Health World Limited v Shin-Sun Australia Pty Ltd

Federal Court of Australia (Full Court)|2009-02-17|Before: Perram J, As Perram J, Emm J, Perram JJ, Emmett J

the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(b) ending on the priority date for the registration of the applicant's trade mark.

3.2 Although our client has not had an opportunity to examine the material submitted by Health World in support of its claim for registration based on Section 44(4), it is clear from the evidence filed by Health World in the proceedings that the mark has not been used, in respect of all goods specified in the Application, for a period beginning before the priority date of our client's Australian trade mark no. 874755 HEALTHPLUS.

3.3 For this reason, our client submits that pursuant to Section 38, an error has occurred in the acceptance of the application. Our client submits that the Registrar ought not to have accepted the trade mark application in respect of the range of goods specified, as no evidence of use could have been provided by HealthWorld in respect of this range of goods. …

43 Health World's argument is that the passages contain an implicit assertion that s 44(1) applied and, hence, that the two marks were substantially identical or, at least, deceptively similar. There is no doubt, I think, that the letter sought to cavil with the registrar's actions under s 44(4). So too, it cannot be doubted that the registrar had proceeded on the basis that the two marks were substantially identical or deceptively similar. However, to write a letter disagreeing with the registrar's conclusions on s 44(4) need not entail an acceptance of the correctness of the registrar's position on the issue of substantial identicality or deceptive similarity, and still less, I think, an assertion of that position. It would have been possible to argue that s 44(1) was inapplicable. However, it cannot be said that by disagreeing with the registrar's conclusions about s 44(4) Shin-Sun actively asserted the registrar's position on s 44(1). Indeed, it would have been possible for Shin-Sun to have done both at the same time which somewhat undermines the notion that the denial of one entailed the acceptance of the other. It follows that this argument must be rejected too. 44 For those reasons, the conclusion of the primary judge that Health World lacked standing under s 88(1) was correct. No separate argument was advanced in relation to s 92 so that his Honour's conclusion that Health World lacked standing for the application pursuant to that provision must also be upheld. Shin-Sun proffered an undertaking during the course of the appeal to limit HEALTHPLUS to pharmaceutical products excluding probiotics. Given that Health World has no standing to vary the register there is no occasion to consider whether any such undertaking should be accepted.

The remaining issues 45 The above conclusion is sufficient to dispose of both appeals. There have been recent statements by the High Court about the duty of intermediate appellate courts, upon disposing of an appeal on a single decisive issue, to decide issues which do not arise. The most recent of these is Kuru v New South Wales (2008) 246 ALR 260. In that case, the appellant complained of assault by the police. He succeeded in the NSW District Court and obtained damages in the amount of $418,265. In its appeal to the NSW Court of Appeal the State contested both its liability and the quantum. The Court of Appeal unanimously allowed the appeal on liability but did not deal with the quantum issues. A majority of the High Court (Gleeson CJ, Gummow, Kirby and Hayne JJ; Heydon J dissenting) restored the trial judge's conclusion on liability. That left unresolved the issue of quantum in the Court of Appeal. 46 At 260 [12] the majority said: The appeal to this court should be allowed. There was neither statutory nor common law justification for the police remaining on the appellant's premises. The matter must be remitted to the Court of Appeal for consideration of the outstanding issues about damages. That outcome means that this court cannot make orders disposing finally of the dispute between the parties. This court has said on a number of occasions that, although there can be no universal rule, it is important for intermediate courts of appeal to consider whether to deal with all grounds of appeal, not just with what is identified as the decisive ground. If the intermediate court has dealt with all grounds argued and an appeal to this court succeeds, this court will be able to consider all the issues between the parties and will not have to remit the matter to the intermediate court for consideration of grounds of appeal not dealt with below. 47 It is, I think, important to emphasise that the Court did not say that such findings had to be made. Rather, it merely exhorted intermediate Courts to consider whether to do so. That consideration, I venture to suggest, involves an assessment of the following matters: first, an assessment, so far as is possible, of the likelihood of there being a grant of special leave; secondly, an assessment, if special leave were to be granted, of whether the High Court would deal with the matters raised in any notice of contention or, instead, remit those back to the intermediate appellate court. In assessing that question it is pertinent to note the inappropriateness, generally speaking, of the High Court being asked to deal with factual matters. On the other hand, where the remaining issues are pure questions of law this may be a lesser consideration. Thirdly, the cost consequences to the parties, if special leave is granted but a remitter ensues; fourthly, an assessment of the intermediate appellate court's own workload. None of those factors is decisive in itself and, it may be accepted, the notion of gauging the prospect of a grant of special leave is problematic. 48 I approach the matter on the basis that the primary judge's approach to the question of standing was a straightforward application of this Court's decision in Campomar. A grant of special leave is unlikely but not impossible. On the other hand, the remaining issues are legal arguments which could be dealt with by the High Court were it minded to grant special leave. In that circumstance, a remitter of those issues is reasonably unlikely. That being so, it is less likely to be a productive use of the resources of this Court to create obiter dicta which are unlikely to assist anyone. For those reasons I do not propose to consider the remaining issues. 49 A substantial part of the appeal was spent on those issues. In that circumstance the appropriate costs order is that Health World pay Shin-Sun's costs of both appeals and that there be no order as to costs in relation to the notices of contention. I certify that the preceding forty-four (44) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate: Dated: 17 February 2009 Counsel for the Appellant: Mr R Cobden SC with Mr J S Cooke

