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High Court of Australia Transcripts |
Last Updated: 10 December 2009
IN THE HIGH COURT OF AUSTRALIA
Office of the Registry
Sydney No S199 of 2009
No S200 of 2009
B e t w e e n -
HEALTH WORLD LTD
Appellant
and
SHIN-SUN AUSTRALIA PTY LTD
Respondent
FRENCH CJ
GUMMOW J
HEYDON J
CRENNAN
J
BELL J
TRANSCRIPT OF PROCEEDINGS
AT CANBERRA ON WEDNESDAY, 9 DECEMBER 2009, AT 11.32 AM
Copyright in the High Court of Australia
MR S.C.G. BURLEY, SC: If it please the Court, I appear with my learned friend, MR J.S. COOKE, for the appellants. (instructed by Bennett & Philp)
MS J.R. BAIRD, SC: May it please the Court, I appear with my learned friend, MS P.L. ARCUS, for the respondent. (instructed by Middletons Lawyers)
FRENCH CJ: Yes, Mr Burley.
MR BURLEY: Your Honours, this proceeding concerns two appeals considered by the Full Court, each of which was determined adversely to the appellant on the basis that it was not a person aggrieved, or an aggrieved person. The first appeal concerns an application by the appellant to rectify the register pursuant to section 88(1) of the Trade Marks Act - - -
GUMMOW J: Slow down for a minute. What is the first appeal?
MR BURLEY: The first appeal was an application brought by Health World to rectify the trademarks register, pursuant to section 88(1) of the Trade Marks Act. The form of that Act is pre-the 2006 amendments which took effect from October 2006 and Reprint 1 of the Act is sufficient for that purpose.
FRENCH CJ: In these two appeals we are concerned, really, just with the single issue, are we not, of the standing question and the issues of contention are left to be remitted, if you succeed.
MR BURLEY: That is correct, your Honour. Yes.
GUMMOW J: What was the second appeal?
MR BURLEY: The second appeal concerns an application to remove the trademark “Health Plus” from the register pursuant to section 92(4) of the Act.
GUMMOW J: That is an odd use.
MR BURLEY: Yes, your Honour. As the Chief Justice just mentioned – I am sorry, your Honour.
HEYDON J: The first proceeding you mentioned is that described in paragraph 15 of your written submissions?
MR BURLEY: Yes, your Honour.
HEYDON J: The second one is in paragraph 18 of your written submissions?
MR BURLEY: Yes. There was, before the Full Court, a third proceeding which was bought by the respondent for the removal of the trademark “Inner Health Plus”. The respondent failed to be accepted as a person aggrieved and has not sought leave to appeal or appealed from that decision. The appeal papers contain quite a lot of material which concerns the contention which is not now being considered in this Court, but insofar as it concerns matters which are relevant to the current appeals, the starting point is the Health Plus trademark which is the subject of the applications for removal.
That appears in appeal book 1 at page 284. Your Honours will see that it is trademark No 874755. It was lodged on 7 May 2001. It was advertised as accepted on 6 September 2001, and it is in respect of the word “HealthPlus” which appears in the box on the right-hand corner. The goods and services are in Class 5, being:
Pharmaceutical products including vitamins and dietary supplements -
The reaction on the part of the appellant to the advertisement of acceptance of this trademark application appears at page 666 of volume 2 of the appeal book, which is a letter from Ahearn Fox to those representing, at that stage, the respondents. It is a letter dated 4 October 2001 and it records, in summary form if I could put it this way, the appellant’s concern at the application for the “Health Plus” trademark, the proposition that an opposition would be brought to that trademark and reference to the use by the appellants of the mark “Inner Health Plus” in relation to goods and services, or goods within the same class. So in the last full paragraph on page 666, it is recorded that the appellant considers in the final sentence:
It is our client’s view that any use of the mark “HealthPlus” (or “HEALTH PLUS” or variations) would be damaging to its reputation and actionable at common law in passing off and/or suggesting that there is some form of affiliation, connection or agreement between your client and our client.
Shortly after, the second of the trademarks which is for the most relevant consideration was filed, this time, by the appellant for the trademark “Inner Health Plus”. That trademark is not in the appeal papers, but appears at annexure A to our submissions in-chief.
There your Honours will see “Trade Mark: 889038” was lodged on 12 September 2001 and the trademark is the words, “INNER HEALTH PLUS”. Towards the bottom of the page:
Goods & Services
Class: 5
Pharmaceutical preparations; dietetic substances adapted for medical use; products in this class sold by pharmacies and/or health food shops including vitamins, minerals, health foods, dietary foods, Chinese and ayurvedic herbs, and nutrition bars included in this class -
That, of course, is a substantial if not complete overlap between the class of goods for which the Health Plus trademark was sought. Significantly, also, we say is the:
Endorsements
Provisions of subsection 44(4) applied.
I will go to that section shortly but perhaps it would be convenient now to do it. Section 44 of the Act, which has not relevantly been changed, concerns, relevantly for current purposes, one of the grounds upon which a trademark might be refused on acceptance by the registrar or later on opposition on the basis that the applicant’s registration of trademark is “substantially identical with, or deceptively similar to” a trademark which has already been registered or the subject of an application in relation to “similar goods or closely related services”.
GUMMOW J: What then happens?
MR BURLEY: The trademark would not proceed to registration, if that were the case, unless one of the two exceptions provided in section 44 applied.
GUMMOW J: But assume they did.
MR BURLEY: Yes. It is subsection (4) and the requirement is that the applicant has to establish to the registrar’s satisfaction that - - -
GUMMOW J: Yes, but assume you can, what happens then?
MR BURLEY: Then the trademark goes on the register in an unencumbered form. That is the effect of the notation.
CRENNAN J: When you say “unencumbered”, subject to the endorsement?
MR BURLEY: Yes, but what I meant by that is that there is no limitation in the effect of the trademark registration but it is subject to that endorsement.
CRENNAN J: No, quite. Presumably what happens is evidence of use is filed before the registrar during the prosecution process?
MR BURLEY: Yes, your Honour. In fact, that is reflected in the report comments that appear at the foot of the page - “Citations”. “Citations: 874755” is the impugned mark of the respondents and then:
2. Clear. Evidence provided sufficient to overcome GFR.
I am not quite sure what GFR stands for but it appears that that reflects the position your Honour just postulated.
GUMMOW J: Then could either sue the other or there would be a defence under 122?
MR BURLEY: There would be a defence insofar as there was an overlap between the goods and services under section 123, I think it is, that once we have a registered trademark that is a defence from the infringement proceeding but of course if there - - -
CRENNAN J: It is really a statutory process for what used to be referred to as “honest concurrent use”, is it not?
MR BURLEY: It is. Section 44(3) deals more particularly with “honest concurrent use” which requires some more subjective components as far as the applicant for registration is concerned, including that there be honesty, however that has been construed. Subsection (4) is the prior continuous use ground which is less related to the actual conduct of the applicant or, for instance, knowledge of the trademark registration and so forth.
CRENNAN J: Well, if it is prior continuous use it still has the suggestion that two proprietors independently have used similar marks in the same area.
MR BURLEY: Yes. In fact, the predicate is that the registrar at least believed that they were either substantially identical or deceptively similar otherwise section 44(1) would not have been engaged. Then each party opposed the other’s trademarks applications. The Shin-Sun, respondent’s opposition appears at the second volume of the appeal book at page 628. Your Honours will see that the opposition is to the registration which is the Inner Health Plus registration, and the grounds advanced are identified in the paragraphs that follow, most particularly paragraph 3 on page 629:
Under section 42(b) of the Act:
(a) Use by the Applicant of the Trade Mark on or in relation to some or all of the Goods will be likely to lead to passing-off and/or be likely to mislead, deceive or cause confusion having regard to the use and reputation of a similar trade mark of the Opponent HEALTH PLUS.
It goes on to say that that would be contrary to the Trade Practices Act. Then also raising the Health Plus mark as against the Inner Health Plus mark, paragraph 5:
Pursuant to section 44 and 60 of the Act:
(a) The Trade Mark is substantially identical with, and/or deceptively similar to a trade mark HEALTH PLUS whose registration in respect of similar goods or services is being sought by the Opponent and which has –
an earlier priority date and:
(b) The Trade Mark HEALTH PLUS has acquired a reputation in Australia because of which, use of the Trade Mark would be likely to deceive or cause confusion.
That second picks up the section 60 ground which I will refer to in a moment. The trademark sought by the respondent was also the subject of a notice of opposition that does not appear in the appeal papers. It is referred to in Justice Jacobson’s decision in passing reference. The position is that Health World’s opposition was ultimately advanced on the basis - - -
GUMMOW J: Where do we see this?
MR BURLEY: The reference in Justice Jacobson’s decision is at paragraph 9 at appeal papers 695 of volume 2. The opposition was brought on the basis of section 60 of the Trade Marks Act and also section 42(b), and the response to that, as your Honours will see from paragraph 9 of Justice Jacobson’s reasons that the opposition failed, his Honour finding that those sections were not satisfied and accordingly the trademark should proceed to registration, which it did.
CRENNAN J: What happened, did Shin-Sun withdraw its opposition as a result of that?
MR BURLEY: Yes, it did, your Honour. The next step was that on 15 February Shin-Sun discontinued its opposition. That is not the end of the story as far as the actions between the parties are concerned, but before I go on to that aspect, if I could refer your Honours to the evidence of the use by Health World of Inner Health Plus of the affidavit of Mr Joiner which appears in volume 2 of the appeal papers at 527. I am sorry, the affidavit itself commences at 525. Mr Joiner is the director of sales and marketing of the appellant. At appeal book page 527 and following he summarises the Health World business and the role of products sold under the trademark Inner Health Plus within that business. In paragraph 15 he says that:
Health World has its head office at Northgate, Brisbane but has sales and marketing staff located across Australia. Health World supplies its products to retail outlets and Health Care Practitioners across Australia.
