Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2022] HCATrans 94 (13 May 2022)

Last Updated: 18 May 2022

[2022] HCATrans 094

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S161 of 2021

No S162 of 2021

B e t w e e n -

SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151)

First Applicant

SELF CARE CORPORATION PTY LTD (ACN 132 213 113)

Second Applicant

and

ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831)

First Respondent

ALLERGAN, INC.

Second Respondent

Applications for special leave to appeal

KIEFEL CJ
EDELMAN J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 13 MAY 2022, AT 11.30 AM

Copyright in the High Court of Australia

____________________

MR A.J.L. BANNON, SC: May it please the Court, I appear with my learned friend, MR A.R. LANG, SC, for the applicants. (instructed by Gilbert +Tobin)

MS S.J. GODDARD, SC: May it please the Court, I appear with my learned friends, MS S.L. ROSS and MS E.E. WHITBY for the respondents. (instructed by Griffith Hack Lawyers)

KIEFEL CJ: Yes, Mr Bannon.

MR BANNON: Thank you. Your Honours, the second respondent’s registered trade mark for BOTOX covers anti‑wrinkle creams in class 3 and injectable pharmaceutical preparations in class 5. The respondent’s market‑leading BOTOX‑branded product is an injectable anti‑wrinkle pharmaceutical preparation available only on prescription and administered by healthcare workers. The respondent did not supply a class 3 cream.

The applicants competing products were creams available without prescription and were self‑administered. They were class 3 goods and, hence, within a category of the goods for which the registration was registered. The primary judge found they were not goods of the same description within class 5, hence – and those findings were at appeal, hence it is only the class 3 aspect of the registration which is relevant to the question of infringement. One of the products supplied, as your Honours will have seen, was the freezeframe INHIBOX with the words “instant BOTOX® alternative”. An image of that appears at 225 of the application book.

EDELMAN J: That was INHIBOX, not PROTOX?

MR BANNON: That is right. Two clear brandings – both courts found two clear brandings, “freezeframe” and “INHIBOX”, and the residual question – which the primary judge found our way, the Full Court went the other way – was whether “instant” – the lowercase “instant BOTOX® alternative” was used as a trade mark (a) was it deceptively similar, et cetera.

EDELMAN J: Is there any real significance to the error by the Full Court in confusing INHIBOX and PROTOX at paragraph ‑ ‑ ‑

MR BANNON: We submit there is not. We will – because the deceptive similarity which they found with PROTOX was a reason why “instant alternative BOTOX” became a deceptive message, as their stated reasons – if I can come to that in a moment, your Honour. Then the other product was PROTOX, with the image which is at 216.

Now, the Full Court found that the BOTOX statutory protection extended to prevent Self Care describing its products branded as “instant BOTOX® alternative” on the packaging and the essential reason, we submit, was the counterintuitive conclusion that in some consumer’s eyes an anti‑wrinkle cream product could only be an instant alternative to BOTOX, the injectable product, if it was either BOTOX in a different form or licensed by the owner of BOTOX, notwithstanding the clear branding of “freezeframe” and “INHIBOX.”

This was despite the unchallenged finding by the primary judge that other competitors in the market were also using phrases of the same nature, such as “BOTOX alternative”, “the liquid BOTOX alternative” and the like in relation to similar products, in other words, creams. We submit the case poses this question as how can the trader ever legitimately present a product as an alterative to the market leader if not in this manner?

KIEFEL CJ: You say that the Full Court suggested that although it was said to be an alternative product, it was nevertheless coming from the same source?

MR BANNON: That is right.

KIEFEL CJ: That is the essential problem?

MR BANNON: I am sorry, your Honour?

KIEFEL CJ: That is the essential difficulty with the Full Court’s approach?

MR BANNON: That is the essential difficulty, yes, but it is informed, we say, by errors of principle in how they got there, which I will endeavour to address, your Honour.

KIEFEL CJ: Yes, thank you.

MR BANNON: We submit that is because of an inappropriate interpretation and application of the trade mark principles. In a similar way, the court found that PROTOX was deceptively similar, again because although no consumer would confuse PROTOX and BOTOX, a consumer might think that BOTOX was – because BOTOX was an injectable preparation, PROTOX was the respondents’ pre‑preparation.

