate at 127.

175    In MID Sydney (at 245) it was recognised that there are cases, of which that was one, in which it is appropriate to take into account the use, or proposed use, by the alleged infringer and also the character of the registered mark itself. The judgment of Gummow J in New South Wales Dairy Corporation v Murray Goulburn Co-op Co Ltd (No 1) [1989] FCA 124; 14 IPR 26 was cited where it was said (at 67) that in determining the issue of deceptive similarity in the context of infringement it is permissible to have regard to the actual use by the alleged infringer. In MID Sydney (at 246) that included two elements of the character of the mark CHIFLEY, namely that it is familiar not only as the name of a former Prime Minister but also, as the evidence showed, from its use in a number of geographic and other contexts.

176    In Anheuser-Busch Allsop J considered whether the use of the mark BUDEJOVICKÝ BUDVAR infringed the marks BUDWEISER and BUD. That turned in part on whether the former was deceptively similar to the latter. His Honour held (at [153]) that the setting or surrounding circumstances were relevant for the comparison and that they included, relevantly, how the product would be sold and promoted. Relevant also was where and how the allegedly infringing mark was used on the labels on beer bottles: at [181].

177    The Full Court in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201; 63 IPR 38, an infringement case, confirmed that the following must be considered: the look and the sound of the words, the goods to which they are to be applied, the nature and kind of customer who would be likely to buy those goods, and “all the surrounding circumstances” (at [16] per Wilcox, Kiefel and Bennett JJ, citing Re Application by Pianotist Co Ltd (1906) 23 RPC 774 at 777 per Parker J). I understand this to be the approach that I am bound to follow.

2.    Reputation

178    In Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365, a majority of the Full Court (French and Tamberlin JJ, Branson J dissenting) held that the trial judge’s reference to the familiarity of the name WOOLWORTHS in Australia was appropriate when considering opposition to the registration of the name WOOLWORTHS METRO on the ground that it would be confusing as being deceptively similar to the mark METRO. It was reasoned that “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, … it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”: at [61].

179    In Coca-Cola, the appellant’s registered mark that was said to be infringed was a contour drawing of the glass bottle in which the soft drink Coca-Cola was traditionally sold. The respondent was a confectionery wholesaler which imported and distributed a cola-flavoured confectionery which was shaped like the contour bottle and which had the word COLA inscribed on it. One of the factors listed by the Full Court (at [42] per Black CJ, Sundberg and Finkelstein JJ) as leading to the conclusion that the features of the confectionery were likely to cause confusion in consumers, i.e., to cause them to wonder whether it might be the case that the confectionery came from the same source as Coca-Cola, was that the contour bottle is extremely well-known.

180    In CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539; 52 IPR 42, an infringement case, the Full Court directly addressed the relevance of the reputation of the plaintiff’s mark in considering whether the defendant’s allegedly infringing mark is deceptively similar to the former mark. Ryan, Branson and Lehane JJ reasoned (at [46]) that what is to be considered is the significance of a particular word or phrase among traders and consumers in a particular market. If among those persons particular words have come to mean exclusively the goods of a proprietor of a registered mark, the registered mark being or including those words or as a “fancy word” composed of them and, when pronounced, sounding virtually the same, then use by another trader of those words in relation to goods in the class for which the mark is registered will infringe because, necessarily in the circumstances, use of the words by that trader is likely to cause confusion.

181    It was reasoned by the Full Court in CA Henschke (at [50]) that despite reliance on the contour bottle being extremely well-known, the Full Court in Coca-Cola is not to be taken to have decided that reputation evidence of the kind which is undoubtedly relevant in a passing off action is generally relevant to a question of deceptive similarity. It was held (at [52]) that Woolworths suggests, and other authorities support, that in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long-standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services, is a relevant consideration.

