Sterling Pharmaceuticals Pty Limited v Johnson & Johnson Australia Pty Limited

Sterling Pharmaceuticals Pty Limited sought special leave to appeal from a decision of the Full Court of the Federal Court of Australia to the High Court of Australia. The dispute concerned alleged infringement of a registered trade mark. Johnson & Johnson Australia Pty Limited was the respondent.

The principal legal issue before the High Court was the correctness of the judgment in *Shell v Essa*, specifically concerning the test for trade mark infringement under section 58 of the relevant legislation. Sterling Pharmaceuticals sought to challenge or qualify the interpretation of what constitutes "use as a trade mark" for the purposes of infringement, as applied by the Full Court below.

The applicant argued that the *Shell v Essa* judgment, particularly a passage at page 425, set up a test for infringement that overlooked the fact that the mark in question was registered. While not challenging the proposition that use of a trade mark for infringement purposes means use as a trade mark, Sterling Pharmaceuticals contended that the *Shell v Essa* case raised a critical question about what constitutes such use. The applicant referred to the *Oil Drop* case, noting that it might not be necessary to challenge the actual decision if the registered mark had been placed on the defendant's own goods, which would likely constitute infringement. However, they sought to qualify the reasoning in *Shell v Essa* regarding the connection between an advertisement and the goods it symbolises.