Generic case brings a tear to Bausch & Lomb's eye

In Alcon Inc v Bausch & Lomb (Australia) Pty Ltd ([2009] FCA 1299, November 12 2009), the Federal Court has held that Bausch & Lomb (Australia) Pty Ltd (B&L) had infringed the Australian trademark registration for the letters 'BSS' (Registration 483823 ), which is owned by Alcon Inc. B&L’s defence to infringement and cross-claim for expungement of the registration both failed.
Alcon alleged trademark infringement based on use by B&L of the letters 'BSS' on 19 millilitres plastic bottles of ophthalmic irrigating solution (a balanced salt solution for intraocular and extraocular use in surgical procedures). The bottles were generally supplied in sealed plastic sachets packaged in partitioned cardboard boxes, each containing 12 sachets. The letters 'BSS' appeared only on the individual sachets. The trade name AQSIA and the corporate name Bausch & Lomb featured prominently on both the sachets and the boxes.
The court had to consider whether:
  • use by B&L of the letters 'BSS' on the irrigating solution was use as a trademark - and thus infringing use under Section 120(1) of the Trademarks Act 1995;
  • use by B&L of the letters 'BSS' was merely a descriptor of the contents of the bottle (ie, balanced salt solution), or a recognized abbreviation of the generic name for the contents of the bottle, in either case the use would amount to a complete defence to infringement under Section 122(1)(b)(i) of the act; and
  • the registration for BSS should be cancelled because:
    • it was an entry wrongly made in the register (Section 88(2)(a) of the act); or
    • it had become generic after registration (Section 24(1)).
B&L submitted numerous journal articles, several extracts from dictionaries, as well as two extracts from textbooks in support of its defence to the infringement claim and the grounds for cancellation of the registration. No trade evidence was submitted. The court found most of the evidence to be inadmissible, as it was published overseas and thus not relevant to establishing use in the relevant trade in Australia. The evidence that was admitted was insufficient to show generic use of the letters 'BSS'.
The issue of trademark use was decided on the basis of principles enunciated in previous Australian cases and summarized in Anheuser-Busch Inc v Budejovicky Budvar ([2002] FCA 390). Words are to be examined in their context, including the totality of the packaging. Despite B&L's use of the trademarks AQSIA and BAUSCH & LOMB, the court found that B&L had also used the letters 'BSS' as a trademark to distinguish its goods from the similar goods of other traders. The court's finding that the letters 'BSS' had not been generally used in the relevant trade in Australia as descriptive of 'balanced salt solution' was a decisive factor.
On the issue of whether B&L had used the letters 'BSS' in good faith as a description, the court found that B&L had known of Alcon’s registration and had not presented evidence of its motivations for using BSS such as to establish its good faith. The absence of general descriptive use was also relevant.
B&L cross-claimed for the expungement of the BSS mark. However, B&L failed to pass through the 'gateway' provided by Section 234 of the act and dislodge the presumption of validity of the mark. 
Despite this finding, the court went on to explore the grounds for expungement in case it had erred in its decision on the threshold issue. B&L failed to prove that the letters BSS did not distinguish Alcon’s product from the similar products of other traders as of the application date (ie, March 22 1988), and the court found that the mark had not become generic in the period between March 22 1988 and December 6 2006.
While it was not necessary for the court to consider the discretionary provision under Section 89 of the act, it commented that even if one of the grounds for expungement had been successful, it would have exercised its discretion not to remove the mark from the register because Alcon had satisfied it that “the ground relied on by [B&L] ha[d] not arisen through any act or fault of [Alcon]”. 
Kathy Mytton and Sean McManis, Shelston IP, Sydney

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