23 Apr 2010

Who's aggrieved? High Court gives greater scope for seeking deregistration of a rival's trade mark

by Mary Still, Brett Doyle

The Australian High Court's decision in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13 has overruled restrictive interpretations of who can be regarded as a person "aggrieved" for section 88 (rectification of the Register) and section 92 (removal of a trade mark from the Register for non-use) of the Trade Marks Act 1995 (Cth). It should be noted that subsequent legislative changes mean that non-use applicants no longer must be "aggrieved" persons under section 92.

Health World and Shin-Sun have been battling for years over their marks. Health World makes and sells a probiotic powder and probiotic capsules under the trade mark Inner Health Plus. Shin-Sun applied for registration of HEALTHPLUS. Health World then applied for registration of the mark INNER HEALTH PLUS, leading to years of litigation. The primary judge held that neither of them were "aggrieved" persons and dismissed their actions on this basis, even though if "aggrieved" both companies' actions against the other's mark would have been successful.

On appeal the Full Court of the Federal Court agreed with the primary judge, holding that an "aggrieved" person had to be subject to a reasonable possibility of being "appreciably disadvantaged in a legal or practical sense" by a trade mark remaining on the Register.

The Full Federal Court applied one of its earlier decisions, which had held that this test was an exhaustive one. Health World was not aggrieved as it never intended to use the HEALTHPLUS mark except as part of INNER HEALTH PLUS, so it could not be disadvantaged by Shin-Sun's registration of the HEALTHPLUS mark.

The High Court however held this was too restrictive and that the Full Federal Court had misapplied the relevant authorities. The term "aggrieved" did have a filtering function but was to be interpreted liberally, taking account of factual circumstances. While four judges were careful not to set out a strict test for determining who could bring an application under sections 88 or 92, they said that Health World was "aggrieved" for the purposes of both sections because both it and Shin-Sun were rivals in selling the health products in question. They were in the same trade, and each traded in the class of goods for which the challenged marks were registered.

Importantly, this decision will make it easier to apply to remove a competitor’s mark that may have been wrongly made or which wrongly remains on the Register (section 88). However, in relation to removal for non-use (section 92) the statutory amendment deleting the requirement of being “aggrieved” has already achieved that result.

The matter has been remitted to the Full Federal Court for determination in accordance with the High Court's decision.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.