182    The approach to the question of reputation in CA Henschke was followed by the Full Court in Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207; 268 FCR 624. It was held (at [41] per Allsop CJ, Besanko and Yates JJ) that the limited proposition which the Court accepted Woolworths stood for was not that reputation is relevant generally to deceptive similarity. That proposition was rejected. It was the proposition that deceptive similarity from imperfect recollection might be countered by showing the well-known nature of the registered mark and the lessened likelihood of imperfect recollection. I understand this to be the approach that I am bound to follow.

3.    Section 120(2)

183    The notion of whether the impugned mark is likely to deceive or cause confusion comes into s 120(2) at two places. The first is in the chapeau, within the concept of “deceptively similar” as defined, and the second is in the chaussette (the closing words of the subsection as referred to by Perram J in SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483 at [79]), viz., “However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.”

184    The words “as the person did” in the chaussette to s 120(2) direct attention to the way in which, as a matter of fact, the alleged infringer has used the allegedly infringing trade mark. These concluding words pose a different question to that raised by the chapeau of the subsection which, in the context of deceptive similarity, directs attention only to a comparison of the marks in the way discussed above. However, any conclusion about deceptive similarity would usually inform the consideration of whether the actual use was likely to deceive or cause confusion. In a sense, an affirmative answer to the question of whether the alleged infringing mark is deceptively similar would be the starting point. If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion. Also relevant would be the matters considered in determining whether the alleged infringer’s goods are of the same description of the goods in respect of which the registered mark is registered. See E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; 175 FCR 386 at [76].

(3)    The “goods in respect of which the trade mark is registered” or “goods of the same description” – principles

185    In respect of s 120(1), the inquiry is whether the goods in respect of which the allegedly infringing mark is used are the same as the goods in respect of which the allegedly infringed mark is registered. That involves considering the allegedly infringing goods, and asking whether they are covered by the goods listed in the registration of the allegedly infringed mark. See MID Sydney at 241; Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760; 79 IPR 454 at [47] per Collier J.

186    In considering whether the impugned mark is used on goods “of the same description” as the goods in respect of which the mark that is said to be infringed is registered (i.e., s 120(2)(a)), the inquiry is broader. The allegedly infringing goods may not be listed in the registration of the allegedly infringed mark, but they may nevertheless be goods of the same description. There may be many matters to be considered apart from the inherent character of the goods. These can be classified as the nature of the goods, the uses of the goods, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and the classifications in the schedules for the registration of trade marks are not a decisive criterion as to whether or not two sets of goods are “of the same description”. See Southern Cross at 606 per Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ.

187    The English Court of Appeal in J Lyons & Co Ltd’s Application [1959] RPC 120 at 128 per Lord Evershed MR adopted the same tripartite classification of considerations (i.e., “the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold”). The Court also held that the phrase “goods of the same description” ought not to be given too restrictive a construction – “not, at all events, so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other”: at 128. That was adopted by the Full Court of this Court in MID Sydney at 244. See also Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd [1993] FCA 265; 42 FCR 227 at 240 per Burchett J. Although MID Sydney dealt with services rather than goods, its reasoning applies equally to goods: E & J Gallo at [70].

188    The expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception: Polo Textile at 240, adopted in E & J Gallo at [71] per Moore, Edmonds and Gilmour JJ, not disturbed on appeal in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144.

189    Product substitutability is one of several factors which may be taken into account, but it is by no means determinative of itself: SMA Solar Technology at [75].

PROTOX as a word mark

(1)    Use as a trade mark

190    Self Care submits that it almost always uses PROTOX in combination with FREEZEFRAME – that FREEZEFRAME is the umbrella brand and PROTOX denotes a product within the range under the umbrella. It submits that it is PROTOX in combination with FREEZEFRAME that does the work of indicating the origin of the product known as Protox – PROTOX does not work alone in this respect.

191    I do not accept that PROTOX is almost always used in combination with FREEZEFRAME. I find that PROTOX is usually used in combination with FREEZEFRAME, but even when that is so the spatial relationship between those words is not consistent.

