High steaks: McDonald’s loses trade mark beef against Hungry Jack’s, but “25% more beef” claim is misleading

In one of the first judgments to interpret the High Court of Australia’s recent decision in Self Care, Hungry Jack’s BIG JACK was found not to infringe McDonald’s BIG MAC trade mark. However, the claim that the Big Jack had “25% more Aussie beef” than the Big Mac was found to be misleading or deceptive, emphasising the caution required with comparative advertising claims.

Key takeaways

  • This is one of the first judgments to apply and interpret the High Court’s recent decision in Self Care IP Holdings v Allergan Australia Pty Ltd [2023] HCA 8 (Self Care), which we reported on earlier this year.
  • While admittedly artificial, following the decision in Self Care, whether trade marks are deceptively similar must be assessed without considering any reputation in either mark, or any other branding or surrounding livery that is used on or in relation to the products along with the allegedly infringing trade mark.
  • In assessing whether a representation is misleading or deceptive, it is the impression given to customers by the representation itself that is relevant, even if the same statement, in relation to the same or similar products, would be interpreted differently in other purchasing circumstances.
Read our full article here

Authors and contacts

Rebekah Gay
Rebekah Gay
Partner and Joint Global Head of Intellectual Property, Sydney
+61 2 9225 5242
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739
Isobel Patmore
Isobel Patmore
Solicitor, Sydney
+61 2 9322 4648

The IP in AI: Can patents protect AI-generated inventions?

In this instalment of our series The IP in AI, we consider whether patents can be awarded for inventions made by AI systems, and the challenges faced by patent law in protecting innovation in an AI-enabled world.

Read the full article here

For more on the developing area of intellectual property protection and risks for AI and ML systems, follow our blog series The IP in AI.

 

Key contacts

Aaron Hayward
Aaron Hayward
Senior Associate, Australia
+61 2 9225 5739
Anna Vandervliet
Anna Vandervliet
Senior Associate, Australia
+61 2 9322 4868
Byron Turner
Byron Turner
Solicitor, Australia
+61 2 9322 4155

Bryce Robinson
Bryce Robinson
Solicitor, Australia
+61 3 9288 1155

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, UK
+44 20 7466 2217
Heather Newton
Heather Newton
Of Counsel, UK
+44 7809 200 246
Maximilian Kucking
Maximilian Kucking
Senior Associate, Germany
+49 211 975 59096
Peng Lei
Peng Lei
Partner, Kewei, China
+86 10 6535 5151
Alex Wang
Alex Wang
Patent Attorney, China
+86 10 6535 5156

Series: The IP in AI

Uses of machine learning and AI are expanding rapidly, and IP rights play a critical role in both regulating the use of AI and protecting the rights of inventors and creators. In this series, we will explore the key challenges governments worldwide are currently grappling with in order to provide the right level of protection to AI and ML systems.

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The IP in AI: Does copyright protect AI-generated works?

In this instalment of our series The IP in AI, we take a look at the extent to which copyright and other rights currently provide protection for output generated by AI systems, including how concepts of ‘authorship’ and ‘originality’ may need to be adapted to meet the rapid growth of generative AI.

Read the full article here

For more on the developing area of intellectual property protection and risks for AI and ML systems, follow our blog series The IP in AI.

 

Key contacts

Aaron Hayward
Aaron Hayward
Senior Associate, Australia
+61 2 9225 5739
Anna Vandervliet
Anna Vandervliet
Senior Associate, Australia
+61 2 9322 4868
Byron Turner
Byron Turner
Solicitor, Australia
+61 2 9322 4155

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, UK
+44 20 7466 2217
Heather Newton
Heather Newton
Of Counsel, UK
+44 7809 200 246
Peng Lei
Peng Lei
Partner, Kewei, China
+86 10 6535 5151
Alex Wang
Alex Wang
Patent Attorney, China
+86 10 6535 5156

Giulia Maienza
Giulia Maienza
Associate, Europe
+44 20 7466 6445
Michael Dardis
Michael Dardis
Solicitor, Australia
+61 3 9288 1173

The IP in AI: Can IP rights protect AI systems?

With the expanding popularity of ML and AI systems, developers and investors expect those systems to be protected from unauthorised use by others.