He then describes in paragraph 16 and following the development of the Inner Health Plus trademark:
In 1999 Health World started to develop a new type of probiotic product containing beneficial bacteria to restore and maintain a good and balanced level of bacteria within the digestive system of the consumer.
He describes in paragraph 17 the features of that and in paragraph 19 indicates his choice of the name Inner Health Plus. At paragraph 20:
Health World commenced to market and sell Inner Health Plus capsules in March 2000.
So about a year before the respondent’s Health Plus registration, then 21:
Health World has not and does not sell Inner Health Plus capsules directly to consumers by retail. Health World sells Inner Health Plus capsules through retail outlets comprising pharmacies and health food stores situated across Australia. Health World supplies these retail outlets either directly or through wholesale distributors.
Then in paragraph 23 there is a reference to the volume of sales in dollar terms achieved by the capsules, and a table which demonstrates that up until 2006, the financial year, over $30 million worth of sales of products under the Inner Health Plus trademark were sold.
Then on page 530 Mr Joiner goes on to describe the marketing and promotion efforts of Inner Health Plus capsules. In the paragraph that follows he indicates that there is a promotion to trade and also to consumers in the form of print media, in the forms that one might reasonably expect, and marketing campaigns, including advertisements on television which are identified in paragraph 31, Channels 10 and 7, commencing on 18 June 2000. In paragraph 33 he records that:
Health World has continued to market and promote the Inner Health Plus capsules on a continuous and increasing basis following the initial trade and consumer promotion.
He gives details of that in the paragraphs that follow.
Suffice it to say, the affidavit continues to describe promotional efforts and ongoing television commercials, for instance, in paragraphs 39 and following. In paragraph 43, he refers to “The Inner Health Plus Trade Mark Application”. He says in paragraph 45:
I believed in September 2001 that the Inner Health Plus brand would be extended to cover other natural medicine products manufactured by Health World. It was certainly not my intention in September 2001 to confine the use of the Inner Health Plus brand to probiotics capsules.
That was material in a later finding by Justice Jacobson in saying that at the time of the application for the trademark there was an intention that extended beyond that category. Paragraph 46:
Inner Health Plus capsules have become one of Australia’s leading natural medicine products with sales increasing annually at a significant rate.
So by the time of the first proceedings to rectify the register, which were filed on 13 February 2006, the appellant had very substantial sales of Inner Health Plus capsules and had intersected both in terms of the trademark register and anticipated, as far as the matter of reality of trade is concerned, that there would be a substantial intersection between the trademark “Inner Health Plus” and the trademark “Health Plus”.
The grounds upon which rectification was sought were based on section 88 of the Act, and I wonder if I might revert to that. This of course is where the first question of aggrieved person is engaged. Subsection (1) provides:
Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person, order that the Register be rectified –
within the three subsections that then follow. It might be noted that in October 2006, the section was amended to include as an aggrieved person or – after the words “an aggrieved person”, the words “or the Registrar”, but that does not appear in the relevant form.
The ground for rectification of the register, after trademark registration has been effected, is the third of the layers available under the Act whereupon a trademark is scrutinised for its suitability for registration. The first stage appears when the trademark application is lodged, and the Registrar of Trademarks is obliged to consider the registration and decide whether or not it ought to be accepted.
Acceptance is dealt with in sections that commence at Part 4, Division 1 and, in particular, section 31 of the Act which provides that upon publication of particulars of an application – in section 30 that is – the registrar must examine and report on an application and, in particular, subsection (b):
whether there are grounds under Division 2 for rejecting [the application].
We will submit that this is the first of the three steps required to make sure that the register is maintained as an accurate record that a trademark in fact performs its task on the register, namely, that it is a sign which indicates the trade origin of the goods to which it is intended to be applied. After examination – and I will turn to Division 2 in a moment – the registrar is obliged either to accept or reject the application and if it is accepted, section 34 provides that:
The Registrar must:
(a) notify the applicant in writing of his or her decision under section 33; and
(b) advertise the decision in the Official Journal.
The advertisement of the application and of the acceptance is a significant stage in the statutory scheme because it invites an opportunity to those who are interested to lodge a notice of opposition. The logical parties who would be interested in making such an opposition are those who are traders in the same field who might keep a watch on the official journal or other peoples with a particular interest. The grounds for rejecting an application are set out in Division 2 at sections 39 and following and they cover grounds which the registrar might consider are inappropriate bases upon which the registrar might consider it inappropriate for a trademark to proceed onto the register. It must be something which can be graphically represented.
There are certain types of trademark which are not to be included in the register and the regulations prescribe, for instance, that offensive words and so forth not be permitted. Section 41, the trademark must distinguish the applicant’s goods or services. That is a fundamental provision, of course, that would exclude descriptive marks, except where they had become, through secondary use, capable of being distinctive. Sections 42 and 43 concern “Trade mark scandalous or its use contrary to law” or “Trade mark likely to deceive or cause confusion”. Section 42(b) “its use would be contrary to law” is one which was - - -
FRENCH CJ: You failed on that one, I think.
MR BURLEY: Yes, that is correct.
CRENNAN J: Section 43 would be where the prior citations come in, I would think.
MR BURLEY: Section 43 generally concerns where there is a connotation in the mark itself that would be likely to deceive or cause confusion. The prior mark is section 44.
CRENNAN J: Section 44, yes, I see.
MR BURLEY: I have dealt with section 44. The next stage in the process, the second tier of ensuring the register is accurate and correct, concerns oppositions to registration which are covered in Part 5 and commence at section 52:
If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.
The scheme is that after advertisement in the official journal an opponent has an opportunity within a certain number of months to bring forward an opposition. The grounds of opposition are set out in section 57 which include Division 2 of Part 4, so those sections which the registrar might refuse acceptance, but add additional grounds. These are grounds which we would submit are more apposite for an adversarial process now of contesting the appropriateness of a registration. Typically, it would be grounds raised by a trader.
FRENCH CJ: But it does not have to be.
MR BURLEY: No, it does not have to be, and the grounds do not have to relate to the particular conduct of the trader, although I think that the experience is that almost invariably it is somebody who is another trader.
FRENCH CJ: But there is no standing requirement for opposition.
MR BURLEY: No, that is correct.
GUMMOW J: Section 52(1) just says “a person”.
MR BURLEY: Yes. We submit that there is a reason why there is a standing requirement in section 88 which is distinctive from the absence of a standing requirement in section 52. That is based on the fact that the official journal is effectively the screen through which persons would bring an opposition. It is only if you have been looking at the official journal and can see that there a trademark application that has been lodged that you would be a person who would bring an opposition. So there is in effect a self-regulating filter which ensures that not everybody who has a casual or intellectual interest is going to bring an opposition.
GUMMOW J: I am sorry. What is the filter?
MR BURLEY: The filter is that the official journal is where the trademark is advertised. It is only if you are keeping an eye on the official journal that you would know that there was a basis for bringing an opposition in any event. Then the grounds set out in Division 2 - - -
FRENCH CJ: It is a kind of barrier to entry, is it?
MR BURLEY: Yes. Without the knowledge you could not bring your opposition.
FRENCH CJ: Yes, of course.
MR BURLEY: After a certain time your registration would be - - -
FRENCH CJ: But it does not take away from the proposition that there is no – any person can do it.
MR BURLEY: No. Within the scheme of the Act we would say that that is the self-regulating filter, though. Then the particular grounds – applicant not the owner, applicant not intending to use the mark and section 60, “Trade mark similar to trade mark that has acquired a reputation in Australia”. Section 60 is the subject of some attention in the judgments. In the form it appears here, it being later amended, the twin requirements are that the opposition be brought first on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration . . . had acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
It was on this basis that Justice Cooper, in considering the opposition brought by the appellant to the Health Plus mark rejected the opposition, finding that the twin requirements were not satisfied.
CRENNAN J: Did he say anything about differences between the marks, or did it all turn on the prior use point?
MR BURLEY: It concerned both, your Honour, in Justice Cooper’s decision, and that was revisited separately in Justice Jacobson’s decision, the primary judge in these proceedings, it having been found that there was no estoppel preventing the same ground from being raised in rectification proceedings. So we would submit that it is not necessary to go back to Justice Cooper, that Justice Jacobson’s reasons - - -
CRENNAN J: What did Justice Cooper say, as a matter of interest, about the differences between the marks?
MR BURLEY: Your Honour, I would need to check it to be precisely accurate in answering that, but effectively that the two marks compared within the accepted tests for deceptive similarity were not sufficiently close, having regard to the reputation and trade of the two products, the class of goods for which the trademark registration was sought and the actual use by the appellant of its trademark for probiotic goods.
His Honour also rejected a ground of opposition under section 42(b) which was raised and referred to section 52 of the Trade Practices Act and so there was that - - -
GUMMOW J: Contrary to law?
MR BURLEY: Yes, your Honour. Then there is section 61 concerning false geographical indication and section 2 that the application itself is defective. So those sections indicate that an opponent is able to raise not only matters which concern the conduct of trade and what is actually happening or might happen as far as the use of the proposed trademark is concerned, but also whether within the process of the application for registration there has been some defect by the trademark applicant, we would say, reflecting the view that the policemen of the trademark registration at opposition stage and on rectification are to be private individuals who may look into matters that were raised as between the trademark applicant and the registrar herself.
