The latest battle in the ongoing IP war between the owners of the INNER HEALTH PLUS and HEALTHPLUS trade marks has been decided in the High Court of Australia.
Health World Pty Ltd, owner of the INNER HEALTH PLUS trade mark, successfully appealed the Federal Court’s ruling that it had no standing to seek rectification of Shin-Sun’s HEALTHPLUS trade mark pursuant to s.88 of the Trade Marks Act 1995 (Cth) (“the Act”) as it was not a ‘person aggrieved’. Health World had sought rectification of the HEALTHPLUS trade mark pursuant to s.88 on the basis Shin-Shun did not intend to use the mark in Australia and that it had allowed the trade mark to become deceptive or confusing.
In the same decision, the High Court overturned the Federal Court’s ruling that Health World was not a ‘person aggrieved’ pursuant to s.92(1) of the Act and did not have standing to take action against Shin-Shun to remove its HEALTHPLUS registration for non-use.
The parties have a long, tortuous history with Health World unsuccessfully opposing Shin-Sun’s HEALTHPLUS trade mark (despite a Federal Court appeal) and Shin-Sun opposing but later withdrawing its opposition to the INNER HEALTH PLUS mark. In addition to the rectification and removal proceedings brought by Health World, Shin-Sun had tried and failed to obtain partial removal of Health World’s INNER HEALTH PLUS trade mark. In that removal proceeding, the Full Federal Court did not consider Shin-Sun to be a ‘person aggrieved’. It did not appeal the decision.
In its judgement, the High Court considered the history between the parties to highlight “the curious character of the Full Court’s conclusion, where there are two rival traders 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, that neither of them is aggrieved, and each is to be regarded as falling within a class of inter-meddlers, lacking any interest to be protected”.
The High Court found the Full Federal Court erred in adopting the exhaustive test for standing from the case of Kraft v Gaines, which included the requirement that a rival have a desire, or intention to use the mark to qualify as a ‘person aggrieved’. Instead, the Court found the test of whether a party was a ‘person aggrieved’ was whether the parties were trade rivals in relation to the goods to which the mark was applied, as stated by Lord Pierce in Powell v The Birmingham Vinegar Brewery Co Ltd. The Court said it did not matter whether or not they intended to use the mark on those goods. As Health World and Shin-Sun were rivals in selling the health products, Health World was held to be a ‘person aggrieved’ for the purposes of s.88 and s.92.
Crennan J whilst concurring with the majority of CJ French, Gummow, Heydon and Bell JJ that Health World was a ‘person aggrieved’, considered an important element of Lord Pearce’s test to be the potential for, or actuality of a business being “affected”. She considered the fact that Health World was asserting its right to conduct business in goods of the same description as Shin-Sun’s goods, under its trade mark INNER HEALTH PLUS, without having that business affected by a concurrent registration of the trade mark HEALTHPLUS, which Health World contended was erroneously registered, satisfied Lord Pearce’s test of whether a party is a ‘person aggrieved’. Accordingly, Crennan J did not consider it necessary to decide the issue of whether it is sufficient for a ‘person aggrieved’ to prove no more than trade rivalry with the registrant of the trade mark sought to be removed.
These matters have been remitted back to the Full Federal Court which must now consider whether to uphold the primary judge’s findings that Shin-Sun’s mark should be removed from the Register pursuant to s.88 and s.92(4)(b).
Note: The Act no longer requires a party to establish it is a ‘person aggrieved’ to lodge an application for removal pursuant to s.92(1).