192    For example, the lid of the elongated box in which the product is packaged has the word PROTOX on its own with no other writing at all, whereas the face and side have the word PROTOX but between them there is a cutaway “surfboard” with the word FREEZEFRAME. The other side panel of the box has FREEZEFRAME without PROTOX, and the back of the box has PROTOX without FREEZFRAME. Much of this is evident from the images at [63] above.

193    The package insert for the Protox product is a composite insert for a number of Freezeframe products. It links the products to the brand FREEZEFRAME, but each product is given its own independent name separately from FREEZEFRAME. Thus, PROTOX appears as the prominent heading and thus name for the Protox product, not FREEZEFRAME PROTOX.

194    Many examples of the promotion and advertising of Protox were tendered in evidence. For example, many ‘advertorial’-type advertisements for Protox appearing in the health and beauty supplement Body + Soul in the period November 2014 to October 2016 were tendered. These depict the product tube with the word PROTOX prominently displayed and “freezeframe” below it in smaller, markedly less prominent writing. Adjacent to the depiction of the product tube is a paragraph of copy that refers to the product as “freezeframe Protox”.

195    Other advertisements in Body + Soul in October and December 2014 were tendered which reflect the Protox product being referred to as PROTOX on its own and also in the combination “PROTOX freezeframe”. An advertisement in Marie Claire in May 2015 refers to the product as “freezeframe PROTOX” and “PROTOX by freezeframe”.

196    Several downloads of pages from the Freezeframe website in the period October 2014 to November 2017 were tendered. Although being on the Freezeframe website, and in that sense linked to FREEZEFRAME, the pages depict the PROTOX name and mark being used independently of FREEZEFRAME, including in banner headings. Within the time period referred to, the more recent examples tend to show more consistent use of PROTOX in immediate proximity to FREEZEFRAME in describing the product as FREEZEFRAME PROTOX. That change appears to have taken place in about July 2015.

197    Examples of advertisements for Protox in the Herald Sun newspaper on 14 June 2015 and in various weekend newspapers on 9 August 2015 refer to the product as FREEZEFRAME PROTOX.

198    In my view it is quite clear that PROTOX is used as a trade mark. It badges the goods to which it applies; it gives those goods a name; it is indicative of trade origin by linking the goods to Self Care which applied the mark. The fact that FREEZEFRAME is the umbrella brand and that PROTOX denotes a product within the Freezeframe range does not detract from the use of PROTOX as a trade mark in respect of the Protox product.

199    The real issue here is not whether the word PROTOX is used as a trade mark – it clearly is, albeit not generally on its own or in isolation. The real issue is whether PROTOX is deceptively similar to BOTOX and, if it is, whether PROTOX as used (i.e., including the way in which it is used with FREEZEFRAME) is not likely to deceive or cause confusion.

(2)    Deceptive similarity

200    Allergan relies on the following features in support of the conclusion that it contends for that PROTOX is deceptively similar to each of the BOTOX marks.

201    First, Allergan submits that the dominant feature of PROTOX is -OTOX, both visually and aurally. It submits that in referring to PROTOX, consumers are likely to recall this feature first and that PROTOX is likely to be understood as containing an essential feature of the BOTOX marks.

202    Secondly, Allergan submits that the sign PROTOX has a high degree of similarity as a cue that consumers would ordinarily associate with the Botox product. The cue that is common to both signs is the two syllables “oh” and “tox” (-OTOX). Allergan submits that upon seeing or hearing these, the consumer assumes that the products are, or are in some way, associated with BOTOX. It submits that the use of the PR- is unlikely to dispel a consumer’s recollection of the brand BOTOX. It says that this is particularly the case for consumers who have heard about Botox products, but who have not, or who have barely, seen them and their packaging.

203    Thirdly, Allergan submits that the evidence supports a finding that in adopting the name PROTOX, Self Care intended to trade off the reputation of the brand BOTOX. If so, it submits that the use of the mark PROTOX should be presumed to be fit for the intended purpose and thus likely to deceive in reliance on Australian Woollen Mills at 657 – that is that proof of the respondent’s intention to appropriate part of the trade mark or reputation of a rival may be sufficient in a borderline case to establish deceptive similarity.

