Australia: Courts Clarify Key Components of National Trademark law

In summary

In the past year, there have been a number of important Australian trademark decisions that have clarified important areas of trademark law for practitioners.

Discussion points

• High Court’s clarification of the relevance of the reputation of a trademark when determining infringement
• High Court and Federal Court’s continued consideration of what constitutes use as a trademark
• Guidance of the Full Court of the Federal Court on the relevance of Nice Classifications when considering the scope of a trademark registration.

Referenced in this article

• Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor
• RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd
• Energy Beverages LLC v Cantarella Bros Pty Ltd

Injunctions at a glance

Relevance of the reputation of a trademark in determining infringement

In March 2023, the High Court of Australia (the most senior court in Australia), handed down its decision in Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor (Self Care).^[1] The decision was important as it clarified the extent to which the reputation of a trademark is relevant, when determining deceptive similarity under the Trade Marks Act 1995 (Cth) (TMA).^[2] In circumstances where infringement of a registered trademark is alleged in respect of a non-identical trademark, the registered trademark owner must show that the other trademark is deceptively similar to the registered mark.

The proceedings were brought by Allergan, which is the manufacturer and owner of the famous BOTOX cosmetic injection product and brand. Allergan owns numerous Australian trademark registrations for ‘BOTOX’.

Allergan commenced trademark infringement proceedings against Self Care, a company that sold various anti-wrinkle products under the names ‘PROTOX’ and ‘FREEZEFRAME’.

One of the issues in the case was whether the trademark ‘PROTOX’ was deceptively similar to the trademark ‘BOTOX’. The primary judge in the Federal Court of Australia found that the ‘BOTOX’ trademark had a ‘ubiquitous reputation’, and as such consumers were unlikely to have an imperfect recollection of the ‘BOTOX’ mark and would not confuse the ‘PROTOX’ mark with it. On appeal, the Full Court of the Federal Court of Australia (the Full Federal Court) overturned the decision, finding that while consumers may not confuse the trademarks, the significant reputation of the ‘BOTOX’ trademark for injectable treatments may cause consumers to wonder, when seeing an anti-wrinkle product under the trademark ‘PROTOX’, whether it was made by the same company as the former.

On final appeal, the High Court reversed the Full Federal Court decision, and found that the reputation of BOTOX was irrelevant to whether the two trademarks were deceptively similar. The High Court found that the correct test for deceptive similarity is to:^[3]

compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used).

In support of this finding, the High Court noted that the reputation of a trademark is expressly relevant to a number of provisions of the TMA, but is not referenced in the infringement provisions. In addition, the Court noted that it was important that a person can inspect the publicly available Register of Trademarks, and determine based solely on it the scope of monopoly of any registration. The Court also noted that if reputation were to be considered relevant to a finding of infringement, it would complicate straightforward legal tests in infringement actions.

Based on this, the High Court disregarded the reputation of the ‘BOTOX’ trademark in Australia and considered solely whether the trademark ‘PROTOX’ as used by Self Care was deceptively similar to the notional trademark ‘BOTOX’. The Court found that the words were sufficiently different and that a notional buyer with an imperfect recollection would not confuse the two marks.

This decision was important as it confirmed that the reputation of a registered trademark is irrelevant to trademark infringement under sections 120(1) and 120(2) of the TMA. This will have a number of implications for brand owners and infringement proceedings. The reputation of a trademark registration has, for some time, been somewhat of a double-edged sword for trademark owners. Some have sought to rely on the fame of their trademark in an effort to extend the monopoly of their trademark to a broader range of goods or services, and to bolster claims of infringement against similar trademarks. On the other hand, some owners of famous trademarks have faced uncertainty as to whether they could ever demonstrate that a similar mark was deceptively similar when it was highly unlikely that a consumer would by confused by the similar mark having regard to the fame of the registration. This decision confirms that the fame of a registration is irrelevant, and that the scope of monopoly of a trademark registration must be determined simply by looking at the Register of Trademarks.

Use of a trademark

What constitutes use as a trademark is a concept that has important implications for a number of aspects of the TMA and trademark practice, including, importantly, a party’s ability to register a trademark and maintain the registration and the circumstances in which use of a sign can constitute trademark infringement.

Despite being a seemingly straightforward issue, historically the question of whether a sign has been used as a trademark or which trademark has been used, or both, has given rise to numerous questions for the court. This is reflected in a series of cases before the courts in the past year.

