Are PROTOX and BOTOX deceptively similar?
19 Allergan claimed that Self Care, in using the sign PROTOX as a trade mark, infringed the BOTOX Mark under s 120(1) of the TM Act. Section 120(1) provides:
Part 12 - Infringement of trade marks
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.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.
20 Section 120(1) refers to substantial identity and deceptive similarity. These are independent criteria: The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 at 414 (Windeyer J). The appellants' case was confined to deceptive similarity: J[166].
21 That term "deceptively similar" is the subject of s 10 of the TM Act. Section 10 sets out the circumstances in which "a trade mark is taken to be deceptively similar". It provides:
10 Definition of deceptively similar
For the purposes of this 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.
22 The definition (in the form of a deeming provision) is directed to whether one mark "so nearly resembles" another that the former is "likely to deceive or cause confusion". The statutory context makes it clear that the topic about which marks should not deceive or cause confusion is ultimately the source of the products to which the mark relates. Section 17 of the TM Act provides:
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.
23 An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered: s 41(1).
24 Deceptive similarity raises, as a central question, whether there is a real risk that the consequence of use of the allegedly infringing mark would result in persons being caused to wonder whether it might not be the case that the products in respect of which the mark is used come from the same source as products the subject of the mark said to be infringed: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at 608 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ); Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [50] (French J, with whom Tamberlin J agreed); The Coca-Cola Company v All-Fect Distributors Ltd (t/as Millers Distributing Company) [1999] FCA 1721; (1999) 96 FCR 107 (Black CJ, Sundberg and Finkelstein JJ) at [39]; Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235; (2020) 385 ALR 514 (Nicholas, Yates and Burley JJ) at [66].
25 Deceptive similarity is not determined by a "side-by-side" comparison of the two marks of the kind undertaken in determining whether the marks are substantially identical. Rather, it is determined by considering the impression that would be left with ordinary persons seeing the marks. In Shell at 415, a case which involved alleged infringement through advertising films exhibited during television broadcasts, Windeyer J explained:
The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [viewing the allegedly infringing mark].
26 It is relevant to consider the circumstances in which the goods would be acquired and the character of the probable acquirers of the goods. In Australian Woollen Mills at 658-659, Dixon and McTiernan JJ explained:
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.
27 The primary judge set out the relevant principles concerning deceptive similarity from J[164] to J[172]. His Honour dealt with the application of those principles to the facts, so far as concerned PROTOX and BOTOX, at J[204] to J[211].
28 In the section addressing the applicable principles (J[164] to J[172]), the primary judge did not refer to the fact that the confusion to which the relevant provisions were directed was confusion as to the source of the products as opposed to confusion between the marks or products themselves.
29 In the section of the primary judgment applying the principles to the facts (J[204] to J[211]), there is no reference to the question whether there might be confusion as to trade source as opposed to confusion between the marks or products themselves. The conclusion to the analysis at J[204] to [211] was expressed in the following way at J[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.
30 When the primary judge's articulation of the principles from J[164] to J[172] is read with the application of those principles from J[204] to J[211], it cannot safely be concluded that the primary judge asked himself or answered the question whether the two marks so nearly resemble each other that people might be confused as to whether the products to which they relate might come from the same source. His Honour only asked and answered the question whether people would confuse the marks PROTOX and BOTOX or the products to which those marks related. There is no analysis or reference in the primary judgment to whether consumers, understanding that the products are different, might wonder whether they came from the same source. It should be accepted that ordinary people would not confuse the names PROTOX and BOTOX or the underlying products. However, of itself, that conclusion does not answer the question whether there is a risk that people might think the different products come from the same source.
31 Self Care submitted that the primary judge did not err in the way contended by Allergan. It submitted that it should be inferred, notwithstanding the absence of a direct reference to the issue, that the primary judge asked and answered the correct question. As to the identification of principle, Self Care pointed to J[169], where the primary judge referred to Southern Cross at 608 in the context of summarising the level or risk of confusion which needed to be established. The primary judge stated:
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).
32 Self Care correctly observed that the Full Court in Southern Cross at 608, in addition to approving what Kitto J had said at trial about the necessary level of risk of confusion, stated that it was confusion about source which was relevant. Self Care submitted that it should therefore be inferred that the primary judge had that principle in mind when stating his conclusions as to the application of the principles to the facts at J[211]. That submission must be rejected. The primary judge's reference at J[169] to Southern Cross was directed only to the degree of confusion required, not what the confusion must be about. Read fairly, the primary judge was stating at J[211] that people would not confuse PROTOX and BOTOX, either the mark or the product. One cannot properly infer in the convoluted way suggested that the primary judge asked or answered the question whether there was a real risk that people would be caused to wonder whether BOTOX and PROTOX came from the same source.
33 The appellants have established error and this Court must re-examine the evidence to form its own conclusion: PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2021] FCAFC 128 at [98]-[99], citing Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; (2018) 261 FCR 301 and Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1835; (2001) 117 FCR 424. Proper regard should be had to the primary judge's conclusions to the extent the findings are not shown to be erroneous.
34 The respondents submitted that the primary judge's conclusion at J[211] was based on three key considerations, each of which was said to be consistent with authority:
(1) First, the primary judge considered that the words are distinguished by their first syllable, PRO- and BO-, and that attention would more likely be directed to the first syllable: J[207].
(2) Secondly, the primary judge observed that the prefix "pro" is a familiar and recognisable element of words and carries a meaning, whereas "bo" is not familiar and has no recognisable meaning: J[206], [207].