204    In my view, the way in which the relevant words are most commonly and easily spoken breaks up the syllables as follows, BO·TOX and PRO·TOX. The first syllable of each word is similar, having the ‘oh’ sound. The words obviously have the second syllable in common, namely TOX. That might readily be understood as a reference to toxin or toxicology, but not necessarily so. It is nevertheless a familiar and common syllable.

205    The words are distinguished by the first syllable in each case, namely BO and PRO. BO has no ready meaning or reference on its own, although well-informed consumers might understand that BO is derived from botulinum. Botulinum is not a common word and knowledge of it would not be widespread.

206    In contrast, PRO is readily understood as meaning “in favour of”, favouring or advantageous, although it can also be a colloquialism for professional: Macquarie Online Dictionary. Ms Amoroso apparently intended to make a portmanteau reference to “prolonging” and “botulinum toxin”. Other than in the specific context of that word used in association with PROTOX, such as in the phrase “prolong the use of Botox with PROTOX”, I do not consider that it would readily be understood in that way.

207    Nevertheless, PRO is a familiar and recognisable element and it has meaning, whereas BO is unfamiliar and does not have a readily recognisable meaning. Also, because the common element, TOX, is readily familiar, I consider that attention is more readily directed to the prefix syllables in each case, i.e., PRO and BO. In any event, the point is that although the words are very similar in look and in sound, they are less so in any idea or meaning conveyed by them.

208    I do not accept Ms Amoroso’s evidence that the TOX part of the word refers to botulinum toxin rather than Botox, or more specifically the word BOTOX. Having regard to Ms Amoroso’s statement that it is a play on words and her reference in contemporaneous correspondence to people understanding the reference, in my view it was clearly intended to be an allusion to Botox (see [71]-[73] above). However, given my acceptance above that the general understanding of the word in the public domain is as an anti-wrinkle injection (see [153]), I do not think that this use demonstrates an intention to appropriate the trade or reputation of the brand BOTOX, but rather as a play on BOTOX and to differentiate from it. The intention was not, in my assessment, to say to the public “this is BOTOX”, but to say the opposite – “this is not BOTOX”.

209    An important factor, in my assessment, is the ubiquitous reputation of BOTOX. As I have found, the word is very widely known, and to such a degree that it has become in ordinary usage a common noun, not only a proper noun. Thus, and within the authority of CA Henschke and Australian Meat referred to above (at [180]-[182]), and as in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354 at [97] per Perram J, the fame of the mark is such as to impact on a consumer’s imperfect recollection of the mark. First, there is not likely to be an imperfect recollection of the mark and, second, even if there is, such a consumer is not on seeing or hearing PROTOX likely to mistake it for BOTOX; they are more likely to be reminded of BOTOX.

210    That conclusion is reinforced by consideration of relevant surrounding circumstances. These include that the PROTOX mark is almost always used in proximity to the FREEZEFRAME mark which identifies a range of products that include marks having no similarity at all with the BOTOX mark.

211    The result is that although the marks are undoubtedly very similar in look and sound, they are sufficiently distinctive that, in my view, persons of ordinary intelligence and memory are not likely to confuse them. The PROTOX mark does not so nearly resemble the BOTOX mark that it is likely to deceive or cause confusion. Put differently, in my view, a person with even an imperfect recollection of the BOTOX mark is not likely to be deceived by the PROTOX mark, or even the general impression left by that mark; there is no real, tangible danger of that occurring. There is also no evidence of actual confusion, which offers some support to that conclusion.

212    In relation to the chaussette to s 120(2) of the TM Act, the PROTOX mark is used in relation to quite different goods, usually in circumstances where it is distinguished from the BOTOX mark because both marks are mentioned and the goods are distinguished by one being described as an alternative to the other, and the PROTOX mark is usually used in combination with or in proximity to the FREEZEFRAME mark. In those circumstances, the use of PROTOX by Self Care in the manner in which it does is not likely to deceive or cause confusion within the meaning of s 120(2). Allergan’s claim of trade mark infringement under s 120(2) in respect of Self Care’s use of PROTOX must accordingly fail.

