PROTOX mark
PROhibited in
Full Court Decision
In Allergan v Self Care 1 , the Full Federal Court overturned a first instance
decision and held that the mark PROTOX, and the phrase “instant Botox®
alternative”, are deceptively similar to the mark BOTOX, and therefore use of
PROTOX and the phrase constituted trade mark infringement. The Full Court
also found that none of the defences relied on by the respondents applied.

Background Allergen is the manufacturer
of the well-known anti-wrinkle
injectable product BOTOX, and
the registered trade mark owner
of various marks for BOTOX. This
includes the word mark 2 covering
various classes including class 5 for
“pharmaceutical preparations for the
treatment of wrinkles”, and class 3
for “anti-aging creams; anti-wrinkle
cream”. BOTOX is an invented word
derived from the active ingredient
in the product, botulinum toxin.

Self Care is a supplier of cosmetic
products, including topical anti-
wrinkle skincare products using
various marks including ‘Protox’,
‘Inhibox’ and ‘Night’ under the
umbrella brand FREEZEFRAME. The
director of Self Care came up with
the word PROTOX – she intended
that ‘PRO’ refer to ‘prolonging’
and ‘TOX’ to ‘botulinum toxin’, and
the play on words was meant to
convey that their product “prolongs
the effect of botulinum toxin”.

Self Care applied to register the
mark FREEZEFRAME PROTOX 3
for “Anti-ageing serum, anti-wrinkle
serum”, and successfully defended
an opposition by Allergen. Allergen
appealed the Registrar’s decision
to allow the FREEZEFRAME
PROTOX application to proceed to
registration to the Federal Court 4 ,
and claimed that Self Care had
infringed the BOTOX trade marks
by using composite phrases such
as “ instant Botox® alternative”,
“ long term Botox® alternative” and
“overnight Botox® alternative” in
its packaging and advertising.

Allergen also claimed that Self Care
had contravened the Australian
Consumer Law (ACL) by making
representations concerning the
efficacy of its products and affiliation
with Allergen’s BOTOX product.

Allergan Australia Pty Ltd v Self Care IP
Holdings Pty Ltd [2021] FCAFC 163.

2 Australian registration 1578426 for BOTOX
3 Australian registration 1653383
for freezeframe PROTOX
4 Allergan Australia Pty Ltd v Self Care
IP Holdings Pty Ltd [2020] FCA 1530
Inspire December 2021
1 4
The similarities
between the words
imply an association
such that there
is a real risk that
some consumers
would be deceived
or be confused...