Providing suitable protection to encourage and reward investment in the creation of intellectual property – but balancing that against the rights of the public to use those creations – is one of the core aims of the intellectual property system. Striking this balance correctly has proved difficult in this emerging area of technology, and considerable uncertainty remains in legal systems around the world as to the extent of protection afforded to ML and AI systems.

Read the full article here

For more on the developing area of intellectual property protection and risks for AI and ML systems, follow our blog series The IP in AI.

Key contacts

Aaron Hayward
Aaron Hayward
Senior Associate, Australia
+61 2 9225 5739
Anna Vandervliet
Anna Vandervliet
Senior Associate, Australia
+61 2 9322 4868
Byron Turner
Byron Turner
Solicitor, Australia
+61 2 9322 4155

Rachel Montagnon
Rachel Montagnon
Professional Support Consultant, UK
+44 20 7466 2217
Alex Wang
Alex Wang
Patent Attorney, China
+86 10 6535 5156

Giulia Maienza
Giulia Maienza
Associate, Europe
+44 20 7466 6445
Peng Lei
Peng Lei
Partner, Kewei, China
+86 10 6535 5151
Sophie Yates
Sophie Yates
Solicitor, Australia
+61 455 304 922

Australian High Court smooths out wrinkle in trade mark law: Reputation not relevant to ‘deceptive similarity’ test of infringement

The High Court has clearly set out in Self Care v Allergan that the reputation of a trade mark is not relevant when assessing deceptive similarity in infringement proceedings.1 In a unanimous decision, overruling a three-judge bench of the Full Federal Court, the High Court held that Self Care did not infringe Allergan’s ‘BOTOX’ mark by its use of either “instant Botox® alternative” or “PROTOX”, nor did it mislead consumers about the long term efficacy of its product.

Key takeaways

  • The reputation of a registered trade mark or its owner is not relevant to the assessment of deceptive similarity in an infringement action under section 120(1) of the Trade Marks Act 1995 (Cth) (Act).
  • There are four prescribed and limited circumstances in which the consideration of reputation is expressly addressed by the Act. In all other circumstances, the monopoly of a registered trade mark is limited to the particulars recorded on the public register.
  • The two elements in determining infringement under section 120(1) are often conflated. Whether the sign was (1) used as a trade mark, and (2) deceptively similar to the registered mark, must be assessed independently. The factors relevant to the likelihood of deception have no role in determining whether the sign was used as a trade mark in the first place.
  • The High Court’s decision brings some relief for advertisers used to advertising their wares by comparison to their competitors, in finding that the phrase “instant BOTOX® alternative” was descriptive and not used as a trade mark.
Read our full article here

Key contacts

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Bryce Robinson
Bryce Robinson
Solicitor, Melbourne
+61 3 9288 1155

Near enough is good enough: Full Federal Court of Australia revisits construction of “about” in patent claim

By Shaun McVicar, Catherine Chan and Michael Dardis

In the area of patent law, clarity is king. Where precision of language is essential for defining the limits and scope of legal rights, the acceptance within Australia of unbounded terms such as “about” in patent claims (unlike other major jurisdictions such as Europe) seems almost anomalous.

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Reckitt Benckiser puts a Finish (for now) to competitor’s launch of dishwashing tablets

The Australian Federal Court’s decision in RB (Hygiene Home) Australia Pty Ltd & Anor v Henkel Australia Pty Ltd[1] demonstrates the powerful option of seeking an urgent interim injunction to protect the strength and value of an established brand, and to protect market share.

Key takeaways

  • Businesses need to be aware of their competitors’ brands and reputation, before launching their brand in Australia.
  • Urgent injunctive relief sought on an interim basis can afford significant protection to brand owners.
  • The effect on the party subject to the injunction can be significant, particularly in the consumer sector, and can include wasted launch expenditure for new products, costs in redesigning packaging as well as marketing campaigns and materials, and any cost involved with re-negotiating contracts with distributors.

Click here to read our full analysis of the decision and its implications for brand owners.


  1. [2021] FCA 1094.