213    Self Care submits that the mark that is really used is FREEZEFRAME PROTOX which, because of the combination of PROTOX with FREEZEFRAME, is clearly not deceptively similar to BOTOX. Given my conclusion with regard to PROTOX on its own not being deceptively similar it is not necessary for me to make any finding on this submission. However, in case it should be relevant, the evidence does not support a finding that PROTOX is always used in sufficient proximity to FREEZEFRAME such that the relevant mark is FREEZEFRAME PROTOX. I have identified that evidence above (at [191]-[197]).

(3)    The registered goods or goods of the same description

214    Allergan’s primary contention is that each of Self Care’s products, including Protox, is a good in class 3 in respect of which Allergan’s class 3 marks are registered, i.e., the 655 mark and the 426 defensive mark. Self Care accepts that, save that it contends by its cross-claim that Allergan’s class 3 registrations should be removed from the register under s 92(4)(b) of the TM Act, in respect of the 655 mark, or cancelled in respect of the goods specified in its registration pursuant to s 88(2)(a) read with s 187(d) of the TM Act, in respect of the 426 defensive mark. Thus, if the cross-claim succeeds then the claim for trade mark infringement under s 120(1), i.e., in relation to goods in respect of which the trade mark is registered, must fail.

215    As will be seen, on the cross-claim I have concluded that the BOTOX 655 mark should be removed on account of non-use but that the BOTOX 426 defensive mark should not be cancelled because it has not been shown or established by Self Care that the use of the BOTOX mark in relation to the goods in class 3, in respect of which that mark is registered, would not be likely to indicate that there is a connection between those goods and the registered owner of the BOTOX mark.

216    The BOTOX 426 defensive mark includes goods in class 3 such as “anti-ageing creams; anti-wrinkle cream; beauty care preparations; beauty preparations; beauty care products; … eye wrinkle lotions; … skin care preparations and creams (cosmetic); skincare cosmetics; …”. Ms Amoroso described the Protox product as “an anti-ageing and anti-wrinkle balm serum”. There can be little doubt that that product is the same product as some of the products in respect of which the BOTOX 426 defensive mark is registered. Thus, although the s 120(1) infringement claim fails at the requirement of deceptive similarity, the requirement of “the same goods” is met.

217    It necessarily follows that the requirement in s 120(2)(a) of “goods of the same description” is also met in respect of the BOTOX 426 defensive mark class 3 goods.

218    Allergan also submits that Protox is a good of the same description as some of the goods in class 5 in relation to which the BOTOX marks are registered. This would only be relevant if I am wrong in my conclusions that the BOTOX and PROTOX marks are not deceptively similar and that the 426 defensive mark class 3 registration should not be cancelled.

219    Allergan relies on the following factors in submitting that Protox is a good of the same description as Botox – by which I take the submission to be that Protox is a good of the same description as the goods in respect of which the BOTOX 785 and 786 marks are registered in class 5:

(1)    Self Care has promoted Protox with reference to the product Botox including as “Instant Botox® Alternative”, “Overnight Botox® Alternative” and “Long Term Botox® Alternative”.

(2)    Although Botox is administered as an injection by a registered medical practitioner, the evidence shows that skincare goods are sold at the same point of sale where Botox is administered.

(3)    The respective products are sold to the same class of customers, namely those customers who are seeking to improve the appearance of facial wrinkles.

220    It will be recalled that the relevant goods in class 5 are “Pharmaceutical preparations for the treatment of … wrinkles.” Botox is clearly such a good.

221    In my view, Protox is not a good of the same description as the BOTOX class 5 registered goods within the meaning of s 120(2)(a). There are a number of reasons for that.