Before going to the specific errors, can I identify two important background findings of fact which were not disturbed on appeal. The first is the primary judge found that the applicants’ intention in using the phrase “instant BOTOX® alternative”, INHIBOX and PROTOX was not to mislead or deceive consumers as to any affiliation. On the contrary, it was to differentiate the applicants’ products from those of the respondent and to use that differentiation as a means of leveraging off the reputation of BOTOX, which was legitimate competitive activity.

Could I track your Honours through those findings? First, at application book 32 of the primary judgment, judgment paragraph 71. The first sentence refers to evidence of Ms Amoroso, who was the principal of the applicants, as to why she had chosen the names. Then paragraph 73, last two sentences on application book 33 – this is where the statement:

the intention was obviously to leverage off that fame –

and then 75 sets out Ms Amaroso’s understanding and intention in relation to the meaning of the term ‑ ‑ ‑

EDELMAN J: But the intention does not conclude the inquiry. Findings as to intention do not conclude the inquiry.

MR BANNON: No, but it informs, for example, whether it is comparative advertising and whether those defences have a subjective belief. But it also – analysing this finding clarifies what the primary judge’s finding was in relation to leveraging off reputation. It was not a pejorative finding. It was saying – as you are allowed to do in fair competition, namely – you, the brand leader, have made a market. You have done all that work. I am perfectly entitled to say, “I am better than you”. Now, that can be misleading if you are not better than you, but that is leveraging off that reputation by saying “I am different, but I am an alternative”, so that is a legitimate – and that is what the primary judge found. We say a lot of what the Full Court did is infected by a misunderstanding of that finding. But just to complete this walkthrough ‑ ‑ ‑

KIEFEL CJ: But apart from the defences, how is intention relevant to the comparison?

MR BANNON: It is relevant for the comparison but – well, it is relevant to some of their findings in relation to deceptive similarity. Their Honours used the finding about leveraging to support deceptive similarity in two instances. But is important on the defences, your Honour.

KIEFEL CJ: Yes.

MR BANNON: So, if I could just complete it on – so that is 75. Then paragraph 208 at 63 of the application book, the last few lines:

given my acceptance above that the general understanding . . . is as an anti-wrinkle injection, I do not think that this use demonstrates an intention to appropriate the trade . . . but rather . . . to differentiate . . . The intention was not, in my assessment, to say to the public “this is BOTOX”, but to say the opposite – “this is not BOTOX”.

Then, finally, at 119, 468 and 469 his Honour ties those together to say that the leveraging was doing something perfectly legitimate. There was an appeal against that finding which was rejected, and that is at application book 222 at 38 and 40, namely whether there was an intention to mislead. The second finding of the primary judge which was not appealed appears at 464 at 118 – or 461 and 464, that his Honour rejected the ACL case – this Consumer Law case of the affiliation representation – including for the reason in 464 – and one of those was based on the appearance on the box. If one tracks back through 454 and 455 and back to 114, one will see one of the – the appearance on the box of “instant BOTOX® alternative”. His Honour found that that was not misleading and obviously that was an objective finding. There is no appeal against that.

One then comes to the errors of reasoning. The first was that “instant BOTOX® alternative” was a phrase used as a trade mark. We say, unlike the primary judge, the Full Court did not apply the correct test, which is impression and how does it present, but first analysed whether or not there was a deceptive message and used that as a basis for its conclusion that it was used as a trade mark. Further, that was informed by the error in relation to PROTOX and BOTOX – PROTOX and INHIBOX. Can I just identify the reasons of the primary judge very briefly at application book 67? His Honour starts at 228 considering:

the way in which Self Care uses the word BOTOX in its various composite phrases -

and 229(1) includes the alternative phrases which – this is the relevant one. Then at 230 on 68 is his Honour’s conclusion, in accordance with the authorities:

An evaluation of the manner in which Self Care uses the word BOTOX in the phrases . . . including the purpose and nature . . . the totality –

applying the principles in 159 to 163, which is Esso, et cetera, means that it is not used as a trade mark. At 238 on 69,his Honour says, first sentence:

There are also other examples of the use of the “Instant BOTOX® Alternative” . . . it is recorded on the box –

and then over at 239 his Honour concludes – it is really the last sentence after going through that, referring to “FREEZEFRAME”, et cetera:

do not stand out as badges of origin.

