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...




Self Care also claimed that use of the
phrase “ instant Botox® alternative”
was allowable because it was used
for the purposes of comparative
advertising 6 . The Full Court did not
agree – comparative advertising
involves differentiating two products
factually in order to promote
one’s product over a competitor’s
product. It could not be comparative
advertising if consumers would be
misled or cause to wonder whether
the compared products came from
the same source. The Full Court
also found that the phrase was
used to leverage off the reputation
of BOTOX, and not to promote
Self Care’s product comparatively
with BOTOX, thus defeating the
essence of comparative advertising.

Finally, the Full Court refused to find
that the phrase was used in good
faith to indicate the intended purpose
or characteristics of the product.

Key lessons
When comparing two trade marks
for ‘deceptive similarity’, it is not
enough to consider that the marks
are sufficiently different because
consumers would not be confused
that one mark is the same as the
other. An important question to ask
is whether due to the similarities
between the marks it is likely that
consumers would have wondered or
be confused as to whether products
bearing the different marks would
come from the same trade source.

The Full Court’s findings on
comparative advertising also
serve as an important lesson to
businesses to be careful when
seeking to use a competitor’s trade
mark to promote their own products
or services against a competitor’s.

Businesses should ensure that
comparisons are accurate and are
sufficiently meaningful comparisons
of two different products or
services, from different sources.

5 Jacqueline Leong | Senior Associate
Section 122(1)(e) of Trade Marks Act 1995
Section 122(1)(d) of Trade Marks Act 1995
7 Sections 122(1)(b) and (c) of Trade Marks Act 1995
5 6
Inspire December 2021
is a real risk that some consumers
would be deceived or be confused
as to whether PROTOX was an
alternative product being offered
by the manufacturer of BOTOX.

The Full Court also disagreed with
the finding that the phrase “ instant
Botox® alternative” was not used
as a trade mark. Stewart J’s main
reason for finding that there was
no trade mark infringement was
the use of the word ‘alternative’,
which indicated that the product
was different to BOTOX. The Full
Appeal Court was of the view that the word
‘alternative’ implies that the products
Allergen appealed the judgement
are different and that there is choice
as it related to the use of PROTOX
between them, but it may still imply
and the phrase “ instant Botox®
association as to the trade source.

alternative”, and its claims of
Although ‘instant’ and ‘alternative’
trade mark infringement and
are descriptive words, the phrase
representations made by Self
“ instant Botox® alternative” was not
Care that contravened the ACL.

used in a purely descriptive way.

Deceptive similarity and
While Self Care used the ® symbol
trade mark infringement
and attributed Allergan as the owner
of the BOTOX mark in its packaging,
The Full Court agreed that Stewart
this was not sufficient to dispel
J was correct to conclude that
the implication of an association
PROTOX was used as a trade
between the parties – even the
mark and that the following
most meticulous consumers noting
considerations were accurate:
Allergen as owner of the mark
> The words are distinguished by
BOTOX might reasonably consider
their first syllable, PRO- and BO-,
that Self Care was associated, or
and that attention would more
had authorisation to use Allergen’s
likely be directed to the first
BOTOX mark on its packaging.

syllable; The Full Court concluded that the
> the prefix PRO is a familiar and
phrase is deceptively similar to
recognisable word that carries
BOTOX as there is a real risk that
a meaning, whereas BO is not
the phrase would cause people
familiar and has no recognisable
to wonder whether the different
meaning; products come from the same trade
source – in particular, consumers
> the word BOTOX is so well known
may wonder whether the PROTOX
that the difference between that
topical cosmetic product was a
word and the mark PROTOX
would be immediately apparent to new BOTOX product range.

consumers; and
Defences > PROTOX would remind consumers
Self Care relied on a number
of BOTOX and consumers would
of defences but none of them
not confuse PROTOX for BOTOX.

were successful. Self Care
However, the Full Court held that
contended that it had a defence
Stewart J did not consider whether,
to infringement because it had
due to the similarities between
obtained a trade mark registration 5
the marks, consumers would have
for FREEZEFRAME PROTOX. The
wondered if the different products,
Full Court held that this defence
claiming to have the same effect,
did not apply because Self Care did
came from the same source.

not use FREEZEFRAME PROTOX
The Full Court found that PROTOX
together, but the word PROTOX
is deceptively similar to BOTOX.

as a trade mark independently of
The similarities between the words
FREEZEFRAME on its packaging.

imply an association such that there
Stewart J held that neither the mark
PROTOX, nor any of the composite
phrases used by Self Care in its
packaging and advertising were
deceptively similar to the mark
BOTOX, and consequently there was
no trade mark infringement. Further,
only 1 out of about 35 statements
were in contravention of the ACL.

Allergen’s appeal of the Registrar’s
decision to allow Self Care’s
FREEZEFRAME PROTOX application
to be registered was also dismissed.

LLB (Hons)
jacqueline.leong@pof.com.au