The High Court’s decision in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 is a tightly reasoned clarification of three related areas that matter to practitioners and brand owners: i) what counts as “use as a trade mark”; ii) how to assess deceptive similarity under sec 120(1) of the Trade Marks Act 1995 (Cth) without importing reputation into that inquiry; and iii) how advertising claims sit alongside Australian Consumer Law obligations. Here, the Court allowed Self Care’s appeals and rejected Allergan’s arguments that use of the phrase “instant Botox® alternative” and the mark PROTOX infringed the defensive BOTOX registration.
Background of thee case
Allergan owned BOTOX as a registered defensive trade mark (class 3 registration for anti-wrinkle creams, founded on its use in pharmaceutical injections in class 5). Self Care marketed topical anti-wrinkle products under FREEZEFRAME, notably Inhibox (packaged with the legend “instant Botox® alternative”) and Protox. Allergan argued (a) that the phrase “instant Botox® alternative” was used by Self Care as a trade mark and was deceptively similar to BOTOX; (b) that PROTOX was deceptively similar to BOTOX; and (c) separately, that the Inhibox packaging conveyed a misleading long-term efficacy claim in breach of the Australian Consumer Law. The High Court’s reasons address those points in that order.
“Use as a trade mark”
A central threshold for sec 120(1) infringement is whether the defendant “used” the sign as a trade mark, i.e. as a badge of origin. The High Court reiterated the objective, contextual test: ask what the sign meant in its context and whether it functioned to indicate origin, not whether it might suggest an association with another trader. The Court held that Self Care’s use of “instant Botox® alternative” was descriptive, inconsistent in presentation across packaging and website, and always presented alongside clear badges of origin (FREEZEFRAME and INHIBOX). In short, the phrase operated as “adspeak” and product description rather than a brand identifier. That finding ended the sec 120(1) claim based on the phrase, i.e. if the phrase was not used as a mark, deceptive-similarity analysis does not even arise.
Assessing how the sign is positioned (size, font, repetition, proximity to clear trade origin signs) and the immediate context on the product is important. Decorative or descriptive copy that merely compares a product to a well-known mark will often fail the “badge of origin” test, but beware, a descriptive phrase can still be deployed as a badge of origin if used prominently and consistently as a brand.
Deceptive similarity and reputation
Perhaps the most important doctrinal point is the Court’s rejection of importing reputation into the sec 120(1) deceptive-similarity inquiry. The High Court held that reputation is addressed in the Act in specific, limited ways (for example, in sec 60 oppositions, defensive mark registration under sec 185, sec 120(3) for well-known marks, and sec 24 on genericness) and that, outside those statutory contexts, reputation should not be used to expand the statutory monopoly created by registration. The notional buyer used in sec 120(1) comparisons must not be attributed knowledge of the registered owner’s wider reputation or use in other classes; doing so would collapse the bright line between registration/infringement and passing-off style protections.
On the facts, that principle mattered for PROTOX. The Full Court had relied on the “ubiquitous reputation” of BOTOX (its fame as an injectable) to hold that consumers might wonder whether PROTOX came from the same source. The High Court rejected that route. The correct comparison is between the impression the notional buyer would have of BOTOX as “notionally used” on the class 3 goods covered by the registration and the impression of PROTOX “as actually used” on Self Care’s products. When that comparison was properly conducted, visual and aural similarities did not produce a real, tangible danger of confusion, i.e. PROTOX was not deceptively similar.
Australian Consumer Law claim
On the Australian Consumer Law claim, the High Court took a granular contextual approach. The Full Court had found that the phrase “instant Botox® alternative”, read in context, conveyed two representations: (a) Inhibox produced wrinkle-reduction similar to Botox; and (b) that the effect would last for a period equivalent to Botox injections (the “long-term efficacy” representation). The High Court accepted that Inhibox could be described as an “alternative” and that “instant” effects were claimed; it accepted the primary judge’s finding that Self Care had reasonable grounds for claiming significant short-term results. But the High Court concluded that the total packaging and marketing context (which repeatedly stated that Inhibox’s immediate effect “lasts for hours”, and separately touted cumulative “long-term” benefits from continued use) meant the reasonable consumer would not take away that a single Inhibox use produced Botox-length durability. This means that inconsistent immediate claims and broader references to cumulative improvement undermined any inference that consumers would expect Botox-length post-treatment efficacy.
That said, a marketer can truthfully say an over-the-counter product is an “alternative” in the sense of achieving similar visual outcomes in some respects but must avoid wording or layout that a reasonable consumer would interpret as promising the same duration of effect as a clinically administered pharmaceutical. The High Court’s close attention to how copy reads as a whole is a reminder that surrounding text and qualifiers matter in consumer law assessments.