Counsel for the Respondent: Mr D K Catterns QC with Ms J Baird SC and Ms P Arcus

Trade Practices Act 1974(Cth)

Trade Marks Act 1995(Cth)ss 42, 44, 59, 60, 88, 92

30 There are three comments which should be made. First, his Honour referred to the precise passage in Campomar in which Sackville J had explained that the mere allegation that two marks were deceptively similar would not suffice to establish standing but that there needed to be a reputational impact as well. Secondly, his Honour had, by then, expressly considered the reputation of the INNER HEALTH PLUS mark. Thirdly, his Honour had concluded that the two marks were not deceptively similar. So viewed, Health World's submission that the trial judge treated the standing requirement as being merely whether the two marks were deceptively similar must be rejected. His Honour clearly had in mind that the reputation of INNER HEALTH PLUS was such that, if the marks had been deceptively similar, he would have concluded that Health World was aggrieved. To embrace Health World's argument it would be necessary to conclude that his Honour's extensive treatment of the reputation of the INNER HEALTH PLUS mark was a frolic and his reference to the critical passage in Campomar a confection. Ockham's razor suggests a simpler solution. The trial judge did not reason as Health World alleges. 31 Once it is accepted that the two marks are not deceptively similar and that their reputations do not intersect it is difficult to identify what interest of Health World is affected by the registration of HEALTHPLUS. Health World suggested five matters in answer to that difficulty. First,it contended that in view of the long history of dispute between Health World and Shin-Sun it could not be described as an "interferer" or "common informer". The significance of that denial can be seen from statements of principle to the effect that the "person aggrieved" test was designed as a low threshold to prevent officious interference or mere common informers: Powell v Birmingham Vinegar Brewery Co Ltd [1894] AC 8 ("Powell") at 10 per Lord Herschell LC, 14 per Lord Ashbourne; Kraft (1996) 65 FCR 104 at 113 per Sackville J (Sheppard and Tamberlin JJ agreeing). However, accepting that Health World has demonstrated that it is not an officious interferer or a common informer, it does not follow that it is an aggrieved person; membership of one class is not proved by demonstrating non-membership of another class. 32 Secondly, it was submitted that where an applicant for expungment deals or intends to deal in goods of the same class, or similar to, as that for which the trade mark is registered, that fact is prima facie sufficient evidence of it being a person aggrieved. The existence of that prima facie rule is well-established: see Powell at 10 per Lord Herschell LC, 12 per Lord Watson, 14 per Lord Ashbourne, 15 per Lord Shand; Farley (Aust) Pty Ltd v J R Alexander & Sons (Queensland) Pty Ltd (1946) 75 CLR 487 at 491-492 per Williams J; Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 606 per Williams J; Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc (1960) 103 CLR 422 at 427 per Kitto J; Daiquiri Rum Trade Mark [1969] RPC 600 at 615 per Lord Pearce; Ritz at 195-196 per McLelland J; Kraft at 113 per Sackville J (Sheppard and Tamberlin JJ agreeing). 33 Shin-Sun submitted that analysis of those cases revealed the prima facie rule was a manifestation of the general test and hence had to be tied back to the effect on the applicant in a practical or legal sense. So viewed, where the intention to trade in the same class is obscure or fantastic, the rule does not apply. This may well be true. However, for myself, I think it is more useful to look at that matter as an element tending to rebut the prima facie rule. This, I believe, was the approach taken by the Full Court in Kraft (1996) 65 FCR 104 at 113 where Sackville J (with whom Sheppard and Tamberlin JJ agreed) said: A trader who has dealt in the same class of goods as the registered proprietor and shows that he or she could use the mark, establishes a prima facie case that he or she is a person aggrieved for the purposes of a removal application. The inference may be rebutted by evidence from the objector, demonstrating that the applicant would not take advantage of the opportunity to use the mark, but in the absence of such evidence the prima facie inference remains.

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