That brings us back to section 88 and, after looking at those two first tiers or basis for opposition to registration, then the third comes at the point once registration has been achieved and an aggrieved person. Subsection (2) provides that the application for rectification – I interpose:
may be made on any of the following grounds, and on no other grounds:
(a) any of the grounds on which the registration of the trade mark could have been opposed under Division 2 of Part 5 –
and that picks up those grounds to which I have just referred –
(b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation –
That is not a ground that was raised but is indicative of the same proposition that I made a moment ago, that the register may be rectified at the behest of a third party, not the applicant or the register of trademarks, where something improper, according to the Act, or inaccurate has occurred in the process of registration itself; fraud, false suggestion or misrepresentation. Subsection (c) is a ground that was relied upon by the appellant, and:
(c) because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion for a reason other than one –
which was available under sections 43 or 44 or section 60. That ground was successful, subject to the person aggrieved question, as far as the appellants were concerned at trial and is the subject of the notice of contention, namely, his Honour Justice Jacobson found that the trademark was likely to deceive or cause confusion because there was not an association, paraphrasing, between the respondent Shin-Sun and the trademark “Health Plus”, all of the use of the trademark residing in a different corporate entity, Nature’s Hive. There was also a finding by Justice Jacobson that a ground under Division 2 of Part 5 succeeded, namely, under section 59, that there was no use of the trademark, relevantly, and no intention to use at the time it was applied for for similar factual reasons.
GUMMOW J: Can you just go back to section 52 for a minute. Assume a person opposes and the opposition is dismissed, how does the dispute then get to the Federal Court at the opposition level?
MR BURLEY: Subject to the grant of leave an unsatisfied opponent may appeal. There is a provision under section 195 of the Act.
GUMMOW J: Yes, I see, 195(2). That is not right either, is it?
MR BURLEY: No, I am sorry, your Honours.
GUMMOW J: Section 191(2).
MS BAIRD: Section 56.
MR BURLEY: Yes, my learned friend is saying section 56. Yes, it was closer than I thought. I had jumped to the second stage. Section 56 gives effectively a right of appeal to both the applicant or the opponent, where the Federal Court considers for the first time judicially the opposition - - -
GUMMOW J: So the theory seems to be that any person can get themselves at the opposition level into the Federal Court, subject to leave. Is that right?
MR BURLEY: No, section 56 provides that any person can appeal to the Federal Court upon the unsuccessful outcome of an opposition. The matter is then heard as afresh before a justice of the Federal Court.
GUMMOW J: But it does not get to the Full Court?
MR BURLEY: Yes.
GUMMOW J: Except by leave?
MR BURLEY: Yes, and that is what I meant by taking your Honour to section 195.
GUMMOW J: Anyhow, so it gets to one judge of the Federal Court at the opposition level, but at the level of rectification there has to be a person aggrieved?
MR BURLEY: Yes, and so that brings up the dispute now concerning person aggrieved and what - - -
GUMMOW J: The question then is why does one construe “person aggrieved” narrowly?
MR BURLEY: Yes, and in our submission, one should not and the courts below fell, with our respectful submission, into error by doing so. I might just complete the picture as far as the proceedings are concerned before I move on to the submissions concerning construction of “person aggrieved” because the next step was that on 28 June 2006 Health World filed a trademark application No 1121282, which appears at appeal book volume 2, page 687. This is the appellant’s application for the word mark “Health Plus” in Class 5 for certain goods. The primary judge found at paragraph 121 of his reasons that the appellant had no intention to use that mark, but his Honour in his reasons erroneously referred to particular dates concerning that trademark application.
The lodgement date, as one can see, was 28 June 2006. The next proceedings, which were the appellant’s proceedings for removal for non-use under section 92 of the Act, were filed on 25 July 2006 and those proceedings again sought, on the similar basis of the facts, removal of the trademark, only this time on the basis that for a period ending one month before the application of three years the respondent had not used the trademark. That arose under section 92 which provides subsection (1):
A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.
GUMMOW J: At that stage that has to be a person aggrieved even though it is only to the registrar.
MR BURLEY: Yes, your Honour. As chance would have it, that section was amended to remove the requirement of the person be aggrieved some months after the application. That is one of the 2006 amendments, but that is just a matter of subsequent events.
GUMMOW J: It now says “A person”.
MR BURLEY: Yes. Then subsection (3):
An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.
Then subsection (4) provides the substantive grounds, both of which were relied upon by the appellant:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith –
to use, authorise or assign the mark –
in relation to the goods and/or services . . .
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods –
The reason why there are two appeals and not one proceeding arises in section 93(2) of the Act which provides that “An application” for non-use cannot:
be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark.
Then subsequent to the commencement of the second proceedings, the third proceedings, which are not the subject of an appeal now, were filed by the respondent on 5 September 2006. This is the respondent’s non-use application, the pleading of which appears at volume 1, page 80 of the appeal book. That is the statement of claim and, relevantly, at - - -
FRENCH CJ: This was held not to assist you in standing because it was, in effect, defensive or responsive to what you were doing?
MR BURLEY: That is what was said, yes, your Honour. We draw attention to page 82 which has the heading “Persons Aggrieved” and that pleads that:
. . .
So the intersection between rights, as far as the register is concerned, continued through the pleadings and through to these proceedings. Finally, at appeal book 2, page 633 there is a reference to a letter that is mentioned in the judgments dated 4 April 2007, a letter sent to the Registrar of Trademarks by those representing the respondent. This refers to another trademark application by the appellant for the trademark “INNER HEALTH PLUS”. Your Honours will see under the “Summary”:
For the reasons set out below, our client requests the Registrar to revoke the acceptance of trade mark application no. 1136515 INNER HEALTH PLUS, in accordance with section 38 of the Trade Marks Act –
If I could summarise the effect. Paragraph 2.2 identifies the trademark. Perhaps it is worth taking your Honours to that. It refers to “INNER HEALTH PLUS” – a subsequent INNER HEALTH PLUS mark “in class 5” and lists the goods for which that class is sought – in that class sought. It notes in paragraph 2.3 that:
The Application has been accepted for registration under section 44(4) –
again by the registrar. Then, paragraph 3.2, the representatives of the respondent said:
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.
This is an indication that notwithstanding the cessation of hostilities as far as the opposition to the trademark is concerned on the Health Plus, Inner Health Plus initial opposition, the respondent continues as late as April 2007 to maintain that its Health Plus mark would represent an obstacle such that it would be necessary for Health World to navigate around it by establishing prior use in respect of specific goods. If that prior mark was not present then Inner Health Plus would have been able to be registered or accepted at least without proving prior use of particular goods within the class, provided that there was an intention to use those goods.
If I can turn then to the specific legal matters in which we pray in aid for the proposition that the approach to “person aggrieved” adopted by the Full Court and also by the primary judge - - -
GUMMOW J: It goes back to Kraft Foods, does it not, in the Federal Court, I think?
MR BURLEY: Yes. We would submit that there was a misunderstanding, with respect, of the Kraft Foods decision by the Full Court.
GUMMOW J: It is what Sir Harry Gibbs would have called a wrong turning, you say, that took place in Kraft Foods 65 FCR 104.
MR BURLEY: Yes, your Honour. I was going to touch on that a little later because at first I was going to make the proposition that one part in which the Full Court, with respect, appears to have headed in the wrong direction was by not recognising as an initial point that the concept of “person aggrieved” is one which arrives from the administrative law which has been the subject of some consideration over the last 30 years and in particular the turning that took place between the United Kingdom and Australia as far as the Boyce decision, as reflected in the Australian Conservation Foundation Case, that damage or special damage is not required where a person seeks to enforce a public right even though it has not been conferred with standing. Rather, a special interest is all that needs to be shown in the subject matter of that litigation.
But where a statute expressly confers standing on a person, such as a person aggrieved or a person affected by a decision, it is now, we would submit, plain that interests do not need to be proprietary or even legal or equitable in nature in order to be sufficient to amount to an interest affected for the purpose of conferring standing.
FRENCH CJ: You say that the scope of standing is to be ascertained by reference to the statutory context purpose or does that come with a settled set of baggage like a clip-in module?
MR BURLEY: Your Honour, the former, that it is essential that the policy, scope and purpose of the Act be considered as part of the review of whether standing is conferred and to that effect we would refer to the decision of this Court in Allan v Transurban City Link Ltd (2001) 208 CLR 167, where at paragraph 15, the Court said:
The expression “affected by” and cognate terms appear in a range of laws of the Commonwealth. This is not the occasion for a disquisition on that topic. It is necessary to answer the questions posed above in respect of s 119(1) of the Authority Act by reference to the subject, scope and purpose of that statute, rather than by the application of concepts derived from decisions under the general law respecting what has come to be known as “standing”. “Standing” is a metaphor to describe the interest required, apart from a cause of action as understood at common law, to obtain various common law, equitable and constitutional remedies.
In Re McHattan and Collector of Customs (NSW), Brennan J stated that “[a]cross the pool of sundry interest, the ripples of affection may widely extend” - - -
HEYDON J: That should be “affectation”. Extraordinary.
MR BURLEY: Yes.
However, as Davies J pointed out in Alphapharm Pty Ltd v SmithKline Beecham (Australia) Pty Ltd, Brennan J “did not propose that any ripple of [affectation] would be sufficient to support an interest”. A particular statute may establish a regime which specifically provides for its own measure of judicial review on the application of persons meeting criteria specified in that statute.
In the Alphapharm case, to which we have referred in our written submissions, the Full Court recognised that a competitive interest might be sufficient to a ground standing depending on the particular scope and nature of the statute concerned. So, in our respectful submission, consonant with what the learned Chief Justice said a moment ago, “essential” is an understanding of two propositions. The first, that the subject, scope and purpose of the Act is central to the understanding of what is a person aggrieved and, second, that the type of interest required, affectation of which is necessary, is not one which is a legal one, equitable or proprietary in its nature, and does not require that there be actual harm to be suffered.
GUMMOW J: How do you get assistance for that out of the subject, scope and purposes of the Trade Marks Act?
MR BURLEY: The Trade Marks Act is directed, in our submission, towards the interests of traders and consumers, broadly speaking.