Authors

Sue Gilchrist
Sue Gilchrist
Head of IP - Australia
+61 2 9225 5221
Vanessa Jiang
Vanessa Jiang
Solicitor
+61 2 9225 5382

Byron Turner
Byron Turner
Solicitor
+61 2 9322 4155

Marketing a product as an “alternative” is no answer to trade mark infringement

The Full Court of the Australian 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 [2021] 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.

KEY TAKEAWAYS

  • 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.

BACKGROUND

The well-known injectable powder Botox is used in therapeutic and cosmetic treatments. It is manufactured, sponsored and sold in Australia by Allergan, under its various “BOTOX” trade marks. Those trade marks are registered for a variety of goods, including “anti-ageing” and “anti-wrinkle” cosmetics.

In 2014 Self Care launched a range of anti-wrinkle skin care products under the brand name “Freezeframe”. The Freezeframe line included “PROTOX”, a skincare product styled as an injection-free solution to “prolong the look of Botox®”, and a product “Inhibox” that was said to be an “instant Botox® alternative”. Self Care sold these products, and others, under its trade mark, “FREEZEFRAME”. Later, it obtained registration of the trade mark “FREEZEFRAME PROTOX” over the opposition by Allergan.

Allergan commenced proceedings alleging, amongst other things, that Self Care had infringed Allergan’s BOTOX trade mark both by its use of “PROTOX” and by its use of “instant Botox® alternative” in relation to Inhibox.

The primary judge found in Self Care’s favour, holding that “PROTOX” was not deceptively similar to “BOTOX”, and that the phrase “instant Botox® alternative” did not constitute infringing use of BOTOX “as a trade mark”. These findings were overturned by the Full Court on appeal.

THE FULL COURT’S DECISION

PROTOX is deceptively similar to BOTOX

The primary judge had held that PROTOX was not deceptively similar to BOTOX because his Honour found that, although consumers would be reminded of BOTOX upon seeing PROTOX branding for anti-wrinkle cream, they would not have confused PROTOX products for BOTOX products.

The Full Court agreed with the primary judge’s factual findings, but disagreed that this meant that PROTOX was not deceptively similar to BOTOX. This is because the Full Court clarified that the relevant “deception” is not whether consumers would confuse one product for the other, but whether consumers would be caused to wonder whether the underlying products were from the same source. The similarity between the words was such that a consumer might wonder whether the products were associated: for example, a consumer may wonder whether those behind BOTOX had decided to expand their product range to include topical cosmetic products such as “PROTOX”.The mark was therefore deceptively similar to Allergan’s mark for the purposes of section 120 of the Trade Marks Act 1995 (Cth) (Trade Marks Act).

Defensive registration ineffective

Self Care argued that it had an express defence to infringement, because it had obtained a trade mark registration for “FREEZEFRAME PROTOX”. However, in fact the livery of the Protox product did not use the words together in a composite manner. The words appeared on different facets of the packaging, and used a different colour palette, font and font case. The Full Court therefore agreed with the primary judge that the word “PROTOX” was used as a distinct trade mark, such that Self Care’s registration for FREEZEFRAME PROTOX did not provide it with a defence to infringement.

“Instant Botox® alternative” is used “as a trade mark”

Under Australia’s Trade Marks Act, simply using another registered trade mark does not amount to infringement of that trade mark, unless it is used “as a trade mark”. That is generally understood to mean that the mark must be used as a “badge of origin” in relation to the goods or services.

The primary judge had considered that Self Care’s use of the phrase “instant Botox® alternative” was descriptive. His Honour also considered that the word “alternative” effectively distinguished the Inhibox product from the Botox product, and therefore the phrase was not used by Self Care as a badge of origin for the Inhibox product.

The Full Court disagreed, and found the phrase “instant Botox® alternative” as a whole was used as a trade mark because:

  • Although the word “alternative” implied the two products were different, it did not entail that the products came from a different source.
  • Although “instant” and “alternative” are descriptive, the whole phrase “instant Botox® alternative” was not purely descriptive. Instead, it denoted some trade source connection with the Botox products (to the effect that Inhibox product was not the Botox product).
  • The Inhibox product packaging and website displayed the words “Inhibox”, “Freezeframe” and “instant Botox® alternative” with such prominence that each appeared as a trade mark.
  • Even though the product packaging identified Allergan as the owner of the “BOTOX” mark, this was not sufficient to dispel doubt as to the trade source of Inhibox. Even a diligent consumer might reasonably think that Self Care enjoyed some form of licence or authorisation from Allergan in order to use the mark on its product.

