Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd

The case of Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd concerned a dispute over the trade mark "CAPLETS" registered in Part A for medicated tablets for human use. Johnson & Johnson, the registered proprietor of the trade mark, sought to have the mark removed from the register due to non-use. The primary issue before the court was whether there had been sufficient use of the trade mark by Johnson & Johnson to maintain its registration. The court was also required to determine if Sterling Pharmaceuticals had infringed the trade mark by using a similar mark in relation to their goods, and whether their use was in good faith and descriptive of the character or quality of their goods.

The court examined the evidence of use by Johnson & Johnson and found that there had been sufficient use to maintain the registration. The court held that the trade mark "CAPLETS" was distinctive and well known, and that Johnson & Johnson had used it consistently and prominently in relation to their goods. The court also found that Sterling Pharmaceuticals had infringed the trade mark by using a similar mark for their medicated tablets, and that their use was not in good faith or descriptive of the character or quality of their goods. The court held that Sterling Pharmaceuticals' use of the mark was an attempt to trade off the reputation of Johnson & Johnson's trade mark.

The appeal and cross-appeal were dismissed, and the orders made by Hill J. on 28 June 1990 were set aside. The respondent was ordered to pay one half of the costs of the appellant of the trial and appeal. The case highlights the importance of maintaining and protecting trade marks, particularly those that are distinctive and well known, and the need for businesses to use their trade marks consistently and prominently in relation to their goods.