Botox and Protox product comparison

Botox vs Protox - The Court Rules Reputation Doesn't Matter

By James Wan

Imagine this scenario: you’ve got two beauty products, “Botox” and “Protox”. They’re not the same, but the names? Similar, right?

The High Court recently ruled in a case involving these two. Long story short, they decided that a trade mark’s reputation doesn’t matter when deciding if the mark’s been infringed. This matters if you’re trying to protect your brand.

The Key Players

“Allergan” owns Botox, and it’s registered under class 5, mainly for smoothing out those pesky wrinkles. They also got a defensive mark registered under class 3, including things like anti-aging creams.

On the other hand, “Self Care” sells products, including an “instant Botox® alternative” with the name Protox. They marketed and packaged it with phrases like “prolong the look of Botox®“. Allergan didn’t like this and objected to using Protox and the mention of Botox® on the Protox packaging.

The Verdict

The High Court’s final say? Self Care’s use of “instant Botox® alternative” or “Protox” didn’t infringe on Allergan’s Botox trade mark.

They considered “instant Botox® alternative” as a descriptive phrase, not using Botox as a trade mark. They also didn’t find Protox deceptively similar to Botox. They thought people of average intelligence wouldn’t mix up the two.

The Court didn’t think the phrase “instant Botox® alternative” was misleading under the Australian Consumer Law. They disagreed with the idea that “alternative” meant Protox was just as good as a Botox injection.

Why Reputation Doesn’t Matter

The most significant takeaway? Reputation doesn’t hold water in infringement proceedings.

Although earlier cases considered reputation when looking at deceptive similarity, the High Court made it clear: reputation doesn’t matter when determining deceptive similarity under section 120(1). What matters is the mark’s spoken description.

Their conclusion? There’s no “real, tangible danger” of confusion or deception because the marks are different enough. No evidence of actual confusion either.

So next time you’re thinking about brand protection, remember this case. What is the reputation of your trade mark? More important than you might think.