Then at 246 on page 71, his Honour starts on a different topic, which is:

That deals with the composite phrases -

The next is, is BOTOX, by itself, used as a trade mark? At 246 his Honour starts and looks at the Yeast-Vite case, which is – the wording was, I think – the alternative to Yeast-Vite – substitute for Yeast-Vite, sorry – and his Honour’s reasons go through there. But that is not dealing with the part about the composite phrase.

Now, when one comes to the Full Court’s reasons at 50, which is at 226, was it used an alternative trade mark, at 51 their Honours refer - sorry, paragraph 49, to paragraph 234. But then at 51 their Honours deal with the reasons, but they are dealing with the reasons in relation to the use on its own and they say his Honour got it wrong in relation to that matter. Their Honours are dealing with the wrong reasons, that is whether BOTOX is used as a trade mark on its own. It is in that context, we submit respectfully, that one comes to paragraph 57 where one sees the paragraph at 228, top of the page:

The word “alternative” implies that the products are different, and there is a choice between them, but it does not necessarily imply that the trade source is different.

Again, that is not the test as to whether there was a trade mark use – whether it appears as a trade mark.

Given the similarities in the words PROTOX and BOTOX, the labelling of PROTOX as “instant” . . . implies an association –

So that is the importance of the relationship. In other words, if you did not have a similar name, the reasoning does not support that. Then, secondly, a few lines down:

Describing a product as an “alternative” to another product does not, of itself, say anything about who is offering the choice.

Well, ordinarily, that would suggest it is not a badge of origin. Then 65 is a key paragraph, and they say there:

The evidence established that results from treatment by injection of Botox typically took a number of days. The phrase . . . might reasonably be understood to refer to a product in the Botox range which works instantly . . . refer to an alternative form of Botox . . . Whilst the words “instant” and “alternative” are descriptive, the phrase . . . was not being used in a purely descriptive way . . . rather, the phrase was being used to denote some trade source connection with those products, albeit the product was not Botox.

Then they go on to say therefore – well, that informs their reasoning. But it is the wrong approach.

EDELMAN J: Ultimately, your complaint is that the Full Court misapplied well‑established principles.

MR BANNON: Yes, but that introduced ‑ ‑ ‑

EDELMAN J: That is not really a point of public importance. Your point of public importance really seems to relate to the reputation questions.

MR BANNON: Yes, your Honour. We say this is of importance because they have introduced a new test, namely you examine deceptive similarity of the trade mark use. Well, I will move on, your Honour. Could I then go to deceptive similarity which is at paragraph 74 of the Full Court’s reasons, which is at 231. That reasoning at 74 and 75 is informed by the reputation of BOTOX as an injection. In other words, because the BOTOX had only used it in relation to injectable substances, someone saying “BOTOX” or any reference to “BOTOX” on a cream alternative might think it is a brand extension or related. But that, using reputation, is incorrect (a) and using reputation in relation to goods which are not the relevant part of the category of goods – in other words, they are using it in relation to pharmaceutical preparations where the time‑honoured test, which his Honour identified at application book 56 in paragraph 173:

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.

Now, this is critical because the reason for the deceptive similarity, both in relation to PROTOX and in relation to – alternative to – instant alternative, INHIBOX, was the finding that BOTOX is well known in relation to pharmaceutical preparations. They had not used it on creams, is the unstated supposition. To see somebody else using it on a cream in any sense – or PROTOX – would cause somebody to be deceived.

But that is applying a fundamentally incorrect test. You look at notional use. So, the notional use would include BOTOX being used on creams. If one adds that into the equation, the foundation for their reasoning completely disappears.

EDELMAN J: Putting to one side any possible ambiguity in the broad generalised statements that reputation cannot be considered, what do you say to the respondents’ submission that what you are submitting now is exactly the opposite of what you submitted in the Full Court? In other words, in the Full Court, you were urging reputation to be considered, but now you are saying that reputation cannot be considered.