One such case was Self Care, in which a second claim made by Allegan related to Self Care’s use of the phrase ‘instant Botox® alternative’ (the Botox Phrase) on its various wrinkle treatment products. An example of one variation of Self Care’s packaging displaying the Botox Phrase is shown in Figure 1.

Allergan alleged that the Botox Phrase constituted use of a phrase as a trademark, which is a requirement for establishing trademark infringement, and that the trademark was deceptively similar to Allergan’s various ‘BOTOX’ trademark registrations.

The primary judge in the Federal Court rejected Allergan’s argument, finding that the use of the Botox Phrase did not constitute use as a trademark. However, on appeal, the Full Federal Court reversed the finding. The Full Federal Court’s rationale for finding use as a trademark was that Self Care’s use of the Botox Phrase ‘implie[d] an association in the trade source of the different products’ and ‘was being used to denote some trade source connection with [Allergan’s products]’.

Self Care also appealed this aspect of the Full Federal Court’s decision to the High Court. In its judgment, the High Court placed emphasis on the nature of a trademark to consider what would constitute use as a trademark. It noted that a trademark is a sign used to distinguish goods dealt with by one trader from goods dealt with by other traders (ie, a badge of origin to indicate a connection between the goods and the party that applied the trademark). In addition, it confirmed that:

• whether a sign has been used as a trademark is assessed objectively and without reference to the subjective trading intentions of the user;
• the objective purpose and nature of use are assessed by reference to context; and
• the context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.

In Self Care, three aspects of the context in which Self Care had used the Botox Phrase supported a conclusion that there was no trademark use:

• It was used inconsistently in terms of size, font and presentation on Self Care’s products and website, meaning that it was less likely to be perceived as a badge of origin by consumers.
• It was always used alongside two clear badges of origin: the umbrella brand ‘FREEZEFRAME’ and the product name ‘INHIBOX’, both of which were distinctive and stylised signs that were likely to be perceived as brands by consumers. The presence of these prominent brands diminished the likelihood that a consumer would understand the Botox Phrase to operate as a brand or a trademark.
• It described a feature of the product – that is, that it was a wrinkle treatment that was an alternative to Allergan’s BOTOX product. Although the Court noted that a sign can be both descriptive and serve as a badge of origin, in this instance, it found that the Botox Phrase was only being used descriptively.

Based on these matters, the High Court found that the phrase had not been used as a trademark, resulting in the Court overturning the Full Federal Court’s finding that Self Care had infringed Allegan’s ‘BOTOX’ registrations by using the Botox Phrase.

A number of other recent Australian cases have also illustrated other issues arising in relation to the question of ‘use as a trademark’. An example is RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd.^[4] In this case, Reckitt Benckiser (RB) was the owner of an Australian trademark registration comprising an image of its Finish Powerball product.

Henkel marked and sold a product called SOMAT Excellence 4in1 dishwasher gel caps (the Somat Product). The Somat Product had packaging which displayed a stylised image of one of its gel caps (the Somat Device).

RB commenced proceedings against Somat in the Federal Court, alleging that Somat was using the Somat Device as a trademark and that it was deceptively similar to its registration (along with another trademark registration owned by RB). Somat, in turn, filed a cross-claim against RB, alleging that RB had not used the registration over a three-year period, such that it should be cancelled by the Court on the basis of non-use under section 92 of the TMA.

RB argued that it had used its registration when advertising and selling its Finish Powerball products. Specifically, RB’s Finish Powerball products were sold in a number of different packaging variations including those shown in Figures 4 and 5.

The packaging in Figure 4 notably included a stylised depiction of a Finish Powerball product in the middle of the packaging, consisting of a tablet, a red ball floating above the tablet and a ‘star burst’ behind the red ball (the Powerball Device), and smaller images of the actual Powerball products (shown just above the purple triangle in Figure 4) (the Powerball Images). The packaging in Figure 5 had a clear window that allowed the consumer to see the actual Powerball products included inside the packaging.

The Federal Court firstly found that the Powerball Device was not substantially identical to the registration due to the numerous differences between them, including the position of the red cylindrical ball in the Powerball Device. Accordingly, any use of the Powerball Device could not constitute use of the registration.

The Federal Court agreed that the Powerball Images and actual Powerball products as displayed in the Figure 5 packaging were substantially identical to the registration. However, it found that neither had been used as a trademark at any relevant point by RB:

• In all advertising and packaging for the Powerball products, the ‘Finish Powerball’ branding and logo were prominently and consistently displayed.
• The purpose of the Powerball Images (and the packaging in Figure 5, which allowed the products themselves to be seen) was to inform consumers as to the nature of the Powerball products that were inside.
• The Powerball Images were shown in certain advertisements, but only fleetingly and only for the purpose of communicating details about the product to the consumer.
• The Powerball Images were displayed on a listing for the product on Amazon. However, consumers were not immediately confronted with the images, but were required scroll through several other images to see them.

