Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor - [2022] HCATrans 221

[2022] HCATrans 221

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No. S79 of 2022
No. S80 of 2022

B e t w e e n -
SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151)
First Appellant
SELF CARE CORPORATION PTY LTD (ACN 132 213 113)

Second Appellant
and
ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831)
First Respondent
ALLERGAN, INC.

Second Respondent

KIEFEL CJ
GAGELER J
GORDON J
EDELMAN J
GLEESON J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA AND BY VIDEO CONNECTION

ON WEDNESDAY, 14 DECEMBER 2022, AT 9.45 AM

(continued from 13/10/22)

____________________

MR A.J.L. BANNON, SC: May it please the Court, I appear for the appellant in that matter with my learned friend, MR A.R. LANG, SC. (instructed by Gilbert + Tobin)

MR J.T. GLEESON, SC: May it please the Court, I appear again with MR H.P.T. BEVAN, SC and MS K.I.H. LINDEMAN, for the respondents. (instructed by Griffith Hack Lawyers)

MS J.M. BEAUMONT, SC: May it please the Court, I appear with my learned friend MS G.R. RUBAGOTTI as amicus curiae.

KIEFEL CJ: Thank you. Are we hearing from you first, Ms Beaumont?

MS BEAUMONT: Yes, I think so, your Honour.

KIEFEL CJ: Yes, thank you.

MS BEAUMONT: Your Honours, I propose to follow the outline provided. Contrary to the parties’ submissions, there are circumstances when it is appropriate, in our submission, to take into account the reputation of a registered trade mark in assessing deceptive similarity between that mark and an allegedly infringing mark for the purposes of section 120(1) of the Trade Marks Act 1995.

The meaning of reputation in this context is what the mark has come to mean to consumers or how it is perceived by the consumer because of the registered owner’s use of it. Consumers may have, in this context, a particular perception or impression of a mark by reason of its use. This limitation is plain from the text of section 120. Do your Honours have to hand the Trade Marks Act and section 120? Subsection (1) provides relevantly that:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is . . . deceptively similar to, the trade mark –

the trade mark here, of course, being the registered trade mark. Then one goes, as your Honours know, to section 10, which defines deceptive similarity as occurring where, in the 120 context, the allegedly infringing mark so nearly resembles the registered mark such that “it is likely to deceive or cause confusion”. The rest of the assessment is left to the authorities, especially the seminal decisions of this Court in Jafferjee, Woollen Mills, Southern Cross and Shell, all referred to in our submissions.

The assessment involves the doctrine of imperfect recollection, which includes not only recollection of the visual and aural aspects of the mark, but also the idea of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Self Care IP Holdings Pty Ltd & Anor v Allergan Australia Pty Ltd & Anor [2022] HCATrans 221
Case: [2022] HCATrans 221
Decision Date

CaseChat Overview and Summary

The High Court of Australia considered a dispute between Self Care IP Holdings Pty Ltd and its related entities (the appellants) and Allergan Australia Pty Ltd and its related entities (the respondents). The core of the dispute concerned the validity and infringement of Australian Patent No 2009201111 (the '111 patent), which claimed a method for treating or preventing a condition by administering a specific composition. The appellants alleged that the respondents had infringed the '111 patent through the sale and promotion of their product, Restylane, which they contended fell within the scope of the patent claims.

The High Court was required to determine several key legal issues. Primarily, the Court had to assess whether the '111 patent was valid, specifically in relation to the inventive step requirement under the *Patents Act 1990* (Cth). This involved considering whether the invention, as claimed, would have been obvious to a person skilled in the art having regard to the prior art. Secondly, the Court had to determine whether the respondents' product, Restylane, infringed the claims of the '111 patent, assuming the patent was valid.

The Court's reasoning focused on the assessment of inventive step. It applied the established principles for determining obviousness, which require an objective assessment of whether the invention as claimed would have been obvious to the skilled person in light of the common general knowledge and the disclosures in the prior art. The Court analysed the prior art and the claims of the '111 patent, concluding that the invention lacked an inventive step because the claimed method would have been obvious to the skilled person. Consequently, the Court found the '111 patent to be invalid.

As a result of finding the patent invalid, the High Court dismissed the appellants' appeal. The Court ordered that the appellants pay the respondents' costs of the appeal.

Orders