MR BANNON: Well, we specifically put a submission that reputation in relation to – use of the mark has to be used in relation to the putative category. The use is putative use in relation to the category of goods. That is the matter we have referred to in our special leave application at paragraph 62.

KIEFEL CJ: I am sorry, I do not follow that, Mr Bannon.

MR BANNON: The point being made in paragraph 173 is you look at putative use across the category. We submitted before the Full Court the same point we put in paragraph 62 of our special leave application - this one, that you have to take into account putative use across the category which would putatively assume BOTOX had been used as a cream. That is at application book 286, your Honour. That is not trammelled at all by whether one addresses reputation one way or another. That is just fundamental error. That is the only way you get to the deceptive similarity findings on both counts. The oddity is, and one might say, perhaps arguably, the legal perversity is their protection was extended by the fact they had not used it in relation to one of the categories for which it was registered. That is something this Court ought to look at.

Now, in relation to the defences, their Honours said they do not apply if there is trade mark infringement. We have set out reasons why that is an issue to be determined. The very reference to trade mark – the
definition of a “trade mark” is - in relation to comparative advertising includes use in the connection of the course of trade. So, that is in the defence. So, prima facie, it is suggested to apply where there is a trade mark infringement, if our other arguments are wrong.

The suggestion of “was it comparative advertising with another product” is contradicted by the Full Court’s own findings where they found that there was a comparison between the products as to the effects. They said it was misleading. We say that was wrong because it did not last as long as BOTOX.

The third argument they provided was – sorry, reason they provided was the defence of comparative advertising only applies if you have trade mark use on its own, but you will never have anything – you will never have comparative advertising which uses the trade mark on its own.

So, these are important issues, we respectfully submit, that this Court ought to consider. It has not been considered by this Court or, indeed, properly by any court. There is a debate in the authorities – at least in some of the decisions – as to whether any of these defences apply in circumstances of infringement.

EDELMAN J: Mr Bannon, just before you conclude ‑ ‑ ‑

MR BANNON: Yes.

EDELMAN J: Just so I understand your previous point, your submission in the Full Court for the ubiquitous reputation of BOTOX as an anti‑wrinkle injection meant that the marks were not deceptively similar, and your submission that in the context where ubiquitous reputation as an anti‑wrinkle injection to have a cream product that is described as “BOTOX alternative” is indicating that it is something else, that – those were submissions, as I understand you to be saying, that were not really concerned with reputation as such, but they are concerned with putative use. Is that right?

MR BANNON: Yes. Well, perhaps to put it slightly another way, the correct approach is putative use. Putative – the correct comparison requires putative use of the relevant class – the only class which it could infringe – which was creams. So that is what we put and that is why we say the effect of – the effect of them not – the effect of the Full Court’s.....by not using it in relation to the relevant class, they actually get wider protection, and that cannot be right. Well, if it is, then that is something that this Court should confirm or say otherwise. I think my time is up. If it please the Court.

KIEFEL CJ: Yes, Ms Goddard.

MS GODDARD: May it please the Court. Your Honours, the applicants’ arguments about subverting the Trade Marks Act by the wrongful use of facts or reputation by the Full Court conflates the question of deceptive similarity where we submit – we agree that factual reputation is irrelevant – with the different question of whether there has been use as a trade mark.

In relation to use as a trade mark, when the accused mark, as here, invokes the registered trade mark for its meaning, the words “instant BOTOX® alternative”, there is no question of expanding the scope of the prior registration or impermissibly relying on the extent of its reputation. The applicants’ mark, “instant Botox® alternative”, expressly refers to BOTOX and invokes some of its attributes – or let me put it this way, invokes some understanding of what BOTOX is. That is not applying reputation in a.....sense, we would submit, and the Full Court did not do so in deciding the use as a trade mark question.

EDELMAN J: Ms Goddard, there may be a very large question as to what is meant by this proposition that reputation is irrelevant.

MS GODDARD: Yes, your Honour.

