Case: Crooks Michell Peacock Stewart Pty Ltd v Kaiser (t/as Commercial Art &amp; Industrial Design) (1994) 29 IPR 225
Outcome: cited
views were expressed by a delegate of the Registrar in HCA Colours Australia Pty Ltd v Holland Colours NV (2003) 59 IPR 507 at 516 517 and in Crooks Michell Peacock Stewart Pty Ltd v Kaiser (t/as Commercial Art &amp; Industrial Design) (1994) 29 IPR 225 at 232. Sign is defined in s 6 of the Act as follows: sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. In the same section, the expression use of a trade mark is defined in the following way: use of a trade mark has a meaning affected by subsections 7(1), (2) and (3). use of a trade mark in relation to goods has the meaning given by subsection 7(4). Section 7 of the Act is in the following terms: 7 Use of trade mark (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. Note: For prescribed court see section 190. (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark. (4) In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods). (5) In this Act: use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services. In s 17 of the Act, a trade mark is defined as follows: 17 What is a trade mark? A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Note: For sign see section 6. For a time, the respondent included the letters "BSS" on the label affixed to its 19 ml bottle of AQSIA&#8482; brand balanced salt solution. That use was upon, or in physical or other relation to, those goods. The letters which appeared on that label are substantially identical to the applicant's BSS trade mark. Those letters were used by the respondent with respect to goods in respect of which the trade mark is registered. Therefore, the sole remaining question for present consideration is whether that particular use was one which is properly characterised as use as a trade mark upon those goods. That means: Was it used, or intended to be used, as a sign to distinguish the respondent's AQSIA&#8482; brand balanced salt solution from other sterile ophthalmic irrigating solutions supplied in Australia?