Luxottica Retail Australia Pty Ltd v Johnson & Johnson

Luxottica Retail Australia Pty Ltd (Luxottica) sought to restrain Johnson & Johnson (J&J) from infringing its registered trade mark 'OPSM' in relation to contact lenses. Luxottica, a retailer of optical goods, argued that J&J's use of the 'OPSM' mark on its Acuvue contact lenses would mislead consumers into believing that the lenses were manufactured or endorsed by Luxottica, thereby infringing its trade mark rights under the *Trade Marks Act 1995* (Cth). J&J contended that its use of the mark was a legitimate use of a descriptive term and did not amount to trade mark infringement. The matter was heard in the Federal Court of Australia.

The primary legal issue before the court was whether J&J's use of the 'OPSM' mark on its contact lens packaging constituted trade mark infringement of Luxottica's registered 'OPSM' trade mark. This involved determining whether J&J's use was likely to deceive or cause confusion among consumers as to the origin or sponsorship of the contact lenses, and whether J&J's use was in the course of trade. The court also considered whether J&J's use could be characterised as a descriptive use of the term 'OPSM' rather than a use as a trade mark.

Justice Kirov found that J&J's use of the 'OPSM' mark on its Acuvue contact lenses was likely to cause confusion and deceive consumers into believing that the lenses were associated with Luxottica. His Honour reasoned that Luxottica had established significant goodwill and reputation in the 'OPSM' mark, particularly in the optical retail sector. The court applied the principles of trade mark infringement, focusing on the likelihood of deception or confusion. It was held that J&J's use was not merely descriptive but was a use as a trade mark, and that the visual and contextual similarities between the marks were sufficient to create a misleading impression.

The court ordered that J&J be restrained from using the 'OPSM' mark in relation to contact lenses and awarded costs to Luxottica.