On 15 March 2023, the High Court delivered a judgment in favour of Gilbert + Tobin client, Self Care Corporation, in its legal dispute with Allergan, the supplier of Botox®.

Self Care is a leading Australian cosmetics company that creates and distributes innovative beauty products locally and internationally under brands including “freezeframe” and “Keep it Simple Skin”. 

In this case, Allergan brought proceedings against Self Care Corporation in the Federal Court of Australia alleging trade mark infringement and contraventions of the Australian Consumer Law based on use of PROTOX as a sub-brand for one of Self Care Corporation’s freezeframe products, and various marketing claims made for this product and Self Care Corporation’s freezeframe INHIBOX product, including the phrase “instant Botox® alternative”. Self Care Corporation denied the claims.

The trial judge dismissed all but one of Allergan’s claims. Allergan then appealed some of the claims to the Full Federal Court. The Full Court ruled against Self Care Corporation, adopting a novel approach to the test for trade mark infringement and contentious application of the Australian Consumer Law to the one remaining consumer law claim.

Self Care Corporation then transferred the case to Gilbert + Tobin.

Partner Michael Williams said, “The team were successful in obtaining special leave to appeal to the High Court. A bold plan was formulated to challenge the Full Court decision by seeking clarification from the High Court about the use of trade marks in comparative advertising and whether in market business reputation could be relied on to expand or contract the scope of the trade mark for the purposes of infringement. The same issue of reputation was used to bring the remaining Australian Consumer Law point within the scope of the appeal.”

The issue of reputation was so significant that the Court required the appointment of amicus curiae to act as contradictor, in what is believed to be a first in a High Court intellectual property appeal.

On Wednesday the 15th March, the High Court allowed that appeal unanimously, ruling in favour of Self Care Corporation.  It was found there was no trade mark infringement and no contravention of the Australian Consumer Law resulting from Self Care’s Corporation’s products.

It was the first decision of the High Court in a trade mark case since 2014 and one of the most important decisions ever given by the Court on trade mark law. The High Court clarified that there is no relevant use of a trade mark when a trade mark is used in order to describe a product and present it as an alternative to another product. The Court also ruled that business reputation is not relevant for the purposes of assessing whether there is infringement under s 120(1) of the Trade Marks Act 1995 (Cth).

The High Court also provided important guidance on the application of the Australian Consumer Law to product packaging, particularly claims made about the performance of the products. 

It is a business-critical result for Self Care Corporation, an Australian cosmetics business that is owned and operated by leading businesswoman, founder and CEO, Sonia Amoroso.

The Gilbert + Tobin team was partner Michael Williams, special counsel Rebecca Smith and lawyer Alana Callus. Counsel for Self Care Corporation were Tony Bannon SC and Angus Lang SC.

This is another win for the G+T IP team in the High Court, following the successful appeal for client, Calidad, in 2020, which was also led by Michael Williams. 

The High Court judgment is Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8

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