Blu-Ray Disc Association

The case involved the Blu-Ray Disc Association (the Holder) and a dispute concerning the trade mark "BLU-RAY". The court was required to determine whether the Holder possessed exclusive rights to use the "BLU-RAY" mark in Australia, despite it not yet being a registered trade mark.

The central legal issue was whether the term "BLU-RAY" had become a descriptive or generic name for a high-definition optical disc format in Australia, thereby precluding the Holder from claiming exclusive trade mark rights. This involved considering the provisions of the relevant Act, specifically section 24, which addresses situations where a registered trade mark becomes generally accepted as the name of an article after its registration.

The court acknowledged that "BLU-RAY" was likely an invented expression when first adopted between 2002 and 2004. However, it noted that by the time the Holder sought trade mark protection in Australia, and particularly after its official use commenced in November 2006, significant market developments had occurred. The court highlighted the intense "format war" between Blu-ray and HD-DVD, and Blu-ray's eventual success in becoming the sole high-definition DVD format in Australia by February 2008. This market dominance, the court reasoned, created a risk that the term "BLU-RAY" could transition from a distinctive mark to the generic name of the product, a situation analogous to previous cases where a proprietor's monopoly led to a word becoming the common name for a product. The court referenced the principle that a mark can have a descriptive element and still function as a trade mark, but it must not have passed into the language as a generic word.