FRENCH CJ: A public interest might support a wide construction of people aggrieved. The question is, what is the point of the limit? Why bother to have a standing? Why have a standing criterion at all?
MR BURLEY: As we will come, and looking at the earlier authorities, in our submission - - -
GUMMOW J: You do not seem to have one in some sections of the Act, but you do in others. Is there any rationale for that? That is what one needs to know.
MR BURLEY: Yes, we would submit, and Lord Herschell said it better than I can so I will do that in relation to Powell’s Case which I would direct you in a moment. But the primary proposition that Lord Herschell identifies in Powell’s Case is that the section is really designed in the public interest to ensure, on the one hand, that the register remains pure and correct, but on the other hand, officious interferers or intermeddlers should be excluded in the same way that the law typically is nervous at the introduction of acts by officious intermeddlers who might otherwise frustrate the proper operation of the Trade Marks Act. One could well imagine the situation where that might apply, because the distinction between pre-grant opposition and post-registration conduct - - -
GUMMOW J: There was a system, was there not, of common informers which – if they agitated the enforcement of a statute with a penalty to it, they got the penalty, did they not?
MR BURLEY: I see.
GUMMOW J: Well, we have to know about these things. Lord Herschell knew about it. You are invoking Lord Herschell.
MR BURLEY: Yes.
GUMMOW J: Did he not say common informers were not to be allowed in here.
MR BURLEY: Yes, in effect, your Honour.
FRENCH CJ: I suppose registration confers certain property rights. You go through a process under which anyone can oppose. Can one see the standing requirement as some sort of measure of a minimum level of stability? I suppose it is another way of saying that you do not want officious intermeddlers coming in.
MR BURLEY: Yes.
FRENCH CJ: I am just looking for a policy which helps us to understand what the purpose of the term “person aggrieved” is or was.
MR BURLEY: Yes. Can I address that then, your Honour. The understated assumption, overt in the name of the Act, is that the register concerned the interests of those engaged in trade and consumers who have an interest in looking at the register. As this Court said in the Nike Case [2000] HCA 12; 202 CLR 45 at paragraph 40 – this is of the 1955 Act but this is equally relevant, we would submit, for the current Act – in relation to section 28 of the Act which is the removal ground:
Essentially, much of the support for the continuing or secondary operation of s 28 is founded on the proposition that the supreme or, at least, predominant interest manifested in the 1955 Act is the maintenance of the integrity of the Register against any apparent condonation of misleading or deceptive practices which may arise from the use of registered marks.
In the paragraphs that follow, the Court carries on by referring to the balance of interest between those of traders to protect the goodwill and investment in trademarks and consumers in having a reliable indicia of origin of the goods to which the marks are applied. The economic benefits are referred to in those paragraphs as generally arising in the reduction of transaction costs as a result of persons having an understanding of the trade origins of goods to which the marks are applied.
So the broad scope and policy of the Act is one which is directed particularly to traders and the protection of their proprietary rights through the process of registration and consumers in lowering transaction costs and ensuring that they have an accurate representation of the source from which goods come. Within that context, and perhaps being a little longwinded about it, your Honours, the policy approach for excluding persons aggrieved is one which is limited, we would submit, to those who are busybodies, who do not have an interest in the register within the scope and purpose of the Act, but who might frustrate its purposes by bringing litigation which is going to clog up and deter traders from applying to register by introducing proceedings which would be adverse to the interest but of no direct interest to the register.
GUMMOW J: Is there some notion of abuse of process?
MR BURLEY: Similar to it but not extending as far as that perhaps. So, for instance, it may be that a person who felt that green could only connote environmental freshness might wish to object to the registration once they learn that a service station company has achieved a registration for the colour green and seek to remove it from the register. That might be a person who has nothing more than an intellectual interest in the registration, not having a trade interest or a particular consumer interest.
CRENNAN J: Is not the idea that Lord Herschell had was that a person aggrieved was one whose legal rights would be constrained in some way by a mark remaining on the register? That is why there is discussion of the person aggrieved being a person in the same trade.
MR BURLEY: Your Honour, we would submit that there is a broader proposition that is underlying the first aspect of Lord Herschell’s words and I will no longer resist the temptation to go to them. If I could invite your Honours to turn to the Powell Case [1894] AC 8. This was, of course, a decision made before the clarification represented in the history following the Australian Conservation Foundation Case, the distinction between a special interest and special damage and so forth. But in the speech of Lord Herschell at page - - -
GUMMOW J: What was the dispute about?
MR BURLEY: That was concerning the use of “Yorkshire Relish” as a trademark and the party seeking rectification of the register was a party that itself had not used “Yorkshire Relish” and the respondents’ manager was cross-examined – I am picking this up from page 9, the third paragraph:
Before the Court of Appeal the respondents’ manager was cross-examined upon his affidavit, and admitted that so far as he knew there was no present intention or desire of his directors to sell Yorkshire Relish, the question never having been discussed at the board in any shape. The Court of Appeal (Lindley, Bowen and Kay LJJ) affirmed the decision of Chitty J on both points, holding upon the point of law that though there was no evidence that the respondents really wished or intended to sell Yorkshire Relish, it might well be that if they could get rid of the trade-mark they would sell it, and that they were therefore “persons aggrieved” within the Act.
The statement of principle upon which we rely is that on page 10, Lord Herschell’s speech beginning about eight lines down:
The respondents are in the same trade as the appellant; like the appellant, they deal amongst other things in sauces. The Courts below have held that the respondents are “persons aggrieved”.
Then we would say the classic statement, in the following 10 lines:
My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words, because, although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected who nevertheless would not be willing to enter upon the risks and expense of litigation.
GUMMOW J: That is an important point, is it not?
MR BURLEY: Yes, your Honour.
CRENNAN J: The next sentence is important too.
MR BURLEY: Yes, and we would draw breath at the end of that sentence because we would respectfully submit that that is the statement of general principle, and that his Honour was then following on with an example - - -
GUMMOW J: His Lordship.
MR BURLEY: His Lordship, yes, I beg your pardon – followed on with an example:
Wherever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade-mark, and wherever the trade-mark if remaining on the register would or might limit the legal rights of the applicant so that by reason of the existence of the entry upon the register he could not lawfully do that which but for the appearance of the mark upon the register he could lawfully do - - -
GUMMOW J: But the expression “legal rights” is used.....liberty, so these people did not have any present intention to use Yorkshire Relish, but they wanted to assert their liberty to do so.
MR BURLEY: Yes, your Honour. That is how the court found it, in our submission, and the proposition there expressed in what we would say is the second part of his Lordship’s reasons, the registrar would or might limit the legal rights, was looking from the time of the application, being the point at which the threshold question of person aggrieved is judged, and considering whether there might be a limitation in that context. So, one of the aspects of the present proceedings is whether or not Health World might be limited in its rights by the use of the “Health Plus” mark. The limitation or the effect on Health World could include that persons would be confused by the use of Health Plus when there is established in the market Inner Health Plus and a registration for Inner Health Plus on the register which, of course, is two-thirds of the same mark.
We would submit that taking the two propositions, as his Lordship expressed them in those passages that I have just read, the first is, and our primary submission, that the rationale of general principle as expressed in that first sentence is one which would make it good for standing that a trader be in the same trade. That is not a limiting example but one which would be suitable for us but we say, in any event, on our alternative case, that the facts of the present case would be such that when understood as a test applying at the threshold level from the point in time in which the application is brought, we would also satisfy that test as being a party whose rights would or might be limited by reason of the registration of Health Plus and that would be sufficient to confer standing.
GUMMOW J: Now, before you leave Powell’s Case, one sees that Fletcher Moulton, QC, was not even called on for the respondents. There must have been some argument to the contrary sufficient to provoke all this litigation. Were there other authorities that seemed to suggest support for the appellant? Those cases on page 9, did they suggest some more limited view?
MR BURLEY: I think some of the difficulty of the older authorities, to which both parties have referred in their written submissions, is that there are general statements of principle followed by application on particular facts, but In re Rivière’s Trade Mark Case was one where a trader was declined standing, but that trader did not trade in the United Kingdom, its trade resided in Madras, India, and it had no interest in the United Kingdom.
In re Apollinaris was a different circumstance where standing was permitted and some general statements of authority which built up to the Powell’s decision are referred to there. I am afraid I cannot recall the facts of Richards v Butcher but we will do some research and return to your Honour on that.
The proposition that we would submit arises from Lord Herschell’s speech is that there is a statement of general principle as to the public mischief in allowing there to remain on the register something which might affect interests, which is tied up with the public nature of the register and the proprietary right which is conferred in it. Then there follow some examples. The other speeches of the House of Lords which are sometimes referred to are - - -
GUMMOW J: Lord Watson is a considerable figure, is he not?
MR BURLEY: Yes. The statement of Lord Watson at page 12 is one which has been referred to. The first full paragraph, at around line 10, his Lordship says:
In disposing of the appellant’s contention that the respondents were not “aggrieved persons”, it appears to me that the Courts below proceeded on the right construction of sect 90 of the Act of 1883. In my opinion, any trader is, in the sense of the statute, “aggrieved” whenever the registration of a particular trade-mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business. It is implied, of course, that the person aggrieved must manufacture or deal in the same class of goods to which the registered mark applies, and that there shall be a reasonable possibility of his finding occasion to use it.
Here his Honour is talking about using the same mark. Of course, that would a fortiori apply to a deceptively similar mark within the modern regime:
But the fact that the trader deals in the same class of goods and could use it, is primâ facie sufficient evidence of his being aggrieved, which can only be displaced by the person who registered the mark, upon whom the onus lies, shewing that there is no reasonable probability that the objector would have used it, although he were free to do so. That reading of the statute appears to me to be in substantial conformity with the construction adopted by the Court of Appeal in In re Rivière’s Trade-mark, and also in In re Apollinaris Company’s Trade-marks.