(3) Thirdly, the primary judge considered that the word "botox" is so well known that the difference between that word and the mark PROTOX would be immediately apparent.
35 All of this may be accepted, but is directed to the question whether a consumer would confuse the BOTOX and PROTOX marks, not whether consumers might wonder, in light of the similarities between the marks and given the nature of the products in respect of which the BOTOX Mark and other Botox marks are registered, whether the marks or underlying products came from the same source.
36 The primary judge concluded at J[209] that a consumer, on seeing or hearing PROTOX, is likely to be reminded of BOTOX. His Honour stated:
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.
37 Relevantly to the observation at J[209] (and Ground 1 of the appeal) that the word Botox "has become in ordinary usage a common noun, not only a proper noun", the primary judge concluded that the word Botox was understood in a generic sense as referring to an anti-wrinkle injection, whether or not being Allergan's product; it could refer to any botulinum toxin product (being an injection) on the market: at J[153]. His Honour accepted the evidence of Ms Amoroso that people refer to "having Botox" even when they are having a different brand of botulinum toxin injection: at J[56]. His Honour also stated at J[56] that "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". It is important to note in respect of these observations that no case of "genericide" under s 24 of the TM Act was either pleaded or run. That is, it was not contended that the word Botox had become "generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service" such that the exclusive rights to use the mark had come to an end. There was no independent trade evidence adduced.
38 Relevantly to the observation at J[209] (and Ground 2 of the appeal) that the word PROTOX was likely to remind people of BOTOX, the primary judge had earlier concluded that Ms Amoroso had chosen names like PROTOX because of the closeness of the name to the BOTOX Mark: at J[71]. He considered that "the intention was obviously to leverage off" the fame of the BOTOX Mark and that consumers in the target market would "get" that inference: at J[73]. As noted earlier, Allergan submitted that these conclusions should have lead the primary judge to apply the "rule" in Australian Woollen Mills at 657 in which Dixon and McTiernan JJ said:
The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public. But the practical application of the principle may sometimes be attended with difficulty.
39 The "rule" was held by the Full Court in Hashtag Burgers to have been engaged on the trial judge's findings in that case that there was an intention to capitalise on reputation and cause confusion: Hashtag Burgers at [101]. Although the trial judge had concluded that the intention was dishonest, dishonesty was not necessary for the "rule" to apply: Hashtag Burgers at [104].
40 In the present case, the primary judge concluded that there was an intention to capitalise on BOTOX's reputation, but there was no finding that there was an intention to deceive or cause confusion about the origin of the products. There is no implicit finding by the primary judge, or sufficiently reliable inference available on appeal in the absence of direct cross-examination on the topic, to the effect that Ms Amoroso intended to cause confusion as to source. In any event, the issue can be answered without reference to Ms Amoroso's subjective intention or motivations being treated as expert evidence. The "rule" in Australian Woollen Mills is not one of inflexible application. It reflects a process of reasoning, the appropriateness of which depends on the particular facts, as does the weight to be given to the conclusion reached through application of that process of reasoning. The primary judge is not shown to have erred in failing to apply the "rule" in the circumstances of this case.
41 The primary judge correctly concluded that the word PROTOX would have reminded consumers of BOTOX: J[209]. That is why the word was chosen, as the primary judge found: J[71] to [73]. Consumers would not have confused PROTOX for BOTOX. The words are sufficiently different for consumers to appreciate that the words are different and that the products to which the words relate are different. That is reinforced by the context in which the consumer would come to see the words PROTOX and BOTOX. PROTOX was generally sold online and in pharmacies and such like, was topical rather than injectable, and was significantly cheaper than BOTOX. BOTOX was available through professional medical channels, via injection, and at significantly higher cost than PROTOX. However, that does not mean that consumers would not have wondered whether the different products, both intended to treat the appearance of wrinkles, came from the same source.
42 PROTOX so nearly resembles BOTOX that there is a real risk that PROTOX would deceive or cause confusion as to whether the two might come from the same source. As the primary judge found, most consumers on seeing PROTOX on an anti-wrinkle cream would immediately have been reminded about BOTOX. Consumers would not confuse the words PROTOX with BOTOX because the words are sufficiently distinct for the two not to be confused. As both parties accepted, this is not a case in which the words might have been confused because of faulty memory. However, the similarities between the two words would naturally have led consumers to wonder if perhaps the underlying products came from the same source. The similarities in the words imply an association.
43 Some consumers are likely (in the sense of a real and tangible danger or risk) to have wondered whether PROTOX was an alternative product being offered by those behind BOTOX, perhaps targeted to those who did not like injections or who wanted the convenience of a home treatment. Some consumers are likely to have wondered whether PROTOX was developed by those behind BOTOX as a topical treatment to be used in conjunction with Botox treatment, perhaps to improve or prolong results. Self care submitted in this regard that there was no evidence of any seller of botulinum toxin products also selling in the market for anti-wrinkle creams and that, therefore, consumers would not have wondered about an association between PROTOX and BOTOX. One difficulty with this submission is that it assumes a degree of knowledge on the part of consumers which is unlikely. A second difficulty is that, even if most consumers did have such an intricate knowledge of the relevant market or markets, it is likely that consumers would wonder whether those behind BOTOX had decided to expand into topical cosmetic anti-wrinkle products.
44 PROTOX is deceptively similar to BOTOX for the purposes of s 10 of the TM Act.