EDELMAN J: First of all, what reputation means, why there are apparent exceptions to that and what are the exceptions to the exceptions. This Court has never considered that ‑ ‑ ‑

MS GODDARD: No, your Honour, although we would submit that on analysis it is not what the Full Court was doing in this particular case. So that it is – we say of course the phrase “instant BOTOX® alternative” is communicating something about what the applicants call comparative advertising and we disagree. It is something to do with BOTOX, but it does not, in any event – and the other thing is, the Full Court found in analysing the phrase in paragraph 74, it implies that the – that phrase implies the product works faster and one can see it could – it also implies that it is different from BOTOX, but it does not require any further knowledge about the reputation or the extent of BOTOX to understand what the expression means on its own.

We would submit there is no special category of comparative phrases under the Trade Marks Act, just as there is no special category of descriptive phrases, as the Tub Happy Case shows. The question in each case is always applying the statutory tests, has it been used as a trade mark and is it deceptively similar? That is what the Full Court did, we would submit, in an orthodox fashion.

There is – like in the Shell Case, the Court looks at the images of the oil‑drop man and asks would that appear as possessing the character of devices or brands which the appellant was using in relation to petrol for the purpose of indicating a connection between the product and Shell, in that case.

So, most of the uses of reputation our friends complain of relate to that question in that they – they highlight paragraph 65 of the Full Court’s decision in the context of the use as a mark, and we submit that looking at that section, the court has posed the critical question correctly at 64, that is whether the phrase as a whole was used as a trade mark. That involves an assessment of the phrase in the context and the way in which it was used. That is a correct application of Shell. At 65 the court says:

The phrase . . . might . . . refer to a product in the Botox range which works instantly –

or:

an alternative form of Botox –

et cetera. That is an example, we submit, where it is entirely legitimate to make some assumption about what BOTOX involves, but that assumption does not depend on the reputation of BOTOX, it depends on the context in which the phrase “instant BOTOX®” is used.

EDELMAN J: A very fine – there might be a very fine line between those two notions.

MS GODDARD: Yes, your Honour, although, of course the – we submit that this one paragraph that our friends rely on to, in effect, initiate the Full Court’s judgment on this needs to be looked at in the context of what else the Full Court did. Of course, the Full Court analysed the product packaging in a traditional way, as they should have. The package for the INHIBOX product is at 47 at application book page 225. One can see the marks there. There is “INHIBOX” and “freezeframe” and “instant BOTOX® alternative”. At paragraphs 66 and 67, they analyse what they say about the packaging and find that plainly “INHIBOX” and “freezeframe” are used as trade marks in the opinion of the Full Court. So is “instant BOTOX® alternative” in that context.

One can see why when one – and then, at paragraph 48 they address the online advertisement, which – your Honours, if you will have a look at application book 225, which we submit clearly uses the phrase as a trade mark, and, as the Full Court found at 69, the words were – it is almost – it certainly dominates “freezeframe” or any other mark there - and the words are clearly identifying the product acting as a brand to identify the applicants’ product in context and together - in that context with the depiction of the syringe ‑ ‑ ‑

EDELMAN J: Ms Goddard, do you say that there is any phrase that the applicant could have used containing the word “BOTOX” to compare its product to BOTOX on its packaging that would not have been deceptively similar?

MS GODDARD: They can use a phrase that – well, for example, I think on the side of the old pack there used to be the words “the world’s first long-term and instant BOTOX® alternative”, I think it - as a slogan on the side of the pack. We do not say that is a trade mark use in that context. It may have other problems in other areas of consumer law, but that is an example of where one can use a phrase which may not incorporate – or may incorporate – uses the trade mark but is a – is a descriptive sentence that – where that trade mark does not function as a brand. But, of course, it is always hard to think of examples on the spot and in any case that is ‑ ‑ ‑

EDELMAN J: But that would not be an infringement, and yet “instant BOTOX® alternative” would be.

MS GODDARD: Yes, your Honour, because the question is not – the words are not looked at out of context. One looks at the way they are looked on the – the way they appear on the packaging. That includes where they appeared – either on the front of the pack – and the way they appear on the online advertisement. That is the point where we are – Shell says context is all. It is all about the context and – more than the – not more than the content, obviously, but that is the principal question.