Insofar as his Honour deals with specific instances of traders’ conduct, we submit that that is a subset of the more general test of “person aggrieved”, which is more fully stated in Lord Herschell’s passage to which I referred.
GUMMOW J: Lord Ashbourne at page 14 where it says, the second paragraph:
They are not common informers or strangers proceeding wantonly - - -
MR BURLEY: Yes, and again, arising from the generality of that statement is what we would submit is the relevant aspect of the test as far as traders are concerned.
GUMMOW J: The notion of right is given some content by his Lordship lower down. He says:
In the present case, if free –
that is the notion of right –
the respondents might wish to deal –
This is all written in pre-Hohfeldian times, but that is the idea, I think.
MR BURLEY: Yes, your Honour.
HEYDON J: This part of your argument commenced with the question, why is there a standing requirement in sections 88 and 92 but not in 52.
MR BURLEY: Yes.
HEYDON J: Might the answer be that when you are at the 52 stage the registrar is operating under handicaps? Anyone who might conceivably be able to assist might have something of value to say in opposition proceedings before the registrar, but the other sections operate when the mark has either been granted or is about to be granted. It is moved almost to the stage of being a vested right. Those who wish to overturn a vested right of that kind have got to fulfil stricter requirements than those who are trying to stop the right being granted in the first place. Is that a possible explanation?
MR BURLEY: Yes, your Honour, with respect. Of course, before registration the mark is not generally in use and published and so those who might come forward in opposition are limited to that category of people who observe the official journal and come forward in response to it.
HEYDON J: They are not likely really to be busybodies for that reason. They are likely to be patent agents or trademark attorneys.
MR BURLEY: Yes, your Honour, and that is what folds into the submission I was articulating a little earlier, that there is a self-filtering component there. But that is a recognition perhaps, first that the busybody is excluded by the practicality of the matter and secondly that the broader class, which we would respectfully submit is the least part of the persons who are clearly aggrieved, are those traders who are in the same trade who are the most likely ones to be reading the official journal and responding in the opposition. In our submission, that would be sufficient to satisfy the test as far as Health World is concerned.
CRENNAN J: Should it matter to standing that the registrar has recognised that you have concurrent legal rights with that endorsement under section 44(4)?
MR BURLEY: We would submit that that is an indicia that the registrar has considered that - - -
GUMMOW J: Indicium.
MR BURLEY: Thank you, your Honour. There might be a clash between the marks. The fact that one is found to be deceptively similar to the other generally works against the policy of the Act, although - - -
CRENNAN J: It is just the structure of the Act recognises that there are some circumstances where two proprietors are entitled to be registered to marks which would otherwise be deceptively similar.
MR BURLEY: Yes.
CRENNAN J: I am just asking you whether that should have an impact in relation to whether or not you are truly a person aggrieved? I mean, you might want to think about that.
MR BURLEY: Yes, perhaps I will, thank you, if your Honour will permit me to do so over lunch.
FRENCH CJ: Is this a convenient moment?
MR BURLEY: Thank you, your Honour.
FRENCH CJ: We will adjourn until 2.15.
AT 12.44 PM LUNCHEON ADJOURNMENT
UPON RESUMING AT 2.16 PM:
FRENCH CJ: Yes, Mr Burley.
MR BURLEY: Thank you. In answer to the question Justice Crennan posed before lunch regarding the effect of section 44 on the scheme that we were proposing, in our submission, section 44 of the Act reflects the view that deceptively similar marks or applications for the same or closely related goods or services are not registrable within the Trade Marks Act except that they are tolerated in the limited circumstances set out in subsections (3) and (4). What the appellant is saying in these proceedings is that the earlier citation of a mark is one which it would prefer not to tolerate, that the presence on the register of a mark which on its argument was deceptively similar to its own later trademark registration is one which should not remain on the register, should be removed from it and that the remaining on the register there is something which is contrary to its view as to the proper state of the register.
The decision of this Court in Nike considered the policy objectives which are underlying the Act and, in that context, the competing rationales which led to the accommodation of concurrent trademarks, even though, therefore, they are deceptively similar.
In our submission, that leads to another interest of Health World which is affected in the event that it is not permitted to challenge this trademark, that is, that as a trader in the same class of goods for a mark which it contends is deceptively similar, if the earlier registered mark is not removed, then the rights that Health World would have in respect of its registration are curtailed and they are curtailed because they cannot sue the respondent for infringement of the trademark. That is provided by section 122(1)(e) of the Act, which provides that:
In spite of section 120 –
which is the infringement provision –
a person does not infringe a registered trade mark when:
. . .
(e) the person exercises a right to use a trade mark given to the person under this Act - - -
CRENNAN J: Concurrent user provisions in this sense recognise that there may be two parties, if you like, who have got equal entitlement as a result of prior use.
MR BURLEY: Yes.
CRENNAN J: Equal entitlement to be registered in relation to deceptively similar marks.
MR BURLEY: Yes, it does, but the basis - - -
CRENNAN J: In other words, how are you aggrieved if you just happen to have an equal entitlement with another person to registration of deceptively similar marks?
MR BURLEY: We would be aggrieved because - - -
CRENNAN J: Because neither of you would be able to sue for infringement successfully. You could try, but it would not be successful in terms of the - - -
MR BURLEY: Against the other.
CRENNAN J: No, that is right.
MR BURLEY: And therein lies the basis for an aggrievement because if we are right - - -
GUMMOW J: Each of you could sue a third party without the other.
MR BURLEY: Yes. We could not sue Shin-Sun for infringement of our trademark and we say the trademark ex hypothesi on this removal application is one which ought not to remain and when considering the threshold question of whether we are somebody with standing, a person aggrieved by the State of the register, then one source of the aggrievement lies very much in the intersection between the two marks. If the “Health Plus” mark has achieved registration before ours and we have got – we would say the basis for our aggrievement is that that very registration is curtailing our rights.
CRENNAN J: What about the fact that the opposition was lost on the basis that the marks were not deceptively similar?
MR BURLEY: It was not quite that basis, your Honour. The loss of the opposition was on the basis of section 60 of the Act which requires deceptive similarity and by reason of the reputation of the earlier mark there would be deception or confusion. It is a slightly different test to the test under section 120.
CRENNAN J: So “use” was involved.
MR BURLEY: Yes, but the important thing about the infringement problem as far as Health World is concerned and the prior registered mark is that of course it is a completely different test when one comes to infringement. Instead of the respondent’s “Health Plus” mark being scrutinised in light of what has happened in the real world by Inner Health Plus it is the Inner Health Plus registration which is compared with the alleged infringement, being Health Plus, in its use. So it is a reverse situation and that has not been considered in any of the courts.
The affectation of our right as a result of the earlier registered mark is made apparent even from the earlier sections of the Trade Marks Act which deal with the rights given by registration of the trademark. Section 20(1) of the Act provides for the exclusive right:
If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
But, section 23 imposes a “Limitation on rights if similar trade marks etc. registered by different persons”. So this is no doubt related to the section 122 point that I made a moment ago, that:
If trade marks that are substantially identical or deceptively similar have been registered by more than one person (whether in respect of the same or different goods or services), the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first-mentioned owner is authorised to do so under the registration of his or her trade mark.
In our respectful submission, the effect of this is that whilst the scheme of the Act acknowledges that there can be a concurrency of marks, when considering “person aggrieved” within the concept of that test as to whether there was a ripple of affectation by reason of the registration of the Health Plus mark, it must be, in our submission, very significant that not only has our mark been accepted and registered on the basis of the section 44(4) requirement, but that while that earlier mark remains on the register, our rights, including our rights to sue for infringement, are impeded.
Your Honours, when I was going through the appeal books, I took your Honours to paragraph 16 of the respondent’s statement of claim on the non-use provision, which was pleaded at page 83 of volume 1, and provided in paragraph 16 that:
If the Respondent’s trade mark registration for the Inner Health Plus Mark is not amended in the manner sought in these Proceedings, and the Respondent is wholly or partially successful in the Expungement Proceedings particularised in then the Applicant [may be] found to infringe the Inner Health Plus Mark.
That paragraph was omitted in our defence to the statement of claim, which appears at page 90 of the appeal book. So there is no doubt at all that that was a matter in play, that the rights of Health World in respect of its registration included the rights to take action, if this prior mark which is impeding it is removed. Your Honours, Justice Gummow raised the question of what the other cases referred to in the argument in Powell’s Case - - -
GUMMOW J: It does not seem to say much.
MR BURLEY: No, we could find nothing. The next case to which I would make brief reference is the decision of Attorney-General for the State of New South Wales v The Brewery Employees Union of New South Wales [1908] HCA 94; (1908) 6 CLR 469.
GUMMOW J: Just before you go to that, it may be that on the view taken by the Federal Court, you cannot really work out standing without first deciding the substantive case, which seems self-defeating in a way.
MR BURLEY: Yes, with respect, that is one of the arguments which we consider material to the errors that the Full Court made, with respect, that there is a circularity in the approach that they took that adopted the view that seemed to centre on the ground of revocation based on section 60 of the Act and so that there needed to be not only deceptive similarity, but what was described as “reputational interference” or impact which would - between the appellant’s use and the respondent’s mark. In our submission, that far exceeded the requirements of the test which - - -
FRENCH CJ: It is like saying every special leave application requires full argument as to the merits.
MR BURLEY: Yes, your Honour. But the part of the decision of this Court in the Union Label Case is that which appears at page 595 in the decision of Justice Higgins.
GUMMOW J: Why was Justice Higgins getting into this question? It is a case about validity of the union label legislation under the trademarks power.
MR BURLEY: Yes. His Honour was in dissent in the decision and appeared to be venting some frustration at the approach taken by the majority in that standing for purposes of attacking the constitutional validity of the Trade Marks Act or the union label provisions in it was considered by the majority, almost assuming that the words “person aggrieved” stipulated the threshold required for standing for a private individual to seek relief for a public wrong.
