Case: Anheuser-Busch Inc v Budejovick&yacute; Budvar [2002] FCA 390 ; (2002) 56 IPR 182
Outcome: followed
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]. I adopt and apply the following statement made by Allsop J in Anheuser-Busch Inc [2002] FCA 390 ; 56 IPR 182 at [191] : It is not to the point, with respect, to say that because another part of the label (the white section with "Budejovicky Budvar") is the obvious and important "brand", that another part of the label cannot act to distinguish the goods. The "branding function", if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant "brand" is of relevance to the assessment of what would be taken to be the effect of the balance of the label. Having regard to the factors set out in [155] above, I think that the letters "BSS" on the allegedly infringing label are used in a branding role. It does not matter that the respondent may have made it clear on the packaging that the commercial origin of the goods was the respondent, ie a business other than that conducted by the applicant. The letters "BSS" may have been used in this way as an opening shot in a campaign by the respondent designed to demonstrate or generate generic use of the letters "BSS" but, at the time they were used on the relevant label, they were used to distinguish the respondent's goods from those of others, ie to brand them. Subject to the s 122(1)(b)(i) defence relied upon by it, the respondent, therefore, infringed the applicant's BSS trade mark in the manner alleged by the applicant. The Section 122(1)(b)(i) Defence