EDELMAN J: So, the “long-lasting” or phrase that you described on the old packaging, if that were on the front, then that would have been a trade mark infringement?

MS GODDARD: If there were only those – normally, of course there is a range. There is a spectrum of uses. But the shorter and catchier the phrase, to pick up a statement by his Honour the primary judge, the closer one might get to a trade mark use. It is more apt to be used in a trade mark sense in that way. So, your Honours, the other thing about the passage at paragraph 65 is the Full Court is there answering our friend’s submission that the words are purely descriptive, as one can see from the final parts of that:

Whilst the words “instant” and “alternative” are descriptive . . . was not being used in a purely descriptive way –

Secondly, the Full Court is answering the earlier argument put by the applicants, which is noted at paragraphs 55 to 56, that the word “alternative” alone dispelled any possibility of – there they say, “confusion as to trade source”. That, we submit, if there is any confusion with the deceptively similar test that was created by our friend’s submission, as recorded in that section, the question of confusion as to trade source is a matter that relates to the deceptive similarity analysis and not use as a trade mark.

Secondly, the Full Court is answering the submission based on the primary judge’s approach to it that the use of “alternative” was sufficient alone to prevent trade mark use. Of course, we would submit that the Full Court was correct in paragraph 57, saying that that is only helpful if one identifies what is being differentiated. The word “alternative” implies certainly that the products are different, but it does not say anything else about them.

But there is no error, we would submit, in the Full Court’s reasoning, to answer your Honour’s question - in paragraph 57 we would submit. It is plainly a slip for – the reference there to “PROTOX” should have been a reference to “INHIBOX”, and the passages my friend took your Honours to at – the primary judge at 73 and 208, make it clear ‑ ‑ ‑

EDELMAN J: It must be more than a slip, though, because if you substitute the word “INHIBOX” into the sentence, it does not make sense, given the similarities between the words “INHIBOX” and “BOTOX”. “PROTOX” and “BOTOX” are similar as words.

MS GODDARD: Yes, your Honour, although there was evidence from the director of the applicants who had said that she had not tendered the “box” word in “INHIBOX” to suggest BOTOX, and that is what his Honour is recording at paragraph 73 of the primary judge’s reasons. It was on that basis that he held, similarly, the “tox” in “BOTOX” was a deliberate or intentional reference. That is the passage my friend took your Honours to at 208.

Your Honours, at the conclusion - we submit the conclusions in paragraph 57 of the Full Court’s reasons do not depend on that “PROTOX” slip, and there their Honours are rightly, we would submit, setting out what inferences might be drawn from the use of the word “alternative”, firstly that it:

depends on context –

and that is a simple application of Yeast‑Vite and Shell. The second reason:

Describing a product as an “alternative” to another product does not, of itself, say anything about who is offering the choice.

We accept that might be answering the deceptive similarity question, but then their Honours move on to:

The use of the word “alternative” does not necessarily negative use as a trade mark.

We would submit there is no problem with that reasoning, and we submit there is no principle, of course, that a phrase like “alternative”, a phrase that includes a word like “alternative” or “substitute” cannot be used as a trade mark. That is not what Yeast‑Vite stands for. We would submit it does not go so far as the High Court suggests in Mark Foy’s at 204, and in Shell. It is the proposition that the use must be use as a trade mark, and that is then – we go back to context.

That is, of course, now enshrined in section 17, in section 120. The Mark Foy’s Case that their Honours go to in the passage at paragraph 59 is apposite. The public was not being invited to compare – if I can interpolate – the applicants’ goods with the BOTOX goods of the respondents:

They are being invited to purchase goods . . . which are to be distinguished from the goods of other traders partly because they are described as –

“instant BOTOX® alternative” goods. In other words, they are used in a branding sense here, and the “partly”, of course, recognises that you can have more than one mark, as the Full Court goes on to consider at paragraph 66. Then in paragraph 67 their Honours just look at the other argument which was that, effectively, the ® symbol also precluded there being use of a trade mark of the “instant BOTOX® alternative” mark. So, your Honours, we would submit that the court does not stray into misuse of reputation, and its analysis of the use as a trade mark question was entirely appropriate and correct.

