Whether s 60 applied in its pre-amended form
103 There was a dispute between the parties as to whether s 60 applies in the form in which it stood at 7 May 2001 (being the time at which the application for registration could have been opposed), or in the form in which it stands at present (that is, after the entry into force of the Amendment Act 2006 on 23 October 2006). For the reasons I set out above at [30]-[31], none of the 2006 amendments apply to these proceedings because all three actions were commenced prior to 23 October 2006. Nonetheless, I will set out the submissions of the parties.
104 Counsel for Shin-Sun, Ms Shin and Nature's Hive submitted that, as a matter of construction of s 88(2)(a), s 60 applies in its pre-amendment form. Counsel pointed out that s 88(2)(a) in its current form enlivens the power to order rectification of the register on "any of the grounds on which registration of the trade mark could have been opposed under this Act." (Emphasis added). One of the grounds on which the registration of HealthPlus could have been, and was, opposed was s 60. The amendments were not in force when the HealthPlus trade mark application was filed on 7 May 2001. Accordingly, counsel for Shin-Sun argued that s 60 must apply in the form in which it stood in May 2001 because that was the ground on which the registration of the trade mark could have been opposed.
105 However, Health World draws attention to the fact that the Amendment Act contains no transitional provision for the application of the amendment made to s 60 by Item 31. This is to be contrasted with other provisions such as Item 26 and Item 30.
106 Health World also draws attention to the words "under this Act" in s 88(2)(a). Health World submits that these words have the effect of engaging the operation of the amended form of s 60 to the present application.
107 I reject Health World's submission for the three reasons set out below.
108 First, it is contrary to established authority on the construction and operation of
s 88(2)(a). In Unilever Australia Limited v Karounos (2001) 52 IPR 361 at [13], Hill J said that under this sub-section:
The court is required to consider the question as at the time of registration and determine whether as at that time it was proper for the registrar to admit the mark to the register. Facts subsequent to the date of registration will be irrelevant.
109 Other authorities to the same effect are referred to in Davison M, Johnston K, Kennedy P, Shanahan's Australian Law of Trade Marks and Passing Off, (3rd ed , Thomson Lawbook Co, 2003) at [14.175] n 127.
110 Second, this approach to construction is consistent with the scheme of the Act as discussed by a Full Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [18]. The Full Court there observed that opposition proceedings are quasi-summary and an unsuccessful opponent will have the opportunity to bring an expungement application if the opposition proceeding fails: see also the authorities to which I referred in Health World Limited v Shin-Sun Australia Pty Limited [2006] FCA 647 at [27], [36], [40], and [41].
111 In light of these authorities, it would seem to me to be wrong to suggest that the Act contemplates that an expungement application may be brought upon the basis of a ground of opposition expressed in different terms from those that were applicable when the opposition was, or could have been, brought.
112 Third, the approach suggested by Health World is contrary to established principles of construction of statutes. In particular, express words or necessary implication are required to take away rights, privileges, obligations or liabilities acquired or incurred under a repealed Act: s 8 of the Acts Interpretation Act 1901 (Cth).
113 Moreover, the general rule of the common law is that, subject to any contrary intention appearing with reasonable certainty, a statute changing the law is not to be understood as applying to facts that have already occurred so as to confer or otherwise affect rights or liabilities which the law has defined by reference to past events: Maxwell v Murphy (1957) 96 CLR 261 at 267 per Dixon CJ.
114 As Fullagar J stated in Fisher v Hebburn Limited (1960) 105 CLR 188 at 194, a statute is, prima facie, to be construed as not attaching new legal consequences to facts or events which occurred before the commencement of the statute.
115 In my view, Shin-Sun's approach to statutory construction is correct, although more accurately it ought to be based on s 88(2)(a) as it stood when the rectification proceeding was commenced on 13 February 2006. On that date, s 88(2)(a) enlivened the power to order rectification of the register on "any of the grounds on which registration of the trade mark could have been opposed under Division 2 of Part 5". The pre-amendment form of s 88(2)(a) still requires s 60 to be applied as it stood when the trade mark was filed on 7 May 2001. The significance of applying the pre-amendment form rather than current form of s 88(2)(a) is that Health World is precluded from relying on the 'contrary to law' ground under s 42 (that provision not being found in Division 2 of Part 5).
