Recent Cases

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 (15 March 2023) (KIEFEL CJ, GAGELER, GORDON, EDELMAN AND GLEESON JJ)


Catchwords:


Intellectual property – Trade marks – Trade Marks Act 1995 (Cth) (“Act”) – Trade mark infringement under s 120(1) of Act – Where BOTOX registered as defensive trade mark – Whether “instant Botox® alternative” used as trade mark – Whether “instant Botox® alternative” and PROTOX deceptively similar to defensive trade mark – Whether reputation relevant to deceptive similarity.

Consumer law – Misleading or deceptive conduct – False or misleading representations – Where alleged representation that wrinkle reducing effects of Inhibox would last, after treatment, for period equivalent to that achieved with treatment by Botox injection – Whether alleged representation conveyed.

Words and phrases – “badge of origin”, “deceptive similarity”, “defensive trade mark”, “imperfect recollection”, “notional buyer”, “reasonable consumer”, “reputation”, “use as a trade mark”.