Comparative advertising & use “in good faith”

Self Care also sought to invoke certain exceptions to infringement under the Trade Marks Act in relation to its use of “instant Botox® alternative”, including that its use of the phrase was “for the purposes of comparative advertising” within the meaning of section 122(1)(d). The Full Court rejected this argument, because:

  • On a technical level, their Honours said that the exception was not applicable to Self Care as the provision refers to “use of the trade mark” (that is, “BOTOX”), whereas the infringing use was of the phrase “instant Botox® alternative”.
  • Even if the exception could apply, the Court held that Self Care’s conduct could not be characterised as “comparative advertising”, since the phase “instant Botox® alternative” was “used to leverage off the reputation of BOTOX, not to advertise Inhibox comparatively with Botox”. The finding that consumers would be caused to wonder if the products came from the same source was relevant to this conclusion.

Self Care also sought to rely on other exceptions, which provide that a person does not infringe a registered trade mark if they use the sign “in good faith” to indicate some characteristic or the intended purpose of goods or services. The Court also rejected these arguments for similar reasons.

Misleading representations: time matters

As well as its claim for trade mark infringement, Allergan had alleged that the phrase “instant Botox® alternative” conveyed that Inhibox would give results of the same quality or standard as Botox, which Allergan alleged was misleading or deceptive in contravention of the Australian Consumer Law (ACL).2

The Court agreed that the phrase “instant Botox® alternative” would have been understood by relevant consumers to convey that Inhibox both caused a similar reduction in the appearance of wrinkles, and that this effect lasted as long, as Botox. In this regard, the Court also noted that the target market included consumers who understood that Botox continued to “have effect for a period of 4 months after treatment”. By contrast, at their highest, studies relied on by Self Care established that their active ingredient would reduce wrinkles “over a 28-day period of application”, but said nothing about the duration of the effect after the application had ceased. As such, the Court also agreed that this phrase contravened the ACL.

IMPLICATIONS

The Full Court’s findings serve as an important reminder for persons seeking to distinguish their goods or services from those of competitors. Although each case will turn on its facts, the mere styling of a product as an “alternative” may not sufficiently distinguish the trade source of a competitor product to avoid liability in trade mark infringement.

Similarly, although Australia’s Trade Marks Act provides an express exception to infringement for comparative advertising, the Court’s reasoning demonstrates that the scope of this exception can be narrow, and it is easy to fall outside its ambit. In both cases, it may be relevant to enquire whether the impugned conduct was done in good faith for the relevant descriptive purpose, or whether it was done so as to “leverage off the reputation of” the registered trade mark.

The decision also serves as an important reminder that defensive marks will not always be effective to protect against claims of trade mark infringement. Where a registered mark is comprised of two or more words (or other elements), the mark must be used in its entirety in order to be availed of the protection under the registration.

As explained above, the Court’s ruling that the phrase “instant Botox® alternative” was used as a trade mark is not without controversy. While it is possible that this could be appealed to the High Court, Self Care would need to seek special leave to appeal. Special leave is discretionary, and is reserved for cases which meet certain public interest thresholds.3 As such, it is unclear that special leave would be granted.

Businesses will need to tread carefully when marketing their products by reference to other goods. Descriptive or comparative phrases are not necessarily exempt from trade mark infringement—as always, context is key.


  1. [2021] FCAFC 163.
  2. Competition and Consumer Act 2010 (Cth), Schedule 2, ss 18, 29(1)(a), (g).
  3. Judiciary Act 1903 (Cth) s 35A.

Sophie Yates
Sophie Yates
Solicitor, Sydmey
+61 2 9322 4897

Bryce Robinson
Bryce Robinson
Solicitor, Melbourne
+61 3 9288 1155

Shaun McVicar
Shaun McVicar
Partner, Melbourne
+61 3 9288 1587
Aaron Hayward
Aaron Hayward
Senior Associate, Sydney
+61 2 9225 5739