Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299

Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299

The respondent's use of 'BSS' on the label of its AQSIA™ product constituted use as a trade mark, infringing the applicant's registered trade mark, as the letters 'BSS' have brand significance and were not proven to be generic or descriptive within the relevant Australian trade. The respondent failed to establish good faith under s 122(1)(b)(i) or to show that the trade mark was non-distinctive or generic, and thus failed in its cross-claim for cancellation.

Parties
Applicant/cross Respondent: Alcon Inc; Respondent/cross Claimant: Bausch & Lomb (Australia) Pty Ltd (ACN 000 650 251)
Jurisdiction
Australia
Judgment Date
12 November 2009
Procedural Posture
Trade Mark Infringement and Rectification of Register / Judgment After Trial
Outcome
Applicant succeeded on infringement; respondent's cross-claim for cancellation dismissed.
Legal Topics
Trade Marks, Infringement, Rectification of Register, Distinctiveness, Genericism, Defences to Infringement
Intellectual Property Law Trade Marks Infringement Rectification of Register Distinctiveness Genericism Defences to Infringement

Case Brief

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Parties

Alcon Inc

Applicant/cross Respondent

Bausch & Lomb (Australia) Pty Ltd (ACN 000 650 251)

Respondent/cross Claimant

Procedural Posture

Trade Mark Infringement and Rectification of Register / Judgment After Trial

Legal Issues

  1. 1 Whether use by the respondent of the letters 'BSS' infringed the applicant's registered trade mark for 'BSS' in Class 5 for ophthalmic irrigating solution
  2. 2 Whether the respondent used 'BSS' in good faith to indicate kind, quality, intended purpose, or other characteristic of the product under s 122(1)(b)(i) of the Trade Marks Act 1995 (Cth)
  3. 3 Whether 'BSS' was a descriptive acronym for 'balanced salt solution' in the Australian market as at March 1988 or at any time thereafter

Ratio Decidendi

The respondent's use of 'BSS' on the label of its AQSIA™ product constituted use as a trade mark, infringing the applicant's registered trade mark, as the letters 'BSS' have brand significance and were not proven to be generic or descriptive within the relevant Australian trade. The respondent failed to establish good faith under s 122(1)(b)(i) or to show that the trade mark was non-distinctive or generic, and thus failed in its cross-claim for cancellation.

Court Disposition

Applicant succeeded on infringement; respondent's cross-claim for cancellation dismissed.

Orders

  • Declaration: By using 'BSS' on 19 ml AQSIA™ product label, respondent infringed Australian Registered Trade Mark No 483823.
  • Permanent injunction restraining respondent from using 'BSS' or a substantially identical/deceptively similar mark for ophthalmic irrigating solution without licence.