116 For all these reasons, it follows, in my opinion, that the ground of opposition based upon deceptive similarity is to be determined under s 60 in its pre-amended form.
Aggrieved person
117 In order for s 88(1) to be enlivened, so as to enable Health World to invoke the grounds of opposition under ss 42, 59 and 60, Health World must be an aggrieved person.
118 The expression "an aggrieved person" is to be given a wide interpretation: see In the Matter of Powell's Trade Mark (1893) 10 RPC 195 at 201 (C.A. UK); (1894) 11 RPC 4 at 7-8 (HL); see also Continental Liqueurs at 427.
119 An aggrieved person is one who has a real interest in having a trade mark removed from the Register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the Register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113.
120 It is not sufficient that an applicant for rectification of the Register is in the same trade as the registered owner of the mark; what is required is that the applicant have a desire to use the mark, or be likely to be hampered in some other way by the registration of the mark that the applicant seeks to have expunged: Shanahan at [14.90].
121 I do not consider that Health World has any genuine desire to use the HEALTH PLUSmark. It is true that Health World has filed an application No 1121282 for the series trade mark "HEALTH PLUS" including a number of variations. That application was filed on 28 June 2006, approximately six months after Health World commenced the rectification proceeding, and three days after it commenced the Health World non-use proceeding.
122 However, Health World did not give evidence of any intention to use the HEALTH PLUS trade mark. Mr Joiner's evidence did not rise above a general assertion that he had occasionally discussed with Health World's Managing Director, Mr Gee, proposals to develop and release "new products" using the Inner Health Plus brand.
123 Mr Gee's evidence was to the same effect, although he also asserted a belief that Health World will use the INNER HEALTH PLUS trade mark for new natural medicine products when a new product is developed.
124 The whole tenor of this evidence is therefore inconsistent with any intention of Health World to use the HEALTH PLUS trade mark, other than as part of its existing INNER HEALTH PLUS mark.
125 If I were of the view that the HealthPlus trade mark was deceptively similar to the Inner Health Plus trade mark, I would be satisfied that Health World is an aggrieved person: Campomar Sociedad, Limitada v Nike International Limited (1998) 85 FCR 331 at 364; reversed by the High Court but not on the "aggrieved person" issue in (2000) 202 CLR 45.
126 However, for reasons set out below, in my opinion, HealthPlus is not deceptively similar to INNER HEALTH PLUS.
127 Accordingly, subject to what I say below about the s 59 ground (which Health World relies upon under s 88(2)(a)) and the s 88(2)(c) ground, I do not consider that Health World is an aggrieved person.
Deceptive similarity: legal principles
128 The first pre-requisite for the ground of opposition stated in s 60 in its pre-amended form is that the opposed mark must be substantially identical with or deceptively similar to the existing mark.
129 Section 10 of the Act defines the expression "deceptively similar". The opposed mark must so nearly resemble the other mark that it is likely to deceive or cause confusion. The authorities dealing with the question of whether one trade mark is deceptively similar to another were reviewed by a Full Court of this Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 61 IPR 212 at [72]ff.
130 The Full Court in Crazy Ron's distilled five legal principles from the many authorities which have dealt with this subject. Their Honours were dealing with the question of deceptive similarity in the context of trade mark infringement but the same principles apply to the test of deceptive similarity in s 60 as it stood in May 2001.
131 It is unnecessary to set out the five principles stated in Crazy Ron's. It is sufficient to say that the marks are not to be judged by a side by side comparison; they are to be considered by their look and sound, with due allowance for imperfect recollection. The goods to which the marks are to be applied must be considered together with all the surrounding circumstances.
