Does Protox come from the Botox people?

Botox is the well-known injectable product used to freeze facial features for between 3 to 6 months to give a smoother and more youthful appearance.  As it is injected, it is administered by health professionals.

Protox is a cream that is self-administered and is designed to temporarily reduce the appearance of wrinkles.

Do you think Protox comes from the same people that make Botox?  (Just sit on your answer in your own mind, like a “pick a card trick” with a magician).

That is the central test for trademark infringement.  Is one mark substantially identical with, or deceptively similar to, a registered mark?

The High Court has held that use of “Protox” was not deceptively similar to the registered mark “Botox”.[1]  The High Court’s reasoning was:

• The two words were similar, the only difference between them was one started with “pr” and the other with “b”.  But the Court did not believe this would not cause confusion in consumers’ minds between the marks or the underlying products (with aural and visual similarities just one part of the inquiry);[2] and
• Do the similarities imply an association so that consumers wonder whether they come from the same source?  The court decided no, there was no real risk of confusion as the marks are sufficiently distinctive.  This was reinforced by Protox being used in association with its brand name (“Freezeframe”) on its packaging and no evidence of actual confusion.[3]

The reputation of the mark allegedly infringed is not relevant to deceptive similarity, it is simply based upon what marks have been registered.[4]  So Botox’s high reputation was simply not relevant.

The outcome could have been different if Botox had been able to obtain and tender to the Court evidence of actual confusion amongst consumers.

It is worth noting that Protox was the product name, not the brand name of the trader who sold the cream product (their brand being Freezframe).

The key takeaway for me out of this decision is that the Court is crediting consumers with a strong degree of intelligence and discernment.  Freezeframe is not the first competitor that uses a similar name, perhaps cheekily, perhaps underhandedly, that has sought to use a similar name to the market leader to perhaps ride on the market leader’s coattails who has strong reputation and consumer recognition.  The Court in a way is recognising this trend and believe that consumers would be aware of it and wouldn’t believe the two products come from the same source.

Was that the conclusion you came to in your own mind?  (If not, then you are in the same boat as the judges in the lower Federal Court, but the High Court is the highest court of the land.)