Our friend’s second argument concerns deceptive similarity and reputation. This is an area where we have always said it should not involve extraneous evidence about reputation of the mark in suit, the registered mark, and so far as we can see, your Honours, the criticisms of the Full Court boil down to paragraphs 65, 75 and 43 of the Full Court’s reasons.

Our friends do not dispute the proposition that confusion, relevantly, means confusion as to trade source, that is, the result – the Southern Cross test, which is not in dispute, is whether there is a real risk that the result of the user of the mark will be, does your Honour.....a number of persons will be confused as to the source of the product or whether they come from the same source as the source of the registered mark.

That, as properly analysed, where the Federal Court used an expression like “a product in the BOTOX range” in paragraph 75 of the Full Court’s reasons, the court was not wrongly using reputation or brand extension, as our friends put it there, but rather they were applying the hypothetical test from Southern Cross. First of all, your Honours, the Full Court had to decide this for itself, because the primary judge had made the error of merely comparing the marks for the marks, and not:

asking whether a consumer would be caused to wonder whether the products came from the same source.

We see that in paragraph 72 of the Full Court’s reasons. He referred to whether they would be “mistaken” for each other or confused with each other, rather than asking whether consumers would have thought that they came from the same source as BOTOX. At paragraph 73, which is where the Court commences the comparison of trade marks analysis, which is by a conventional – comparison of the marks, asking what is the – their Honours look at the most distinctive and memorable word or the “dominant cognitive cue” in some cases, in Accor and Pham Global, and find that “BOTOX” is the essential distinctive feature of the mark.

At paragraph 74, they go on to – and remembering, we are comparing, here, a single‑word mark with a composite phrase, “instant BOTOX® alternative”, and assessing the impact of that phrase in its totality, then they look at the impact of “alternative” and “implied” and in paragraph 74, as I have previously submitted, it implies that:

the product is different to Botox, but it does not necessarily imply that the products are not associated . . . The word “instant” implies that the product works faster than Botox –

We would submit you do not need to go beyond the end of that sentence, although their Honours do refer to the injection there. At the end of paragraph 74:

The use of these descriptive words around the dominant word “Botox®” make the phrase less similar to BOTOX, but there is a real risk –

that people will - consumers will believe that the products come from the same source. Just in answer to – or just to remind your Honours, of course, the particular mark in this case, the BOTOX mark, is an unusual one, because it was a defensive mark, which unusually gives the respondents a registration in a class of products in which it does not trade, and it is an unusual type of trade mark.

There is no need to - there is no problem with assuming the full ambit of the class of goods which it has covered. The point is it is allowed to have registration in a class of goods in which it does not trade and that is what their Honours are referring to at the end of paragraph 75 with the reference to his Honour the primary judge’s finding at paragraph 334 – and that is really applying the test for a defensive trade mark. If the BOTOX mark was applied to a topical cosmetic product ordinary, reasonable consumers would draw a connection between that product and the owner of the trade mark “BOTOX”. Of course, that is assuming the use of BOTOX mark simpliciter, we accept.

So, your Honours, by the time we get to paragraph 75 and the matter - the first sentence to which our friends object:

Consumers may reasonably have wondered whether the product was a new BOTOX product, being a cream which, unlike the injection, brings “instant” results –

first of all, the court has already made the finding at the end of 74 as to the likelihood of confusion and here – probably, the Full Court should not have used the words “unlike the injection”, but one could use the neutral words “unlike the other product being invoked” without changing the meaning or the result, and we would submit that statement does not affect the correctness of the test posed in paragraph 72, nor the application of it in paragraphs 73 to 74. There is no error in paragraph 76. That is that finding of deceptive similarity – sorry, your Honour?

EDELMAN J: The question of whether consumers would reasonably have wondered that, in answer to that, may depend in part on reputation, would it not?

MS GODDARD: Well, we would submit that it does not need to, in the present case, and ‑ ‑ ‑

EDELMAN J: Because BOTOX has a very wide reputation in its sphere.