132 These principles are well established. They were stated by Dixon and McTiernan JJ more than 50 years ago in Australian Woollen Mills Limited v FS Walton & Co Limited (1937) 58 CLR 641 at 658 and reiterated by the High Court in other authorities.
133 Perhaps the most succinct statement of the principles is to be found in the observation of Dixon and McTiernan JJ in Australian Woollen Mills at 659 that the question is:
… never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
Whether the HealthPlus mark was deceptively similar to Inner Health Plus trade mark
134 The HealthPlusmark was not being used as at 7 May 2001. Thus, the comparison which is to be made for the purposes of s 60 is between the unregistered mark Inner Health Plus and the HealthPlus registered trade mark.
135 In my opinion the HealthPlus trade mark was not deceptively similar to the Inner Health Plus mark for the reasons set out below.
136 The two marks convey different ideas and concepts. HealthPlus conveys, to the ordinary person, an impression of enhanced health and well-being. It is directed at the idea of overall or general health. It is not concerned with specific aspects of bodily health such as internal health.
137 By contrast, the Inner Health Plus trade mark conveys the impression that it is concerned with a specific aspect of bodily health, namely internal health.
138 Visually, the marks are very different. The impression that the person of ordinary intelligence and memory would have of the Inner Health Plus mark is that of the dominant name and phrase, Inner Health. This appears on the bottle in the same shade of blue as the cap and in a similar shade of blue to the words, "High Potency Probiotic Capsules".
139 The word "Plus" on the bottle, in bold orange colour, emphasises the enhancement that the product brings to the internal health of the consumer.
140 No such impression is created by the look or appearance of the trade mark HealthPlus. As I have said, it is concerned with general health and well-being.
141 The same differences are created by an aural comparison. Here, stress and pronunciation would usually given to the first syllable of the word or mark: see for example Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [32], [157] - [164].
142 Thus, an aural comparison of the marks by the person of ordinary intelligence and memory would bear out the impression thatHealthPlus is concerned with enhanced general health whereas Inner Health Plus invokes improved internal health.
143 I reject Health World's submission that the HealthPlus mark should be characterised as two words, at least in a visual sense. Although the word "Plus" is italicised, the usual impression is plainly of one word.
144 It is possible that the word "HealthPlus" would be heard and remembered as one word. But I do not consider that anything turns on this because in an aural comparison, the over-riding consideration is the absence of the word "Inner" from the word or words "HealthPlus".
145 I do not consider that the HealthPlus mark captures one of the essential features of the Inner Health Plus mark: c.f. Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147; de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106.
146 Those authorities, as well as authorities of Full Courts in CA Henschke & Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] - [90].
147 The effect of those authorities is that the enquiry is not as wide as would be undertaken in a passing off action or in a proceeding under s 52 of the Trade Practices Act. Rather, the search is to be concentrated on ascertaining the essential element of the mark and the impression taken away by one who looks at it and how it sounds when pronounced: Crazy Ron's at [86], [88].
148 The essential element of the Inner Health Plus mark is not found in the words "Health Plus". Rather, as I have already said, the idea or essential feature of Inner Health Plus is that it is concerned with internal health. HealthPlus embraces a different concept.
149 To the extent that any notoriety of Inner Health Plus is to be taken into account, consumers must be taken to be familiar with it as an improved and more convenient version of Inner Health powder: Crazy Ron's at [90].
150 Nor do I accept that the letter of 4 April 2007 from Shin-Sun's solicitors constitutes an admission that the marks are deceptively similar. It is well settled that the issue of deceptive similarity is for the Court itself to decide: Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Limited (1986) 12 FCR 477 at 487-488, referred to by Cooper J in Health World v Shin-Sun (2005) at [33].
151 Furthermore, there is no tangible danger of deception or confusion: Crazy Ron's at [76]. The Inner Health Plus product and the goods encompassed by the HealthPlus trade mark have their own separate attributes. They may be recommended by health professionals. Their purchase is likely to be a considered decision after close appraisal and consideration. Health professionals are usually careful to listen and ensure that their customers select the correct product.