High Court sits to determine standing
In one of the few recently decided High Court cases dealing with trade mark issues, a unanimous decision was handed down in Health World Limited v Shin-Sun Australia Pty Ltd [2010] HCA 13 allowing an appeal relating to the meaning of ‘aggrieved’ under the Trade Marks Act 1995 (Cth) (the Act). The High Court found that Health World had the requisite standing to challenge Shin-Sun’s HEALTHPLUS trade mark and remitted the matter to the Full Federal Court for determination of the remaining issues.
Background
Health World Limited (Health World) has been manufacturing and supplying probiotic capsules under the name INNER HEALTH PLUS since 2000 and is the registered proprietor of the name INNER HEALTH PLUS (the Health World trade mark).
Since 2001 Shin-Sun Australia Pty Ltd (Shin-Sun) has manufactured and sold health supplements under the name HEALTH PLUS. Following a failed opposition by Health World Shin-Sun registered the trade mark HEALTH PLUS with IP Australia (the Shin-Sun trade mark).
At First Instance
Health World commenced proceedings in the Federal Court to have the Shin-Sun trade mark removed seeking cancellation under Section 88(1) of the Act, as well as non-use under Section 92 of the Act, both of which have the standing requirement that the applicant be an ‘aggrieved person’ (there was the additional requirement under Section 92 of the Act as it stood prior to the commencement of the Trade Marks Amendment Act 2006 (Cth) that the applicant for non-use be a ‘person aggrieved’)
At the same time, Shin-Sun brought their own non-use application under Section 92 of the Act against Health World.
The Trial Judge dismissed all three applications. A detailed discussion on this first instance case by the Australian Trade Mark Law Blog can be accessed HERE.
The Full Federal Court Decision
Health World appealed the Trial Judge’s finding by contesting that it lacked standing both under Section 88(1) and Section 92(1) of the Act.
The Full Federal Court dismissed the appeal and held that a person is aggrieved ‘if there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified’ (Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 (the Ritz Hotel case).
In arriving at this decision the Full Court was bound by an earlier decision in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104(the Kraft case) where it was held that the Ritz Hotel case provides an exhaustive test for determining whether an applicant is ‘aggrieved’.
Health World successfully sought special leave to appeal to the High Court on the issue of standing to seek revocation of a trade mark.
The High Court Case
French CJ, Gummow, Heydon and Bell JJ commenced their joint judgement outlining that the meaning of ‘aggrieved’ varies depending on which statute it appears. The Justices emphasised that the Register of Trade Marks must have ‘integrity’ and should be maintained as ‘an accurate record of marks’. However, this purpose must be balanced with the need to prevent ‘the security of the Register from being eroded by applications for rectification or removal by busybodies’. In this light the Court found that the authorities favour a liberal construction of the word ‘aggrieved’.
Overturning the earlier decision the High Court found that the Full Federal Court should not have followed its predecessor in the Kraft case because that case was ‘plainly wrong’ and in fact, no exhaustive test had been set; meaning the Kraft case should be overruled.
Turning to the Ritz case, the High Court held that McLelland J in that case had not been offering a complete account of what the legislation meant and was not ‘marking the outer boundary of the words aggrieved person’ but rather he had been deciding ‘the particular controversy before him’.
The High Court preferred the finding in Daiquiri Rum [1969] RPC 600 where Lord Pearce stipulates no requirement that the applicant for revocation desires or intends to use or could use the mark rather ‘all that mattered was that they were rivals in relation to the goods to which the mark applied’. In the present case the parties were certainly rivals ‘who have lost no opportunity to attack each other’s attempts to register trade marks both before the Registrar and in four sets of court proceedings which have so far been heard by 10 judges’.
So What?
The High Court case clarifies the standing requirement of ‘aggrieved’ which today remains relevant with respect to applicants seeking revocation under Section 88 of the Act. As to non-use proceedings under Section 92 of the Act the standing requirement has already been removed.
The matter has now been referred back to the Full Federal Court and based on the Trial Judge’s decision Shin-Sun’s mark will be removed since it did not intend to use the mark and had allowed it to become deceptive or confusing.
We wonder if Shin-Sun is kicking itself for not similarly appealing the decision at first instance where its application on precisely the same standing issue was rejected.
