On 12 November 2009, the Federal Court of Australia delivered its judgment in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 (available here). This case upheld a claim for infringement of the trade mark BSS, brought by a manufacturer and supplier of ophthalmic irrigating solution, against a competitor for use on the same product. The infringement was found in circumstances where the use was claimed to be descriptive of the product, as an abbreviation for Balanced Salt Solution, and the use was not on the box of sachets but on the labelling of the individual 19 ml sachets themselves. The judge found that whilst the respondent could have used "Balanced Salt Solution", it chose to use "BSS" and that those letters were performing a branding function.

The finding of the court validates the use of acronyms as trade marks, so long as the acronym is not generally accepted to signify a generic term for the product. In this case, evidence that letters "BSS" were sometimes used in the relevant period in scientific journal articles as a convenient editorial abbreviation for "balanced salt solution" did not mean that the acronym was generally accepted by the trade as a generic term.

Background

Middletons' successfully acted on behalf of Alcon Inc (Alcon), a company incorporated in Switzerland. Alcon's wholly-owned Australian subsidiary, Alcon Laboratories (Australia) Pty Limited (Alcon Australia) manufactures and distributes a wide variety of surgical consumable products in Australia. In 1988, Alcon registered the mark "BSS" in Class 5 for ophthalmic irrigating solution (the BSS Mark). The BSS Mark was used on two different types of sterile balanced salt solution products that have been manufactured and supplied by Alcon Australia for use in ophthalmic surgery for many years.

Alcon brought proceedings against Bausch & Lomb (Australia) Pty Limited (B&L) in 2006, alleging infringement of its BSS Mark. Alcon claimed that in the period between June 2006 and September 2008 B&L had supplied and offered to supply 19 ml plastic bottles of its AQSIATM brand balanced salt solution to ophthalmic surgeons and others, with an affixed label that incorporated the letters "BSS".

B&L denied trade mark infringement and cross-claimed against Alcon seeking cancellation of the BSS Mark on the grounds that the BSS Mark was not distinctive as at the priority date and, alternatively, that "BSS" had since become a generic name for standard balanced salt solutions used in ophthalmic surgery.

Decision

On the cross-claim, Justice Foster found that:

  • the BSS Mark was distinctive because it had been used extensively by Alcon and no other trader in Australia; and
  • while "BSS" could be used as an abbreviation for balanced salt solution, the BSS Mark had not become generally accepted as a generic description of the relevant goods by other persons in the trade.

Having dismissed the cross-claim, Foster J dealt with the issue of infringement:

"If all that was being done was to describe the contents of the bottle, the full expression 'balanced salt solution' would have done nicely. Further, given that the letters 'BSS' were not used generically in the relevant period to signify 'balanced salt solution', the generic term ('balanced salt solution') would have been the most appropriate way to describe the contents of the bottle."

On this basis, Foster J held that the letters "BSS" as used on B&L's product were a clear infringement of Alcon's BSS Mark.

Implications for trade mark owners

Interestingly, his Honour noted the letters "BSS" as they were used by B&L "may have been used in this way as an opening shot in a campaign by [B&L] designed to demonstrate or generate generic use of the letters 'BSS'".

This case is a timely reminder to trade mark owners to be vigilant about the way other traders and publications use their registered trade marks to ensure that the trade marks are not being used in a generic way, and putting the trade mark registrations at risk.

It is also clear from this decision that the Courts will not countenance conduct which is a cynical adoption of another trader's registered trade mark, even if the use is not prominent and clear cut branding, and used together with our trade marks. If the use is prominent enough on a product, even use on the inside label of a product, which will not come to the attention of the consumer until after purchase, the Court will infer that the mark is functioning in a branding sense.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.