Case: Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Outcome: applied
applicant referred me to the decision of Allsop J (as he then was) in Anheuser-Busch Inc v Budejovick&yacute; Budvar [2002] FCA 390 ; (2002) 56 IPR 182 at [184] [192] and submitted that the relevant principles were adequately summarised in those paragraphs of his Honour's judgment. At [184] [186] (p 227), his Honour said: The notion of trade mark use is now given content by ss 7 and 17 of the TM Act: see [129] above. The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: Shell Co above, at 422 5; Mark Foy's Ltd , above at CLR 198 200; IPR 473 5; Johnson &amp; Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 335, 342 5, 347 9; 101 ALR 700 at 710, 717 20, 723 5; 21 IPR 1 at 11 12; 19; 24 5; Pepsico Australia , above at 162 3, 167 9 and 178 82; Musidor BV v Tansing (t/as Apple Music House) [1994] FCA 1242 ; (1994) 52 FCR 363 at 376 7; [1994] FCA 1242 ; 123 ALR 593 at 605; [1994] FCA 1242 ; 29 IPR 203 at 215 6; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd ; [2000] FCA 876 ; (2000) 100 FCR 90 at 100 1; [2000] FCA 876 ; 177 ALR 167 at 175 6; [2000] FCA 876 ; 48 IPR 257 at 265 6 and Aldi Stores , above at [22] [30] and [54] [58]. The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: Shell Co , above at 425; Wrigley's (A'sia) Ltd v Life Savers (A'asia) Ltd (1936) 37 SR (NSW) 9 at 16; Aldi Stores , above, at [22] [24] and [76]. In order to establish "good faith", when used in s 122, the respondent must show that it acted honestly and without any ulterior motive (see Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 353 354 (per Gummow J)). In June 2005, within two years of the respondent's introduction into the Australian market of its AQSIA&#8482; brand balanced salt solution, the respondent used the letters "BSS" in promotional material for two of its other products. The applicant immediately complained about this. Then, in June 2006, the respondent began to supply its 19 ml plastic bottles of AQSIA&#8482; brand balanced salt solution with the infringing label. It took that course knowing of the existence of the applicant's BSS trade mark, knowing that that mark was registered and knowing that the applicant would not tolerate any attempt by its competitors to use the letters "BSS" generically in order to dilute its registered trade mark. Further, the respondent did not call any evidence at all as to the circumstances in which the decision to use the letters "BSS" on the infringing label was made. Mr Stamp, the respondent's Managing Director, gave evidence at the trial but said nothing about that matter. Ms Stubbs gave no evidence in chief about that matter and answered questions in cross-examination touching upon that matter as follows: Q: This particular product, do you know who approved the specific label that appears on this product? A: No, I don't. Q: Were you involved at all in the design and approval of this label? A: No, I wasn't.