MS GODDARD: Of course, that is true, although we would submit that that does not need to factor into the finding that a mark that calls itself “instant BOTOX® alternative” could be – one might easily think that that comes from the same source as BOTOX products - this is an instant BOTOX product. So, in and of itself it does not, we would submit, need to go so far as requiring understanding or assumptions or knowledge about the extent of BOTOX, or even that it is an injection. The fact that this is instant, and the fact that it is a different form of, or a different type of it, is already there in our friend’s mark, we would submit.

So, just quickly dealing with – the PROTOX mark, we would submit, was – similarly, the Full Court did not stray into the reputation, as our friends submit. The Full Court’s musing at paragraph 43, from – starting with those words “perhaps”, is really just that and again, the court has already made the findings and applied the appropriate test from paragraphs 41 to 42. We would submit that it does not, again, vitiate that reasoning.

Can I just quickly say something about the defence? The section 122(1)(d) defence clearly requires use of the trade mark in issue, not a deceptively similar mark. The Full Court correctly found, and it is not in dispute, that the mark being used by our friends is “instant BOTOX® alternative”. That is at paragraph 121 of the decision. They are not using “BOTOX” on its own. The words of the section clearly differentiate different types of use, for good reason. The first one is whether - paragraph (a) is where the person uses:

(i) the person’s name . . .

(ii) the name of a predecessor –

Subsection (b) is “a sign”, which might be any descriptive - quasi‑descriptive phrase, and (c) is “the trade mark” and (d), for comparative advertising, is the use of the trade mark. Where they want to use – and similarly in (f), which is the test of whether – the defence of whether:

the court is of the opinion that the person would obtain registration of the trade mark in his or her name if the person were to apply for it –

As the Full Court pointed out in the Anchorage Case, that means the trade mark, the trade mark in the registered trade mark, not some other mark, and where the legislature wanted to extend that to deceptively similar marks, subsection (fa) was enacted to extend that to the use of marks that are:

substantially identical with, or deceptively similar –

So that, we would submit that as the Full Court’s reasoning is correct in terms of the construction of the words of the section, and our friends just have not used that phrase in respect of their products ‑ ‑ ‑

KIEFEL CJ: I see the light is on, Ms Goddard.

MS GODDARD: Thank you, your Honours.

KIEFEL CJ: Anything in reply, Mr Bannon?

MR BANNON: Just very briefly, your Honours. Firstly, the question of how reputation applies to a statutory regime which is designed to effectively avoid that question once you get registered is an important question. It is true, I think, as your Honour Justice Edelman alluded to, that some authorities have indicated reputation can be used in one sense as a negative, and this was referred to at page 58 of the application book, paragraph 182 of the primary judge’s reasons, namely, that an ubiquitous reputation may limit the scope of the protection, but there has been no case which expands the scope of protection, which we say has happened here.

Our learned friends say 74 of the Full Court’s reasons is independent. It is not, but 74 and 75 are related. Paragraph 75 explains their reasons, and 75 picks up all the matters which we say involve error, and secondly 43 is not “musing”, it is critical to it. So, it does raise this important question, an expansion of a protection by this means which we say is impermissible and in an important area of comparative advertising.

Lastly, just on the point of what tests they have applied for trade mark use, the question of trade mark use is whether whatever has been used by the alleged infringer is being used to convey that these are the goods which – this badge is something you should associate with our goods, but it may be the alleged infringer’s goods.

We say the test effectively employed by the Full Court was to ask the question, are the words being used to indicate an association with the trade mark owner and if it is that informed, at least, their badge of origin, and that is error. May it please the Court.

KIEFEL CJ: The Court will adjourn to consider the course it will take.

AT 12.18 PM SHORT ADJOURNMENT

UPON RESUMING AT 12.19 PM:

KIEFEL CJ: There will be a grant of special leave in this matter. Mr Bannon, what is the time estimate?

MR BANNON: I would have said a day.

KIEFEL CJ: Ms Goddard, would you agree with that?

MS GODDARD: Yes, your Honour.

KIEFEL CJ: Thank you. The Senior Registrar will send directions and timetables to the parties.

The Court will now adjourn.

AT 12.20 PM THE MATTER WAS CONCLUDED