At page 595 his Honour refers to Powell’s Case in the context of – if I can put it this way – explaining why Powell’s Case was not applicable in the current circumstances, but nevertheless, his statements, in our submission, intersect happily with the proposition that the way to approach standing under the Trade Marks Act is one which does not require actual harm or damage but rather an interest and describes the type of interest by reference to Lord Herschell’s speech. So, at the beginning of the first full paragraph:
The case of In re Powell’s Trade Mark; Powell v Birmingham Vinegar Brewery Co is not, in my opinion, any authority for this action. It is cited, not as an answer to all the objections above stated, but only to some of them; and it does not answer even these. It is a mere decision as to the meaning of the words “person aggrieved” in the English Trade Marks Act. But a “person aggrieved” within that Act has not necessarily a cause of action. An action lies only where a wrong is done to the plaintiff – actual, or, at the least, imminent and inevitable. A motion under the Act to rectify the register is a special machinery devised to keep the register pure, and it may be made by a person who sees that a wrong to him is merely possible. In an action, the plaintiff sues because of wrong done in fact (or certain to be done) to him. In the motion to rectify, the mover moves because of the public mischief resulting from wrong entries in the register: per Lord Herschell LC; but, to prevent the time of the Court from being wasted by mere debating society arguments, the mover must have some possible interest in the entry in the register.
We would respectfully submit that that encapsulates in another version Lord Herschell’s approach to it and emphasises the breadth of the interest required to achieve standing. We would submit that on the broader case the existence of an arguably deceptively similar mark on the register or even a non-frivolously asserted deceptively similar mark on the register would be well sufficient to give standing to another trader in the same trade. The state of the register is not the only fact that is material because we as a trader in the same trade are affected by the entry in the register of something per se because it would necessarily curtail what we can do.
CRENNAN J: That is mainly in relation to suing for infringement, though, is it not? You are free to undertake your business on the present circumstances where each registered. There is no impediment in relation to conduct of your business.
MR BURLEY: No, there is not, but, your Honour, that assumes that our only interest is in carrying on unimpeded, not that we wish to ensure that other consumers are not confused by the existence of two similar marks on the register or, indeed, that we might want to prevent somebody who is not properly on the register from using a mark which we had first.
CRENNAN J: In all the litigation and the oppositions and so forth, has there ever been evidence of actual confusion as being part of a case?
MR BURLEY: I am not aware of there being. Some of that might be explained by the fact that I think it was not until 2004 that the first respondent started using the mark at all, but I may be wrong about that. Then his Honour continued, and this is what we would submit is – now I am referring to a subset of the requirement:
Therefore the Court held that a rival trader, who finds that the mark constitutes primâ facie a block to the free exercise of his immediate business, is a person sufficiently “aggrieved” to make the motion. But the order is made in the interests of the public, not of any private person. It is not made as between the applicant and the respondent.
Your Honours, insofar as there have been statements of principle concerning “person aggrieved” under the Trade Marks Act since the turn of the twentieth century, in our submission, they have been largely consistent with the approaches of Lord Herschell and Justice Higgins. In the 1946 decision of Farley (Aust.) Pty Limited v J.R. Alexander & Sons, Justice Williams said:
These words have been given a wide signification. It has been said that their purpose was to prevent the register being attacked by common informers or for sentimental reasons.
That is at [1946] HCA 29; (1946) 75 CLR 487 at 491.
GUMMOW J: Sorry, 1946?
MR BURLEY: Yes, your Honour.
GUMMOW J: What is the citation?
MR BURLEY: I am sorry, your Honour[1946] HCA 29; , (1946) 75 CLR 487 and the passage I just read was from page 491.
GUMMOW J: Justice Williams, is it?
MR BURLEY: Yes.
GUMMOW J: Sitting alone?
MR BURLEY: Yes. Another decision of a single judge of this Court, Justice Kitto, in Continental Liqueurs Pty Limited v G.F. Heublein [1960] HCA 37; 103 CLR 422. This was a case concerning Smirnoff. The opposed mark was a composite mark, including the word “Smirnoff”. At 427 his Honour said, about halfway down the first full paragraph:
The respondent’s trade mark is registered in respect of “fermented liquors and spirits”. The applicant is a dealer in goods of that class, and that fact is prima facie sufficient evidence of his being a person aggrieved.
Then there is reference to cases, some of which I have taken your Honours to. Then his Honour says:
In the case first cited Lord Herschell used words which I respectfully adopt as applicable –
and then he quotes the second part of the test set out in Lord Herschell’s speech in Powell, the first being the more general proposition. In our submission, he is not intending by that to say that the only test is that in the second part but rather that applicable to the present facts is the example given there. I will not repeat it. His Honour said after the quotation:
In the present case the applicant is already using the word “Smirnoff” in connexion with his goods, and the same word forms a significant part of the respondent’s trade mark.
Pausing there, the same might be said of the current situation -
I need not refer at this point to the disputes which have arisen between the parties with respect to this word. It is enough to say that the respondent has shown an intention of preventing the applicant from using the word, if by any means it can do so, and on some future occasion it may well rely for this purpose on the trade mark now in question. The applicant has applied for registration of three trade marks consisting of or containing the word “Smirnoff”, and the examiner has made adverse reports under s. 33(2) on the ground, amongst others, that each of the proposed three marks so closely resembles the respondent’s mark as to be likely to deceive. This would suffice even by itself to give the applicant a locus standi: cf. Batt’s Case. In all the circumstances it seems to me too clear for argument that the applicant has a substantial business interest in getting the trade mark removed from the register, and accordingly is entitled to maintain the application as a “person aggrieved”.
In our respectful submission there is - - -
GUMMOW J: What has happened to the citation of Smirnoff in the Federal Court? Does not anyone read it any more?
MR BURLEY: I think that in some of the Full Court decisions it is referred to but not in the most recent ones. Your Honours, we have quoted in our outline of submissions the decision of the House of Lords in the Daiquiri Rum Case [1969] RPC 600 (HL). In that case the speech of Lord Pearce is, in our submission, particularly apposite. The particular passage to which we would refer is at page 615 where his Lordship referred to the same passage from Lord Herschell and then describes the purport of it:
Lord Herschell was not there purporting to do more, I think, than decide that the applicants were within the ambit of the words. In my opinion, the words were intended by the Act to cover all trade rivals over whom an advantage was gained by a trader who was getting the benefit of a registered trade mark to which he was not entitled. At common law a trader could ask the courts to protect him from the improper use of his mark by others who would pass off their goods as his. But to do this he had to establish by cogent evidence from the purchasing public and the trade that the mark had come to denote his goods and his alone. To avoid the paraphernalia of proof and to help traders by enabling them to see more clearly where they stood in respect of particular marks the Trade Marks Acts were passed. It is, and was intended to be, a great advantage to a trader to have his mark registered under the Acts. That advantage to him is to some extent a corresponding disadvantage to his rivals. He was only intended to have it if the necessary qualifications are fulfilled. If they are not, the mark is not to be entered on the register. If it subsequently appears that it is wrongly on the register, it is to be removed. For to permit it to remain would give him, at the expense of his rivals, an advantage to which he is not entitled. Thus, the general intention and policy of the Act show, I think, that Parliament intended the words to have a wide meaning. If an erroneous entry gives to his rival a statutory trade advantage which he was not intended to have, any trader whose business is, or will probably be, affected thereby is “aggrieved’ and entitled to ask that the error should be corrected.
GUMMOW J: Then one should look at Lord Wilberforce at 620 and 621 - the bottom of 620.
MR BURLEY: Yes. Again, reference there – I am grateful to your Honour – that the expression of Lord Herschell should be – or rather “person aggrieved” should be “liberally construed”.
Your Honours, if I could pass to more recent times now in the decision of Justice Gummow in the Australian Institute of Marine and Power Engineers v Secretary, Department of Transport [1986] FCA 443; (1986) 13 FCR 124. This concerned the question of standing as a “person aggrieved” under the Administrative Decisions (Judicial Review) Act. At page 131 of the report, his Honour refers to the cognate provision in the Trade Marks Act at the second full paragraph:
The term “person aggrieved” lacks novelty. It has appeared in statutes over a long period to identify the class of persons given standing to utilise a procedure established by statute. So, when the modern system of trade mark registration was introduced . . . it was provided (by s 9) that persons aggrieved had standing to institute expungement applications and that expression was not interpreted by the courts in a narrow or technical sense, given the public interest in the purity of the register.
There is a reference to a number of cases which are now familiar. Then his Honour dealt with the question which I began discussing in relation to the public law component of “person aggrieved”, concerning the relevant interest that needs to be effected, not being a legal, equitable or proprietary interest, but rather interest which is understood in the public law sense. At page 132, at the bottom of the page, his Honour refers to, in the last sentence of the last full paragraph:
The result is that standing here does not now require special damage in the traditional sense, and that whilst a mere belief or concern is not sufficient, a “special interest” over and above that enjoyed by the public will suffice . . .
The result is that there is a measure of broad agreement as to locus standi both for legal and equitable remedies in public law and in that situation it would be a strange result if the ADJR Act posited, by use of the concept of grievance, some narrower criterion.
We would respectfully adopt that. His Honour then, on page 133, dealt with five factors that, on the construction of the particular Act in question, were sufficient to give the Australian Institute of Marine and Power Engineers standing, which was a union, in relation to the issuing of a manning certificate. The third one emphasised by his Honour was that the respondent - - -
GUMMOW J: The union was worried that the engagement of their members could be reduced if this particular procedure under the tax legislation went ahead.
