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

FEDERAL COURT OF AUSTRALIA

Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 TRADE MARKS – whether use by the respondent of the letters "BSS" on the label of one of the containers in which it supplied its AQSIA™ brand balanced salt solution was trade mark use and thus infringed the applicant's registered trade mark for "BSS" in Class 5 for ophthalmic irrigating solution – whether the respondent established that it used the letters "BSS" in that way in good faith in order to indicate the kind, quality, intended purpose or some other characteristic of its AQSIA™ brand balanced salt solution and should therefore be held not to have infringed the applicant's "BSS" trade mark by reason of s 122(1)(b)(i) of the Trade Marks Act 1955 (Cth) – whether the letters "BSS" as at March 1988 or at any time thereafter were used as a descriptive acronym for "balanced salt solution" in the relevant trade in Australia for sterile ophthalmic irrigating solutions – whether the respondent established that, as at the date of its Cross-Claim, the letters "BSS" were not distinctive of the applicant's "BSS" balanced salt solution product – whether the respondent established the pleaded grounds for cancelling the applicant's "BSS" trade mark – respondent held to have infringed the applicant's "BSS" trade mark – respondent not entitled to an order cancelling the registration of that trade mark Evidence Act 1995 (Cth), s 55(1) Trade Marks Act 1995 (Cth), ss 6, 7, 17, 24, 41, 57, 87, 88, 89, 120, 122 and 234 Trade Marks Act 1955 (Cth) Trade Mark Regulations 1995, cl 8.2 Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435 cited Anheuser-Busch Inc v Budejovický Budvar (2002) 56 IPR 182 followed Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 followed Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 cited Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 followed Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 followed Crooks Michell Peacock Stewart Pty Ltd v Kaiser (t/as Commercial Art & Industrial Design) (1994) 29 IPR 225 cited HCA Colours Australia Pty Ltd v Holland Colours NV (2003) 59 IPR 507 cited Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 applied Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494 followed Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 cited TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358 applied