For these reasons, the Federal Court concluded that the Powerball Images and Powerball products were not being used as a brand or to inform a consumer about the source of the products; rather, they were simply being used to inform the consumer as to certain details about the products.

Accordingly, the Federal Court found that RB had not used its registration, and as RB could not provide any basis for the Court to exercise its discretion to allow it to remain on the Register of Trademarks, the Court ordered that it be removed.

Notwithstanding this finding, the Federal Court went on to consider whether the Somat Device would have infringed the registration if it was valid and, in doing so, again looked at what constitutes use as a trademark – specifically, whether the Somat Device was used as a trademark.

In determining this, the Federal Court noted that the context of the use of the Somat Device was important, including its use in relation to other components on the packaging and the environments in which consumers are likely to see it. In light of these matters, the Court found that most consumers would, when seeing an array of dishwasher capsule products, seek to distinguish them by first focusing on the brand name of each product, which is the most prominent and distinctive feature of the products. The Court noted that the Somat Product packaging clearly and distinctively displayed the ‘SOMAT’ and ‘SOMAT EXCELLENCE’ brands, which would be immediately noticed by a consumer, and that the Somat Device was included simply to inform the user as to what the product looks like and to assist the consumer to select between the different Somat dishwashing capsules (of which there were two).

Ultimately, the Federal Court found that there was little likelihood that, when faced with the prominent and highly visible ‘SOMAT’ brand name, consumers would rely on the Somat Device to distinguish the products and determine their source. As such, the Somat Device was not used as a trademark.

Accordingly, RB was entirely unsuccessful in the proceedings, managing not only to lose the infringement claim but also the registration in the process. It should be noted that the matter has been appealed to the Full Federal Court, with the judgment yet to be handed down.

Based on these cases, the test in identifying whether a sign is being used as a trademark appears to remain whether it is used as a badge of origin to indicate a connection between the goods and the person who applied the sign to the goods in all the circumstances. The test confirms that not all logos and elements used on product advertising and packaging will constitute use as a trademark, so their use may not infringe a registration, regardless of how similar they may be to one another (but of course the use may still infringe other IP rights).

Further, to guard against non-use allegations, brand owners should carefully consider the way in which they use their trademark registrations and whether consumers are likely to perceive them as being used as independent badges of origin or signs that simply inform the consumer about characteristics of a product or service.

Federal Court gives opinion on Nice Classifications

Another important recent development in Australian trademark litigation is the guidance of the Full Federal Court as to the relevance of Nice Classifications when considering the scope of goods and services covered by a trademark registration. The Federal Court had previously found that it is permissible to refer to extrinsic materials such as the Nice Classifications to resolve any ambiguity in a statement of goods and services. However, in Energy Beverages LLC v Cantarella Bros Pty Ltd^[5] (the EB Case), the Full Federal Court appears to have departed from this position.

In the EB Case, the Full Federal Court was required to consider whether goods covered by a trademark application were similar goods to those covered by a prior registration. If so, the prior registration would block registration of the later mark. The goods covered by the application included coffee in Class 30, whereas the goods covered by the prior registration included non-alcoholic beverages in Class 32.

Cantarella, the owner of the application in question, pointed out that coffee beverages were Class 30 goods according to the Nice Classifications and not Class 32 goods. Accordingly, it argued that non-alcoholic beverages in Class 32 should necessarily exclude coffee beverages.

The Full Federal Court rejected this argument, noting that the classification of goods and services according to Nice Classifications was primarily a matter of convenience in administration (eg, in facilitating searches) and that the nomination of a class for particular goods is not decisive as to the scope of a given registration. It found that the relevant question was whether from a business and commercial point of view, non-alcoholic beverages as specified in the registration would be understood as including non-alcoholic coffee beverages.

Having considered relevant evidence, the Full Federal Court found that coffee as a beverage would indeed by understood to fall within the scope of non-alcoholic beverages, as claimed in the prior registration.

This decision is important as it highlights the need to carefully consider the actual goods and services listed in a trademark registration, rather than seeking to define the scope of protection by reference to the Nice Classifications of goods and services. Further, it cannot be assumed that goods and services in different classes will not be considered similar goods.

Footnotes