MR BURLEY: Yes, because it gave an advantage to the ship owners if they reduced the number of sailors from six to five or so. Then, about halfway down page 133, it says:
Thirdly, the respondent contends that the crew level fixed for the BP Endeavour Replacement is sufficient to ensure safe operation of the ship. This the applicant disputes, and it would be quite inappropriate to enter upon the merits of that debate. Nevertheless, the applicant’s complaint is not said to be made frivolously and it plainly has a real interest in the matter.
That, I think, might pick up on an observation that Justice Gummow made a short while ago as to the circularity of dealing with the grounds raised for rectification as a basis for considering the standing which is, in our submission, a threshold question to be decided not narrowly, but having regard to the interests which are said to be affected.
That would then bring us to more modern treatment or treatment since the 1990s in the Kraft v Gaines decision of the Full Court which is referred to in (1996) 65 FCR. This was an odd case on its facts because in that case Kraft was seeking the rectification of the register in respect of trademarks for the words “Gaines Rally”, “Gaines Burgers” in relation to dog food. Kraft had itself applied for a trademark “Gaines” but there was no evidence that it had used or intended to use that trademark nor, as his Honour Justice Sackville notes in his decision, was there any evidence that Kraft was engaged in the same trade.
Their Honours deal with meaning of “person aggrieved” at page 111 and following and recite some of the history to which I have referred. At page 112, at the foot of the page, refer to the decision of Justice McLelland in Ritz Hotel v Charles of the Ritz, which features somewhat in the decision of the Full Court in the present case. In that passage at the bottom of the page, and this will save me going to that case, his Honour quotes Justice McLelland:
“the expression would embrace any person having a real interest in having the Register rectified, or the trademark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include –
and we emphasise “include” here –
any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical - - -
GUMMOW J: Where did that come from? I know it came from the pen of Justice McLelland.
MR BURLEY: Yes.
GUMMOW J: From what written authority did it come?
MR BURLEY: It appears to be something that his Honour devised as a summary of some of the authorities to which I have referred your Honours. I can take your Honour to that to show the passage, but that is not a quote from any of the cases. It is a summary.
GUMMOW J: What did he decide in the end?
MR BURLEY: Standing was conferred on the applicants for removal and his Honour took a view which, in our respectful submission - - -
GUMMOW J: They were two hotel chains, were they not?
MR BURLEY: That is right. The famously long-running trademark case that we do not see the likes of any more. So the words came following “include”:
any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved –
Justice Sackville then referred to some examples given on page 113 between B and D and made the observation in the paragraph which begins E:
The fact that an applicant who demonstrates a particular interest in a trade mark is a person aggrieved does not necessarily mean that a person who cannot show the same interest is not aggrieved. But the statutory requirement, which has been deliberately retained by Parliament in both the TM Act and its successor, must have some meaning. Clearly, a person who is a mere intermeddler or officious interferer is not a person aggrieved. The applicant must demonstrate, to use the language of McLelland J, at least a reasonable possibility of being “appreciably disadvantaged in a legal or practical sense” by the trade mark remaining on the Register.
In our respectful submission, that is a limiting gloss on the approach taken to “person aggrieved” reflected in the earlier authorities and one which finds its way in a slightly different form to the Full Court decision in these proceedings.
FRENCH CJ: I suppose it might depend on how you read “appreciably disadvantaged in a practical sense”. That can be read in a variety of ways.
MR BURLEY: Yes, and I suppose the difficulty with those words is that some have taken it to mean a firmer and more concrete harm than others. That brings me to the decision of the Full Court in the present proceedings.
GUMMOW J: This registration, what was it for, in the Kraft Case?
MR BURLEY: Dog food, I think, your Honour. The summary of the registrations appears at page 108 of the report under the heading “The course of the events”, Gaines Rally in respect of animal foods and Gaines-Burgers in respect of dog food.
GUMMOW J: Kraft wanted to register Gaines for pet food.
MR BURLEY: Yes.
GUMMOW J: Why did they not have standing to get rid of this non-used mark that seemed to be in their path?
MR BURLEY: Well, in our submission, they ought to have.
FRENCH CJ: He applied the test at 116, line B, I think:
In my view, the mere fact that a person has filed an application for registration of a trade mark, without more, is insufficient to establish that the person is appreciably disadvantaged, in a legal or practical sense –
So it is a normative – “appreciably disadvantaged in a practical sense” might be having to skirt around the shoals of somebody else’s registration and areas of uncertainty that it generates, I suppose.
GUMMOW J: We are talking about two large corporations.
MR BURLEY: Yes.
GUMMOW J: They do not do these sort of activities for recreational interests.
MR BURLEY: No, in our respectful submission. I think that that represents a narrow application of the test, at the very least. It seems to have been the funnel through which the subsequent question of “person aggrieved” was considered, at least in the present case. Your Honours, there was also the decision of the Full Court in the Campomar Case, which I would not propose to take your Honours to at present. It is another Full Court rendition of the “person aggrieved” test. We have made reference to it in our written submissions. If I could now turn to volume 2 of the appeal book where the decision of the Full Court is placed commencing at page 755. Your Honours will have seen that Justices Emmett and Besanko agreed with the reasons published by Justice Perram which, insofar as they concerned the question of standing, commenced at page 767.
GUMMOW J: I can see that their Honours were faced with Kraft, I suppose.
MR BURLEY: Yes. But in our submission - - -
GUMMOW J: Which I am sure your opponent made much of.
MR BURLEY: Yes, and the problem is, even with Kraft, we would submit that the approach taken by Justice Perram was one which was narrower yet, as might become apparent from the opening paragraphs at the reasons set out at page 767.
GUMMOW J: Paragraph?
MR BURLEY: Paragraph 23. The first of the errors, we would respectfully submit, that arises from the decision is for his Honour to say in the fourth sentence of paragraph 23 that:
The general test laid down by McLelland J . . . that an applicant is aggrieved if there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense by the register remaining unrectified -
The problem with that is, of course, that Justice McLelland did not say that that was the test. His Honour said that that was an inclusive aspect of the test. But then once one looks into the reasons a little further, one can see that his Honour took the practical component of it, or legal or practical sense, to a degree which was not countenance or contemplated in the earlier authorities. That is apparent from paragraph 24 and following, where Justice Perram said:
When that test –
That is, the legal or practical sense test –
is applied to a situation where two marks are said to be deceptively similar it is unlikely to be satisfied unless the moving party establishes that it has some reputation in respect of goods that would lead to consumers being misled or deceived.
GUMMOW J: Insofar as that is based on Justice McLelland, one goes to The Ritz 15 NSWLR 158, which I know you do not want to go to, but you go to it at page 193, about eight lines from the bottom:
I would merely add that in my view there is no legitimate basis for introducing into the concept . . . any restriction based on the conditions required to be fulfilled by an applicant for registration of a trade mark. I reject the defendants’ submission that “the plaintiff must show a trade rivalry by demonstrating that it is either in trade or has a fixed and present intention to enter trade -
I am not sure justice has been done to what the judge was saying in The Ritz.
MR BURLEY: Yes indeed, your Honour, and - - -
FRENCH CJ: Did Health World tie its submission – I am just looking at 35 – the submission from Health World seems to be characterised as a submission that enhanced standing in a sense of being disadvantaged in a legal or practical sense because of deceptive similarity. Is that the way that it approached it?
MR BURLEY: No, your Honour, and the problem is that his Honour – if I could look at the structure of the way that his Honour decided this – he starts on the assumption that the only criticism of the decision below is that the primary judge found there was not deceptive similarity between the two marks and then dealt with that proposition and said - in fact, narrowed it further and said it is not enough that there be no deceptive similarity. What there would have to be is deceptive similarity and reputational impact, which reads on section 60, and I will come to that in a moment.
Then his Honour dealt with five other arguments that were raised by the appellant as to why there would be standing, and the one that your Honour read out a moment ago, or referred to, is the third of the five to which reference was made.
FRENCH CJ: This is in the Full Court?
MR BURLEY: This is in the Full Court, yes. So if I could revert to the first of the approaches, and the one that really controlled the Full Court’s reasons was that which appears in paragraphs 24 through to 26 of the reasons where his Honour said that:
When that test is applied to a situation where two marks are said to be deceptively similar it is unlikely to be satisfied unless the moving party establishes that it has some reputation in respect of goods that would lead to consumers being misled or deceived. That was the situation in Campomar itself. There Nike established that its reputation in the sporting goods field was such that consumers who saw Campomar’s “Nike” cosmetic range would be likely to think that it had Nike’s approval. Its standing as an aggrieved person emerged not solely from the fact that the two marks were deceptively similar but from that potential reputational interference.
Well, of course, the Nike Case was quite a different factual situation where Nike International, the American company, did not engage in trade for perfumes and so it had to overcome some of the earlier authorities that you needed to be in the same trade in respect of the same goods. The answer to that, which was accepted by the Full Court in conferring standard on Nike, was that the reputation generated by Nike in respect of its well-known sporting goods extended such that those engaged in purchasing perfume might be misled by that and accordingly - - -
CRENNAN J: It was as though they were in a position where they could have obtained a defensive registration anyway.
MR BURLEY: Yes, your Honour, although I am not sure if that was advanced on the “person aggrieved” point. That was not the situation here, plainly enough, and it seems to have affected the way his Honour reasoned. The second point referred to in paragraph 25 was:
Secondly, while it is true that s 60(a) is enlivened when two marks are deceptively similar by reason of the reputation of one of the marks, it is not true that the person who seeks to oppose the registration of the mark needs to be the owner of the mark with the reputation.
Now, pausing there, that is unexceptionable. What his Honour then says is:
Put another way, although s 60 is concerned with reputation it is not necessarily concerned with the applicant’s reputation.
Thirdly, so viewed, what is necessary to establish standing to expunge a mark in reliance on s 60 (through s 88(2)(a)) is not the same as what is required by s 60 itself.