222    First, with regard to the products themselves, Botox is a therapeutic product that is supplied only to healthcare professionals and can be administered only by healthcare professionals. In stark contrast, Protox is a topical cream that is rightly classified as a cosmetic that is sold directly to retail customers and applied by them. To put the matter differently, Botox is a highly toxic poison that is distributed, supplied and administered in a highly regulated manner, whereas Protox is a widely available and easily purchased and applied harmless cosmetic.

223    Second, with regard to the demand side of the market, the evidence is that there are some skincare clinics that sell skincare products and that also offer injectable products such as Botox. The skincare products include skin cleansers, peels, serums, toners, masks, exfoliants, moisturisers, creams and sun creams. However, the fact of these common outlets is not significant considering that what is sold is, on the one hand, a product such as Protox (although not actually Protox) and, on the other, a service being the administration of intramuscular injections. There is little to no risk that they will each be seen as having a common trade origin because they are available at the same place.

224    Third, with reference to the supply side of the market, pharmaceutical manufacture and supply is a quite different business from topical cosmetic product manufacture and supply. There is no evidence of any entity which engages in both. Neither Allergan nor Self Care does both.

225    Fourth, Allergan’s reliance on Self Care describing Protox as an “alternative” to Botox adopts an incorrect meaning of alternative. Protox is an alternative to Botox not in the sense of being a substitute for it, but in the sense of being quite different from it. Allergan’s focus is too much on the common purpose or outcome of reducing the appearance of wrinkles whilst overlooking the very different nature, mode of action and underlying effect of the different products. There is nothing in the marketing and presentation of Protox which suggests that it is a substitute for Botox (in the sense that Pepsi is a substitute for Coca-Cola). They are different in every way, including price, application, associated pain or bodily invasion and length of action – the effect of Botox is measured in months and that of Protox in hours. The only similarity between them is that they are both directed at reducing the appearance of wrinkles.

226    In the result, Protox is not a good of the same description, within the meaning of s 120(2), as a pharmaceutical preparation for the treatment of wrinkles.

(4) Conclusion: trade mark infringement claim with regard to PROTOX

227    For those reasons, Allergan’s claim against Self Care for trade mark infringement for use of its word mark PROTOX must fail.

BOTOX in composite phrases

(1) Use as a trade mark

228    The first question is whether the way in which Self Care uses the word BOTOX in its various composite phrases constitutes use of that word as a trade mark. The various uses that are complained of are identified in columns headed “TM inf. Y/N” in the tables at [111]-[116] above.

229    Those uses can conveniently be categorised as follows:

(1)    Phrases including the word “alternative” in relation to Botox, as in “the accidental Botox Alternative”: in respect of the Protox product that is the phrases numbered 5 and 6, the Inhibox product phrases numbered 1-7, the Night products phrases numbered 1, 2, 4 and 5 and the Boost product phrases numbered 1-4.

(2)    Phrases referring to increasing the time for which Botox is effective, sometimes including the word “prolongs” or “prolong” in relation to Botox, as in “clinically proven to prolong the effect of Botox®”: in respect of the Protox product that includes the phrases in the relevant schedule numbered 2, 3, 4, 7, 9, 10, 11, 13, 16 and 18.

(3)    The phrases “a collagen injection in 5 sleeps, and a Botox injection in 4 weeks”, “Botox Injection in 4 weeks”, “Botox Injection in 28 days”, “BOTOX® INJECTION 4 WEEKS” and “Botox Injection 28 DAYS”: Night products 3, 6.

230    An evaluation of the manner in which Self Care uses the word BOTOX in the phrases that are complained of, including the purpose and nature of the use and the context of the use including the totality of the packaging, leads to the conclusion that those phrases are not themselves used as trade marks within the principles outlined at [159]-[163] above. There are a number of considerations that lead me to this conclusion.

231    In my view, none of the phrases is itself used as a badge of origin. Most of the phrases are narrative or descriptive phrases that include within them badges of origin such as PROTOX, FREEZEFRAME and BOTOX. For the most part, the inclusion of such clearly identifiable badges of origin within the narrative or descriptive phrases counts decisively against the phrases themselves being, or being used as, trade marks.

