Salt solution TM has infringer in tears
The Federal Court has held that a trade mark consisting of the letters BSS, used in relation to a product known as a balanced salt solution, was both valid and infringed in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299.
In 1988, Alcon applied to register the trade mark BSS in respect of ophthalmic irrigating solutions and had for many years used that mark in relation to such a product known as a balanced salt solution. Bausch & Lomb began selling its own balanced salt solution and in addition to using its own trade mark AQSIA in relation to that product, applied the letters BSS.
In response to a claim of infringement by Alcon, Bausch & Lomb both denied infringement on the basis that their use of the letters BSS was not use as a trade mark and also challenged the validity of the trade mark registration.
In support of its contention that the trade mark did not distinguish the goods of Alcon, Bausch & Lomb sought to rely on a number of publications showing use of the letters BSS in relation to balanced salt solutions. However, Foster J upheld objections by Alcon to the admissibility of many publications on the basis that they were published overseas. His Honour considered that:
it is a long bow for the Court to draw to find that use in the relevant trade in Australia can be established by the availability here of journals, dictionaries and textbooks published overseas which, to some extent, may have been read or looked at by persons participating in that trade.
As to those articles published in Australia, Foster J concluded that:
when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed.
Accordingly, Bausch & Lomb failed to satisfy the “gateway” requirements of section 234(2)(e), resulting in failure of its validity challenge. Foster J nevertheless went on to consider the grounds of invalidity raised finding that none of those grounds were made out. In particular, his Honour considered that the letters BSS were not used as a descriptive acronym for “balanced salt solution” at the priority date and that the letters were at that time adapted to distinguish the goods of Alcon. Further, the trade mark had not since that time become a generic description of the goods in respect of which it was registered, namely a balanced salt solution.
In relation to Alcon’s claim of infringement, Foster J found that despite the Bausch & Lomb product bearing the trade marks BAUSCH & LOMB and AQSIA, the letters BSS were nevertheless being used as a trade mark rather than merely descriptively, noting that “[i]f all that was being done was to describe the contents of the bottle, the full expression “balanced salt solution” would have done nicely.” Perhaps more controversially, his Honour also consider that a factor relevant to whether Bausch & Lomb was using the letters as a trade mark was that ”[t]he letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark”. This seems to suggest a presumption that use of a well known sign is use as a trade mark rather than descriptive use.