On 12 November 2009, the Federal Court of Australia delivered
its judgment in Alcon Inc v Bausch & Lomb (Australia) Pty Ltd
 FCA 1299 (available here). This case upheld a claim for
infringement of the trade mark BSS, brought by a manufacturer and
supplier of ophthalmic irrigating solution, against a competitor
for use on the same product. The infringement was found in
circumstances where the use was claimed to be descriptive of the
product, as an abbreviation for Balanced Salt Solution, and the use
was not on the box of sachets but on the labelling of the
individual 19 ml sachets themselves. The judge found that whilst
the respondent could have used "Balanced Salt Solution",
it chose to use "BSS" and that those letters were
performing a branding function.
The finding of the court validates the use of acronyms as trade
marks, so long as the acronym is not generally accepted to signify
a generic term for the product. In this case, evidence that letters
"BSS" were sometimes used in the relevant period in
scientific journal articles as a convenient editorial abbreviation
for "balanced salt solution" did not mean that the
acronym was generally accepted by the trade as a generic term.
Middletons' successfully acted on behalf of Alcon Inc
(Alcon), a company incorporated in Switzerland. Alcon's
wholly-owned Australian subsidiary, Alcon Laboratories (Australia)
Pty Limited (Alcon Australia) manufactures and distributes a wide
variety of surgical consumable products in Australia. In 1988,
Alcon registered the mark "BSS" in Class 5 for ophthalmic
irrigating solution (the BSS Mark). The BSS Mark was used on two
different types of sterile balanced salt solution products that
have been manufactured and supplied by Alcon Australia for use in
ophthalmic surgery for many years.
Alcon brought proceedings against Bausch & Lomb (Australia)
Pty Limited (B&L) in 2006, alleging infringement of its BSS
Mark. Alcon claimed that in the period between June 2006 and
September 2008 B&L had supplied and offered to supply 19 ml
plastic bottles of its AQSIATM brand balanced salt
solution to ophthalmic surgeons and others, with an affixed label
that incorporated the letters "BSS".
B&L denied trade mark infringement and cross-claimed against
Alcon seeking cancellation of the BSS Mark on the grounds that the
BSS Mark was not distinctive as at the priority date and,
alternatively, that "BSS" had since become a generic name
for standard balanced salt solutions used in ophthalmic
On the cross-claim, Justice Foster found that:
the BSS Mark was distinctive because it had been used
extensively by Alcon and no other trader in Australia; and
while "BSS" could be used as an abbreviation for
balanced salt solution, the BSS Mark had not become generally
accepted as a generic description of the relevant goods by other
persons in the trade.
Having dismissed the cross-claim, Foster J dealt with the issue
"If all that was being done was
to describe the contents of the bottle, the full expression
'balanced salt solution' would have done nicely. Further,
given that the letters 'BSS' were not used generically in
the relevant period to signify 'balanced salt solution',
the generic term ('balanced salt solution') would have been
the most appropriate way to describe the contents of the
On this basis, Foster J held that the letters "BSS" as
used on B&L's product were a clear infringement of
Alcon's BSS Mark.
Implications for trade mark owners
Interestingly, his Honour noted the letters "BSS" as
they were used by B&L "may have been used in this way as
an opening shot in a campaign by [B&L] designed to demonstrate
or generate generic use of the letters 'BSS'".
This case is a timely reminder to trade mark owners to be
vigilant about the way other traders and publications use their
registered trade marks to ensure that the trade marks are not being
used in a generic way, and putting the trade mark registrations at
It is also clear from this decision that the Courts will not
countenance conduct which is a cynical adoption of another
trader's registered trade mark, even if the use is not
prominent and clear cut branding, and used together with our trade
marks. If the use is prominent enough on a product, even use on the
inside label of a product, which will not come to the attention of
the consumer until after purchase, the Court will infer that the
mark is functioning in a branding sense.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).