The Full Court of the Federal Court has found that marketing a product as an “alternative” to a trade-marked brand is no answer to a claim of infringing use as a trade mark. In Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd  FCAFC 163, Justices Jagot, Lee and Thawley took a broad view of trade mark “use”, and the likelihood of confusion on the part of consumers, to find that both “PROTOX” and “instant Botox® alternative” are deceptively similar to the appellant’s “BOTOX” mark, and that the protection of the Respondent’s defensive registration was ineffective.
- The use of the phrase “instant Botox® alternative” was held to constitute use “as a trade mark”, such that it infringed the registered trade mark for BOTOX.
- Although it will depend on context, the mere use of the word “alternative” to describe a product (for example, “instant Botox® alternative”) may not be sufficient to avoid trade mark infringement. Indeed, in some circumstances it may imply some association in the trade source.
- Although an exception exists under the Trade Marks Act for comparative advertising, it is easy to fall outside the protection of that provision. In particular, simply referring to a competitor product is not enough to fall within its scope.
- Advertisers should be cautious to avoid references to competitor products that seek to leverage off the competitor’s reputation, rather than advertise comparatively with that product in good faith.
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