121 I do not consider that Health World has any genuine desire to use the healthplus mark. It is true that Health World has filed an application No 1121282 for the series trade mark healthplus including a number of variations. That application was filed on 28 June 2006, approximately 6 months after Health World commenced the rectification proceeding, and 3 days after it commenced the Health World non-use proceeding.
60 Applying the test explained by Jacobson J, Anying Auburn appears to me at the moment to be an aggrieved person within the meaning of s 88(1) of the Trade Marks Act. Andrew Chen may also be such a person, as may An Ying NZ.
61 I am not prepared to hold for the purposes of the applicants' summary judgment application that none of the respondents is an aggrieved person within the meaning of s 88(1) of the Trade Marks Act. In my opinion, there is every reason to think that, at the conclusion of a trial, each of Anying Auburn, Andrew Chen and probably An Ying NZ will be held to be aggrieved persons within the meaning of that section.
62 That being so, it seems to me that the respondents have some prospect of having the Registered Trade Mark cancelled pursuant to s 88 by reason of the operation of s 58 (Harry Wang not being the true owner), s 62(b) (registration procured upon the basis of false representations), s 62A (application for registration made in bad faith) and s 88(2)(e) (entry made as a result of false suggestion or misrepresentation). It is apparent from the brief summary of the respondents' case at which I have given at [17]-[40] above, that there is material before me at the moment which suggests that Harry Wang applied for and procured the registration of the Registered Trade Mark in circumstances where he well understood that the owner of that mark was either An Ying NZ or Andrew Chen and that he did so in breach of duties owed to them or one or other of them and in breach of duties owed to An Ying Melbourne.
63 The evidence, as it stands at the moment, also suggests that Harry Wang was acting as the agent or representative or, at least, the putative joint venture partner of An Ying NZ and Andrew Chen when he established the business of An Ying Melbourne in 2004. He was familiar with the Anying mark. An Ying Melbourne was authorised by An Ying NZ and Andrew Chen to use the Anying mark but only in connection with the business of An Ying Melbourne, the corporate vehicle in which An Ying NZ was a shareholder. There is a sufficient basis in the evidence before me at the moment to justify the respondents' contention that Harry Wang occupied a position of trust vis-ŕ-vis An Ying NZ and Andrew Chen in relation to the establishment and operations of An Ying Melbourne and in relation to use of the Anying mark in Australia.
64 The evidence directed to the question of who was the first to use the Anying mark in Australia is not at all clear. On the evidence before me at the moment, I am not satisfied that An Ying NZ itself was the first to use the Anying mark in Australia although there is a good deal of evidence tending to establish that Anying Sydney No 1 was the first to use that mark in Australia, closely followed by An Ying Melbourne. If that is a correct view of the relevant facts, the respondents would be entitled to rely upon s 60 of the Trade Marks Act as a further basis to enable cancellation pursuant to s 88. For the purpose of engaging s 60, it does not matter that the business assets of Anying Sydney No 1 (including its business assets) were transferred to New Century after 24 February 2006 (the priority date). The respondents have a reasonable prospect of bringing the case within s 60.
65 As far as the s 62(b) and the s 88(2)(e) grounds are concerned, there is no evidence before me at the moment which proves or tends to prove the basis upon which the Registrar accepted Harry Wang's application to register the Registered Trade Mark or whether that basis comprised or included evidence or representations that were false in material particulars. However, it is likely that Harry Wang told the Registrar that he was the owner of the trade mark and that there had been no prior use of the mark in Australia by any other person. He is also likely to have concealed his connection with An Ying NZ and Andrew Chen. These are matters which the respondents should be entitled to investigate. There is enough in the evidence before me at the moment and in the inferences available to be drawn from that material to support a conclusion that the respondents have some prospect of successfully invoking s 62(b) and s 88(2)(e). They should be permitted to do so and should not be shut out from doing so by an order for summary judgment.
66 Similar considerations arise in respect of the s 62A ground. The respondents' position in respect of this ground is made somewhat stronger by the respondents' evidence which, as it stands at the moment, tends to suggest that Harry Wang expropriated the Anying mark wrongfully and in breach of duty. As with the s 62(b) and s 88(2)(e) grounds, the respondents have some prospect of successfully invoking s 62A and should be permitted to try to do so at trial.
67 All of the above discussion leads me to the conclusion that it cannot be said that the respondents have no reasonable prospect of having the Registered Trade Mark cancelled. If the respondents are ultimately successful in having the trade mark cancelled, the applicants' case for infringement will fall away.
68 The essence of the passing off case is the proposition that New Century has built up a sufficient reputation in the business associated with the Anying mark and the Anying name as to make those indications of a particular association or brand distinctive of New Century. New Century has only been trading under the name Anying Sydney Company using the Registered Trade Mark since late 2006 and has done so against a background which included the fact that Anying Sydney No 1 had traded in substantially the same fashion from about mid 2003 until late 2006 and that An Ying Melbourne had done so from about April 2004.
69 The respondents challenge New Century's assertions that it has the reputation which it asserts that it has in its pleaded case. In circumstances where an identical business using an identical business name and trade mark had traded for some years prior to New Century commencing to do so and where, for the last two years, a newcomer (Anying Auburn) has traded in the same market using essentially the same trade mark and using the same trading name, there is a reasonable prospect, it seems to me, that the respondents will succeed in resisting New Century's claim that Anying Auburn is guilty of committing the tort of passing off its services as those of New Century or suggesting that it has some business association with New Century merely by reason of the fact that it trades under a name which includes the word "ANYING" and does so by using the Anying mark.
70 The remaining cause of action concerns the allegations that, since about December 2007, the respondents have misrepresented to members of the public that Anying Auburn's business is affiliated with New Century's business, that Anying Auburn's business is another branch of New Century's business and that Anying Auburn sold the business currently being conducted by New Century to New Century and has relocated to another address in Auburn, thereby implying that it had initially commenced the business currently being conducted by New Century.
71 There is some evidence to support these allegations and none to counter them. In the pleadings, the respondents deny making the representations as alleged and deny contraventions of the Trade Practices Act.
72 The evidence led to support these allegations was in the form of an hearsay account given by employees of New Century of conversations with members of the public. It was asserted, in a rolled-up, conclusory fashion, that customers and potential customers of New Century had been given false information by employees of Anying Auburn. By way of example, I quote from the affidavit of Frances Ye sworn on 5 February 2009:
10. Over the following weeks (late December 2007 to early 2008) customers have made several comments to me over the telephone and in person to the following effect: