Trade Mark Use: We need a more balanced solution
The 12 November 2009 decision in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299 focuses almost exclusively on whether the defendant had used the plaintiff’s trade mark ‘as a trade mark’. Alcon has a registered trade mark ‘BSS’ for ophthalmic irrigation products and, not surprisingly, objected to Bausch & Lomb (BL) using the expression ‘BSS’ on its labels for its products. The case revolved primarily around the issues of whether BL had used the trade mark as a trade mark and related issues as to whether the trade mark should remain registered, primarily on the grounds that it was not distinctive.
Whether BL was using the letters BSS as a trade mark required a detailed analysis of the context of that use. Set out below are the findings of the Judge.
155. The following factors are relevant to the present question:
(a) The letters “BSS” appear in block white letters in the top section of the label with the royal blue background. The trade mark “AQSIA™” appears in the same part of that label. The letters used to form “AQSIA™” are larger than those used to form “BSS”. This part of the label is intended to be separate from and more prominent than the rest of the label. The impression created by the positioning of “AQSIA” and “BSS” is that this part of the label is dealing with branding of the product;
(b) The word “sterile” appears immediately underneath the blue backgrounded top part of the label. It is a description, at least to some extent, of the contents of the bottle.
(c) The name “BAUSCH & LOMB” appears on the bottom half of the label in block blue letters against a white background;
(d) There is no other indication on the bottle or on the plastic sachet as to the contents of the bottle;
(e) The sachets are supplied in the cardboard box described at [5] above. That box is a dispenser. Importantly, in a number of places, the words “balanced salt solution” appear on the box but the letters “BSS” do not;
(f) The trade mark “AQSIA™” and the corporate name “BAUSCH & LOMB” also appear prominently on the box;
(g) The Product Information Leaflet in the box does not mention “BSS” but does refer to “balanced salt solution”.
(h) The 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 (Alcon BSS).
In addition, Foster J found that BSS was not generally used within the relevant trade in Australia as descriptive of the term ‘balanced salt solution’.
This article focuses on point (h) above and its relevance or more to the point its irrelevance. Right up to point (g), the paragraph of the judgment reads well. It deals exclusively with BL’s conduct and, in particular, the manner in which it has used the sign BSS. The inquiry is directed entirely towards whether BL’s use is use designed to describe its product generally or to distinguish its goods from other goods, that is, to suggest that the letters BSS say to consumers, ‘when you see the letters ‘BSS’, you are seeing our goods and nobody else’s goods’.
Once we get to point ‘(h)’, a problem arises because the focus now shifts to what the applicant has done with its trade mark and the reputation arising from that use. Yet that is not relevant to whether the defendant has used the sign in question to distinguish its goods from other goods. Trade mark use requires an analysis of the nature of the defendant’s conduct and, in particular, whether it has used a particular sign so as to distinguish its goods from other goods. The question at this point is not whether consumers are likely to be deceived or confused by the defendant’s conduct. In fact, for the purposes of s120(1), the plaintiff does not have to prove such deception or confusion. Use as a trade mark of a deceptively similar trade mark is enough to establish infringement. Similarity between trade marks is a very different matter from considering whether the defendant’s use of its trade mark has or is likely to deceive or cause confusion.
To be fair to Foster J, the plaintiff’s reputation has been considered relevant to the question of infringement in previous cases. The most recent case where this occurred was Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606. However, in that case, the court considered that the plaintiff’s reputation for its trade mark was relevant to the question of whether the two trade marks were deceptively similar, not whether the defendant had used a particular trade mark as a trade mark.Even that approach is somewhat dubious and the case itself acknowledged that such an approach can only be taken in limited circumstances.
To now begin to introduce the relevance of the plaintiff’s reputation into the inquiry about trade mark use by the defendant invites a conflation of the two issues of use of a sign by the defendant as a trade mark and the similarity between that sign and the plaintiff’s trade mark. It was this conflation that the Full Federal Court warned against in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721. They are separate inquiries and the reputation of the plaintiff is irrelevant to the question of whether or not the defendant has used a particular sign as a trade mark.
Of course, the conclusion that use as a trade mark had occurred in the case relied on other factors and, as noted above, points (a) to (g) are relevant and compelling. But if relying on (h) becomes a habit, we might as well abandon our present trade mark infringement rules and simply introduce a general test of whether consumers are deceived or confused or are likely to be deceived or confused as a consequence of the defendant’s conduct.