232    For example, the phrase “clinically proven to prolong the effect of Botox®” describes the product to which it relates and makes a claim about its efficacy, but it does not itself serve to say anything about its origin or about trade connection. Neither does it badge or name the product.

233    Essentially the phrases that are complained of amount to ‘ad-speak’ to spruik the relevant product, most often by either contrasting it to Botox or by saying that it can be used to improve the results of Botox such as by prolonging its effectiveness. They are not used as trade marks.

234    The only phrases that cause some hesitation with regard to whether or not they can themselves amount to trade marks or be used as trade marks are those without verbs such as “the accidental Botox Alternative”, “Instant BOTOX® alternative”, “Overnight Botox® alternative” and “Long term BOTOX® Alternative”. These phrases have the quality of being sufficiently short and catchy such as to possibly amount to labels for products and as such serve to distinguish them.

235    Each is descriptive of the product to which it is attached as an alternative to the well-known Botox product which is identified by name, but that quality of being descriptive does not necessarily mean that it is not used as a trade mark. A sign can both describe a product and serve as a badge of origin: Johnson & Johnson at 339 per Lockhart J and 347 per Gummow J.

236    Allergan submits that the use of capital letters for the first letter of several words in some of the phrases, or even in the spatial arrangement of the words such as one above the other, is indicative of the phrase being used as a label – essentially as a proper noun. I do not find that to be compelling. Capitalisation and spatial arrangement of the words are weak indicators and in any event are used inconsistently.

237    With regard to the phrase “Instant Botox® Alternative”, Allergan relies in particular on the following:

(1)    In 2009, Self Care conducted a week-long promotion of its Inhibox product in a large Myer retail department store which included erecting large banners with the phrase “Instant Botox® Alternative” prominently displayed. The banners were estimated by Ms Amoroso to be about two metres tall and the phrase took up about a third of the banner. In some of the banners the phrase was the only writing, whereas in other banners – referred to as tower toppers – there was a subsidiary phrase “freeze wrinkles instantly & long term”. The display is also apparent in a promotional segment from the television program, A Current Affair. From the segment it can be seen that the FREEZEFRAME branding is also prominent.

(2)    In August 2016, the Freezeframe website sales catalogue page for the same product labelled it as “Instant Botox® Alternative”.

(3)    In August 2018, advertising of the Inhibox product on the Freezeframe website again prominently labelled it as “Instant Botox® Alternative”.

238    There are also other examples of the use of the “Instant Botox® Alternative” phrase in relation to the Inhibox product. As indicated above, it is recorded on the box of the product. There was also evidence of it in other advertising and promotion on the Freezeframe website. There was also evidence of the use of the phrase in relation to the product on the Priceline retail pharmacy’s website at the time of the hearing in this case indicating its continued use.

239    Allergan asks that I consider the different types of uses of the phrases in question separately, i.e., the in-store promotion, on the packaging, on the Freezeframe website, on the Priceline website, and so on. However, in my view none of the uses amounts to use as a trade mark. With the exception of the in-store promotion, the relevant context is a plethora of different messages about the relevant product. It includes the umbrella brand, FREEZEFRAME, and the name of the relevant product to which it speaks which is itself clearly a badge of origin. There are invariably many other phrases that are also used to describe the product or to otherwise say something about it. The context is confusing – capitalisation is inconsistent, punctuation is inconsistent, messaging is inconsistent. In that confusion, the particular short phrases do not stand out as badges of origin.

240    The in-store promotion is perhaps a little different. Although the evidence is scanty, and it may be that other messaging was also present, in my assessment the particularly prominent – outstanding even – use of the catchy phrase “Instant Botox® Alternative” could amount to a badging of the product. It could be understood as saying not only what the product is, but also distinguishing it from other goods on the market and suggesting a connection to Self Care.

