Bausch & Lomb were distributing an ophthalmic irrigating solution in Australia in bottles like this:

The bottles themselves were packaged in cardboard boxes which did not have “BSS” on them and the products were distributed to hospitals and the like.

Alcon, however, has BSS registered as a trade mark in class 5 for such products.

One point of interest is that Bausch & Lomb sought to show that BSS had become descriptive in the trade by relying on a range of publications which included expressions such as “balanced salt solution (BSS Alcon)”, with subsequent references being just to BSS.

Most of the publications were dismissed as inadmissible, being foreign publications not shown to be directed at Australia or referred to by Australians. On the other hand, those in Australia that were admitted:

98 A fair reading of those journal articles suggests that, when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed. The one example of use of the letters “BSS” in government Request for Tender documents is in the same category.

The evidence further showed that until Bausch & Lomb came along, all Alcon’s other competitors used “balanced salt solution” but not BSS. Bausch & Lomb’s conduct, the subject of the proceeding, was the sole exception.

A second, more general, issue is whether or not Bausch & Lomb is using BSS as a trade mark. Foster J found it was. Over at the Australian Trade Marks blog, Professor Davison accepts that there was considerable grounds to find that it was use as a trade mark. However, he contends that one of the factors, (h), relied on by the judge goes to far:

(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).

I am not sure that the criticism is well made.

For example, in the Caplets case, Gummow J explained the test for determining use of a trade mark as follows:

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426(the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.

Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 194–5 (the Tub Happy case), that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “ partly because “ (emphasis supplied) they are described by the words in question. (my emphasis)

Now, that doesn’t say that you can take into account consumers’ knowledge that the term is a trade mark. However, if you can take into account their knowledge that something, such as the ox cart in Edward Young v Grierson Oldham, is commonly used descriptively, wouldn’t their knowledge that something was a trade mark be relevant also? The fact that ‘Alligator’ was a fancy word used only by the plaintiff was a vital consideration in JB Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406, a case which Kitto J did read narrowly.

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