In a significant development in trade mark law in Australia, the Federal Court in the case of Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299, has ruled that an acronym can function as an enforceable trade mark in Australia.
The dispute between Alcon Inc (“Alcon”) and Bausch & Lomb (Australia) Pty Ltd (“Bausch”) arose out of the use of the acronym 'BSS' (Balanced Salt Solution).
The acronym 'BSS' was a registered trade mark of Alcon, but appeared on the packaging of Bausch’s 'AQSIA' branded salt solution.
In response to Bausch’s use of 'BSS', Alcon commenced infringement proceedings in the Federal Court. In its defence, Bausch argued that it honestly believed that the acronym 'BSS' is descriptive of a balanced salt solution and that it acted without any ulterior motive when using the letters 'BSS' on its packaging. Additionally, Bausch filed a cross-claim against Alcon seeking the cancellation of the 'BSS' trademark on the basis that 'BSS' is not distinctive, or in the alternative, had become generic.
The Federal Court dismissed Bausch’s cross-claim and declared that Bausch had infringed Alcon’s trade mark in the acronym 'BSS'. The Federal Court rejected Bausch's contentions that it had acted without an ulterior motive and in the belief that the acronym was merely descriptive. The Federal Court found that Alcon had previously put Bausch on notice regarding its use and registration of “BSS”.
The case highlights the following important points for businesses seeking to enforce or defend their trade mark rights:
1. An acronym may be registered as a trade mark.
2. Take care if you propose to use an acronym in conjunction with your product - that acronym may be a registered trade mark of a third party.
3. Seek legal advice in respect of these matters. Don't believe that you will necessarily 'get it right' yourself.
