Despite the fame of brands like IBM, KFC and MTV, acronyms are generally thought to make bad trade marks as they lack distinctiveness. However, trade mark protection for acronyms is not confined to well-known brands. This presents traps for unwary competitors who may want to use what they consider to be a ‘generic’ acronym on product packaging, only to find that they have infringed a registered trade mark – as a recent court case demonstrates.
To maintain the enforceability of an acronym mark (as with any other trade mark) the trade mark owner must adopt stringent measures to protect its rights and avoid using its mark in a descriptive manner. To do this, you should:
- Register your trade mark
- Always use the relevant ® (registered marks only) or ™ (trade mark applications or unregistered marks) symbol
- Always use your mark as an adjective rather than as a noun:
- Adjective: ‘Clean the eye with a sterile solution such as the BSS brand balanced salt solution’
- Noun: ‘Clean the eye with BSS’
To avoid being sued for infringement, considerable care should be exercised when incorporating seemingly descriptive acronyms into labelling or packaging. This is especially so if you have been put on notice that the acronym is a registered trade mark. The case of Alcon v Bausch & Lomb illustrates that while an acronym may be considered descriptive outside Australia, it can still function as a valid and enforceable trade mark in Australia.
Alcon owns an Australian trade mark registration for BSS covering opthalmic irrigating solution (BSS registration). Alcon sued Bausch & Lomb for infringement of its BSS registration. Bausch & Lomb used the BSS sign on the label of its 19ml bottles of its AQSIA brand balanced salt solution as follows.
This use amounted to use of BSS as a trade mark (rather than as a short-hand description of the product—a balanced salt solution) because:
- BSS appeared alongside the AQSIA mark in a similar font and was detached from the other descriptors such as sterile
- the term ‘balanced salt solution’ was used on all other parts of the AQSIA packaging, which indicated BSS on the label was intended to be used as a trade mark, and
- the evidence did not establish that BSS described a balanced salt solution, so Bausch & Lomb’s use could not be merely descriptive.
Bausch & Lomb attempted to raise the defence that it honestly believed BSS described a balanced salt solution and it acted without ulterior motive. The court rejected this defence given that Bausch & Lomb was on notice of the BSS registration.
Bausch & Lomb cross-claimed seeking cancellation of the BSS registration on the ground that it was not distinctive when filed or had since become generic. The court rejected the cross-claim as the evidence was deficient. In particular:
- The court refused to consider any articles, studies or dictionary definitions showing descriptive use of BSS which were published outside Australia. While some of this evidence was circulated in Australia, it was still held to be irrelevant without further evidence of the publications’ readership and distribution.
- Of the evidence that remained, the references to BSS were considered a convenient editorial abbreviation only. For example: ‘the irritated eye should be washed with a balanced salt solution (BSS)’. Subsequent references to BSS were considered qualified by the initial definition ‘balanced salt solution (BSS)’.
- Finally, as Alcon had always used BSS as a trade mark and not generically, the registration remained valid. Alcon consistently used the ® symbol appropriately and associated BSS with its corporate name.
On the evidence accepted by the court, the decision is largely correct. However, there is cause to wonder whether the same result would have been achieved if the court took a less rigorous approach to the admissibility of evidence or if Bausch & Lomb tendered better evidence relating to the meaning of BSS in Australia specifically.