Practical lessons
The Self Care decision delivers a number of practical insights for brand owners and applicants, especially those navigating the blurred line between marketing language and trade mark use. It reinforces that trade mark law is ultimately about how signs operate in real commercial contexts, not about what they might suggest in isolation.
Descriptive and Comparative Phrases
The Court’s finding that “instant Botox® alternative” was not used as a trade mark offers comfort to marketers who use comparative or descriptive language. A phrase that simply describes what a product does or how it compares to others will rarely be treated as a trade mark if it is used incidentally, in varied fonts or styles, and alongside clear source identifiers. What matters is function. If the phrase is acting as marketing copy, not as a badge of origin, it falls outside section 120. However, the line can easily blur. If a descriptive phrase is placed prominently and repeatedly across packaging or advertising, it may begin to function as a trade mark in practice. Brand owners should therefore ensure that their house mark remains dominant, while any comparative descriptors remain visually and contextually subordinate.
Keeping the Brand consistent
Self Care’s success owed much to the way its packaging clearly identified FREEZEFRAME and INHIBOX as the brands in play. The descriptive phrase was always positioned as supporting language, not as the brand itself. For businesses, the lesson is simple: a clear and consistent house mark anchors the consumer’s perception of origin. Before finalizing packaging, ask what element stands out most as the product’s identifier. If a consumer’s first impression is of the descriptive phrase rather than your actual trade mark, the risk of confusion or infringement increases. Consistency of font, placement, and prominence all matter more than one might expect.
Reputation Does Not Stretch Monopoly
Allergan’s reliance on the fame of BOTOX ultimately backfired. The High Court drew a bright line, holding that reputation plays no role in assessing deceptive similarity under section 120(1). That inquiry focuses strictly on the notional registered mark and the mark as actually used by the alleged infringer. Reputation can be relevant only where the statute expressly allows for it, such as under section 60 for oppositions or section 120(3) for well-known marks. For established brand owners, this means fame alone will not widen the zone of protection under ordinary infringement. Protection depends on what is actually registered and how it is used in trade. It is therefore crucial to maintain active registrations across relevant classes and to ensure that brand extensions are backed by genuine market use.
Defensive Marks Are Not Bulletproof
The case also undercuts complacency around defensive registrations. Although BOTOX had defensive coverage in Class 3, that did not prevent scrutiny of whether Self Care’s use infringed. A defensive registration can be useful, but it does not replace the need for genuine commercial presence in that market. If your brand intends to expand into new categories, it is prudent to make at least limited, bona fide use within those categories. Even token sales or cross-promotional products can demonstrate trade mark use and strengthen future enforcement.
Context Determines Everything
Perhaps the clearest lesson from Self Care is that context controls. A single phrase can appear harmless on one product and infringing on another, depending on layout, surrounding text, and presentation. Businesses should review their packaging, online listings, and advertising holistically. What matters is the impression conveyed to the ordinary consumer at the point of sale. A phrase that reads as descriptive on a box might look like a brand name when used as a hashtag or campaign slogan. Before launch, it helps to test packaging with people outside the business to see what they perceive as the product’s name.
Comparative Marketing and Consumer Law
The decision also offers guidance for comparative marketing. The Court accepted that it is lawful to describe a product as an “alternative” to a well-known brand, provided the claim is truthful and not likely to mislead. What saved Self Care was that its packaging and advertising clearly indicated the limited, short-term nature of the effect and did not promise equivalence to Botox injections. Marketers can use comparative language, but only if the comparison is accurate and adequately qualified. Substantiation is key, i.e. evidence such as consumer trials, lab tests, or research data should support any performance claims. If a slogan implies parity in mechanism or longevity without evidence, it risks breaching the Australian Consumer Law even if it avoids trade mark infringement.
Applicants and New Brands
For applicants developing new marks, the decision is reassuring. The Court’s reasoning shows that similarity to a famous brand will not automatically bar registration or use. The question is whether consumers would genuinely think the goods come from the same source. A coined word like PROTOX can coexist with a mark like BOTOX if its overall impression is distinct. When clearing new brands, focus on how the mark looks and sounds as a whole, rather than being deterred by superficial resemblances to well-known words.
Conclusion
The High Court’s judgment is pragmatic and doctrinally tidy. It tightens the boundaries of sec 120(1) infringement, protecting the statutory register as the primary source of rights, while leaving consumer protection rules intact and effective. For brand owners, the message is twofold, i.e. maintain and police your marks within the statutory architecture the Act sets out, but don’t assume trade mark law will rescue you from consumer law mis-considerations. That said, for practitioners, the case is now an authoritative stop-point on the reputation question, i.e. use the Register, not fame, to shape infringement claims under sec 120(1).
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