241    Against that, Self Care refers to a number of other traders of products that are similar to its products that use similar short comparative phrases with reference to Botox. For example, Dermallure, Celleral, Dermal Meds, Auralei and truvisage all use the phrase “BETTER THAN BOTOX”. Argireline uses the phrase “Botox in the bottle” and “The liquid Botox Alternative”. Heaven Skincare uses “The natural alternative to Botox” in respect of its product Bee Venom Mask. Skin Deva uses “BOTOX ALTERNATIVE”. Natox uses “New Organic Botox Alternative”, “Brand New Natox Anti Ageing Cream Botox Alternative” and “a New Botox Alternative”. Cosima uses “Natural Botox® Alternative”. Xara and StriVectin use “Better than Botox”. Lapureté uses “NATURE’S BOTOX® ALTERNATIVE”.

242    Ms Amoroso’s evidence was that the products referred to in the previous paragraph are “currently” on the market. That was said in April 2018. There was no evidence of how widespread the marketing of those products is or what “market” she was referring to. Many of the products appear to be marketed in other countries and may not be marketed in Australia. Nevertheless, her evidence on this point was not challenged and I take from it that there are at least a number of other products in the Australian market in respect of which traders use phrases of the nature recorded in the previous paragraph which are similar to the kinds of phrases used by Self Care about which Allergan complains in this proceeding.

243    From this, Self Care submits that it has never put itself forward as the only “Botox alternative” on the market or, to adapt the words of Kitto J in Shell Company at 425, it has never attempted to suggest to consumers that where they see those words they are thereby to recognise the goods of Self Care.

244    Whilst that can be accepted, I am not sure that it takes the matter all that far. In any event, all that I am considering at this stage is the use of “Instant Botox® Alternative” at the week-long in-store promotion in 2014. Whether or not Self Care put itself forward as the only Botox alternative, or whether or not consumers on seeing the marketing material at the promotion would have been conscious of there being other products that also promote themselves as alternatives to Botox, does not really answer the question whether the relevant phrase was used as a trade mark in that promotion.

245    Whilst the answer is by no means clear cut, and I am conscious of the conclusion that I have reached (which is set out further below) that the phrase is in any event not deceptively similar to any of the BOTOX marks, I do not consider that use of the phrase in a single in-store promotion for one week amounts to sufficient use or identification to constitute use as a trade mark.

246    That deals with the composite phrases that include BOTOX and whether the phrases are used as trade marks. It remains to consider whether Self Care uses the word BOTOX itself as a trade mark in its use of that word in the phrases that are complained of. There are a number of considerations which lead to the conclusion that Self Care does not use BOTOX as a trade mark.

247    First, Self Care uses BOTOX in a manner which distinguishes Botox from Self Care’s own products. For example, many of the relevant phrases use the word “alternative”, such as “the most powerful BOTOX® alternative”. That is a meaning that conveys the products to be different which suggests also that they have different origins.

248    Similarly, phrases such as those indicating that Self Care’s relevant product “prolongs” the effect of Botox, or makes Botox “last longer”, or reduces wrinkles even without injections, or which makes Botox look better or can produce a Botox-like visual effect, or produce better results than Botox, all serve to distinguish between Self Care’s products and Botox.

249    The Yeast-Vite case, discussed above at [163] above, is a good illustration of why Self Care’s use of the BOTOX mark does not constitute use of it as a trade mark. There, the one product was described as a “substitute” of the other. Describing one product as an “alternative” to another is not materially different. It serves to emphasise that the one is not the other. That was not use as a trade mark.

250    Thus, BOTOX is not used by Self Care as its own badge of origin, i.e., indicating that the product identified by that name originates from Self Care. Indeed, the opposite is true.

251    Second, the use of the ® (registered trade mark) sign adjacent to BOTOX, where that is done, acknowledges that BOTOX is a badge of origin for the well-known product of that name. It does not serve to indicate that it is Self Care’s product. In many instances, it is expressly recorded on the relevant packaging or in the relevant marketing material that BOTOX is a registered trade mark of Allergan Inc. That serves to make it particularly clear that Botox is not Self Care’s product, i.e., BOTOX is a brand of origin and the origin is Allergan, not Self Care.