His Honour goes on to say something more is required –
The difference between s 60 itself and s 60 as picked up by s 88(2)(a) is the requirement imposed by s 88(1) that the applicant have an interest in the reputation of the mark such that the misleading or deceptive nature of the impugned mark matters in the sense described by McLelland J in Ritz.
That is, in a legal or practical sense. So what his Honour is doing is he is saying, well, because a ground for revocation brought here is under section 60, in order to have standing you have to not only have deceptive similarity, the applicant itself has to have the reputation because otherwise the applicant itself does not have standing, and that is where, in our respectful submission, the circularity comes around.
CRENNAN J: I was going to say, that is really an observation about the merits, one would think.
MR BURLEY: Yes. It does not really deal with or grapple with, in our respectful submission, the essential question of what is the interest of the applicant in the more general sense, the threshold question of what interest is required having regard to the nature and scope of the Act.
So, at paragraph 31 his Honour concludes in relation to this point:
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.
That is, in our submission, the gravamen of the Full Court’s reasons as far as standing is concerned because then his Honour - - -
GUMMOW J: There is a problem with this reasoning. It seems to take it that Justice McLelland was fixing an outer limit.
MR BURLEY: Yes.
GUMMOW J: That is not what he was doing. He said at page 193 of (1988) 15 NSWLR:
Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed –
and he refers to the Brewery Case and so on, then he says:
It is sufficient for present purposes to hold –
He is saying it is sufficient but he is not saying it is necessary. He is not setting an outer limit. He is saying, “Well, I can get rid of this debate and get on to something else” which he does. It seems to have been latched upon and then misunderstood.
FRENCH CJ: Just identify the precise propositions to which the Full Court applies the appreciable disadvantage test because some of them – they go away because the premise is disposed of or that the mere fact that on the final argument, for example, the mere fact that Shin-Sun brings an action by way of defence does not get you there, so it is there on the – the test is applied directly in relation to the third argument which we discussed earlier. Where else is it directly applied?
MR BURLEY: In paragraph 31 and I think your Honour has dealt with that.
FRENCH CJ: Yes.
MR BURLEY: Then his Honour goes on in the second sentence in paragraph 31 which begins with “First”. This is an outright rejection of - - -
FRENCH CJ: If you are not a “common informer” but that does not get you to being a person aggrieved.
MR BURLEY: Yes, and we would say that was an error, also, because that appears to be applying a higher threshold.
GUMMOW J: What has Occam’s razor to do with it?
MR BURLEY: I am sorry, your Honour?
GUMMOW J: I am reading the last sentence in paragraph 30. How are we helped by Occam’s razor?
MR BURLEY: Yes. In paragraph 30 his Honour is dealing with the question of reputational impact and the submissions that affected that and appears to conclude that the trial judge, having referred to reputation – and we must say that it does not appear to us that the trial judge referred to reputation a great deal at all – could not have been for no reason and that accordingly it was not a frolic.
FRENCH CJ: A frolic is a more complicated explanation than the other one. That is how Occam’s razor works, I think.
MR BURLEY: Yes. I hope in answering that question Justice Gummow was not asking me to explain Occam’s razor but rather the reasoning of it. In paragraph 32 his Honour deals with what seems to be two things which are drawn together. One is the proposition that an applicant for expungement who deals with the same class of goods is sufficient to be a person aggrieved and the second which he addresses in 33 and 34 is the question of whether or not the applicant for revocation has used the same mark. Both he seems to deal with in paragraph 34 by saying:
In this case, as Shin-Sun points out, the primary judge found that the evidence before him was inconsistent with any intention of Health World to use the HEALTHPLUS mark other than as part of its existing INNER HEALTH PLUS mark. That finding is sufficient to rebut the –
proposition stated above that the applicant was a party dealing in the same trade and the same class of goods.
In our submission, they are separate propositions, and the answer proposed by his Honour does not in any event answer the concern raised that, as a threshold question, a party who has a non-frivolous argument that the two marks are deceptively similar would be sufficient to give rise for the Court to entertain an application for removal of the register by itself.
FRENCH CJ: Now, this is applying a different analysis than that which you apply with the “appreciably disadvantaged” test.
MR BURLEY: Yes.
FRENCH CJ: This is just going off to that line of authority which talks about a prima facie rule.
MR BURLEY: Yes, and Justice McLelland, in dealing with the test in the Ritz Case, did say that having regard to earlier authority he found it difficult to reconcile all of it and proposed a general statement without nailing it down. In that respect, the isolated portions of the test which concern whether somebody is being infringed, that automatically giving them standing and so forth, have different roles to play. Then the third proposition on paragraph 35 appears to reject the possibility of deceptive similarity as inadequate simply because there was an absence of goodwill, as his Honour says in paragraph 36:
Health World’s argument impermissibly ignores the need to show disadvantage in a legal or practical sense.
I think I am repeating myself, your Honour, in relation to that.
FRENCH CJ: Yes.
MR BURLEY: We have in our written submissions addressed other criticisms to the judgment, but they are the primary ones to which we would refer and the authorities upon which we would rely.
HEYDON J: You run an argument which is based on Lord Pearce’s speech in the Daiquiri Rum Case that if you have two people trading in the same type of goods, one has a trademark registration to which that person is not entitled, the other has standing to get it taken away, in effect, to establish satisfactory competitive conditions, is that line of reasoning dealt with in Justice Perram’s judgment?
MR BURLEY: We do not understand that to be, no.
HEYDON J: You were not appearing then, so it is hard to say, I suppose.
MR BURLEY: I am sorry, your Honour.
HEYDON J: You were not appearing before the Full Court, therefore it is impossible for you to say whether the argument, based on Lord Pearce’s speech, was actually put.
MR BURLEY: I would need to check the submissions, your Honour. If your Honour would give me a moment. I understand, at least at a superficial level, we referred to the Daiquiri Case and would assume that that was the passage to which reference was made, but we can make some investigations about that. May it please the Court.
FRENCH CJ: Thank you, Mr Burley. Yes, Ms Baird.
MS BAIRD: Your Honours, in the Union Label Case, The Attorney-General for New South Wales v The Brewery Employees’ Union of New South Wales [1908] HCA 94; (1908) 6 CLR 469, his Honour Chief Justice Griffith stated at 497:
Whether a person is aggrieved or not by the act of another depends upon the nature of the act complained of and the manner in which it will affect the complainant.
The act complained of in this case is the continued registration of the respondent’s trademark “Health Plus”.
GUMMOW J: Wait a minute, you have to read the whole of Sir Samuel Griffith, have you not?
MS BAIRD: Your Honour, I was going to the Union Label Case in greater detail further on. What I wish to draw the Court’s attention to at this time is the proposition that his Honour put as a general statement that whether or not a person is aggrieved depends on two things, but first the nature of the Act complained of in the present case, the registration of the trademark - - -
GUMMOW J: No, that is the second point.
MS BAIRD: - - - and the second point, the manner in which it will affect the complainant.
GUMMOW J: The immediately preceding sentence may have an error:
The word “aggrieved” was not treated as having a special meaning in that Statute.
That is true, but the meaning it does have has to be gleaned by regard to the subject, scope and purpose of the statute. It is not at large.
MS BAIRD: No, we are certainly not saying it is at large. We are saying it is confined - - -
GUMMOW J: He seems to be saying it is, you see.
MS BAIRD: I am sorry, your Honour?
GUMMOW J: Sir Samuel seems to be saying it is.
MS BAIRD: With respect, your Honour, I think that what his Honour is saying there is it does not have, as his immediately preceding sentence says, a special meaning, but what it does have is context and that when you are considering whether a person is aggrieved, you consider the context in which the person comes to the court.
GUMMOW J: No, you consider the statute under which it comes to the court.
MS BAIRD: Yes, your Honour, and then you consider the context in which the person comes. The statute tells you what is the subject matter and the purpose of having the test “person aggrieved” and then, secondly, does this person come within the statute and within the complaint. So that the manner in which the Act complained of affects the complainant will, in some cases, bring a person to have standing and in other cases, of course, will not. The question then is the scope, purpose and policy of the Act, and also then - - -
CRENNAN J: One matter Mr Burley points to is an inability to sue for infringement.
MS BAIRD: Yes, your Honour, that is a matter that was raised for the first time this afternoon and not in any previous - - -
GUMMOW J: It does not matter. It is a point of law.
MS BAIRD: It does not matter, but what it does say is that, with respect, as a last ditch.
GUMMOW J: It may be the last ditch, but it might be a good ditch.
MS BAIRD: It does not, however, truly addressed, have any basis in fact in this case because, yes, you cannot sue with your trademark another person who has their trademark, but absent the “Health Plus” trademark, in the present case this appellant cannot sue either Shin-Sun or Nature’s Hive who was using and is using the trademark “Health Plus” because the courts have found first the marks are not deceptively similar. That is not being appealed either to the Full Court or further to here. So that the marks are not deceptively similar. They have been found that by Justice Cooper, they were found so by Justice Jacobson, Justice Cooper in the appeal from the opposition when the “Health Plus” mark was going through the opposition and appeal stages. So the starting point is that, in fact, this mark “Health Plus” is not deceptively similar - - -
GUMMOW J: It cannot be the starting point without trying a case.
MS BAIRD: On the question of whether the applicant can sue for infringement, in my respectful submission, it is relevant that the marks are not deceptively similar. It is difficult to see how you can sue under the Trade Marks Act for a mark that is not deceptively similar when section 120 itself requires, as one of the first conditions – section 121, the person infringes a registered trademark if a person uses as a trademark a sign that is substantially identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered.
Of course, that is not the case for section 120(3) when we are dealing with famous marks, but we are not in the present case concerned with famous marks. I withdraw that, in fact we still have the test of substantial identical deceptive similarity. What we do not have is the question of similar goods or goods of the same description.
Your Honours, the trademark “Health Plus” is not itself improper, by which I mean it is not unlike in re Powell’s Case descriptive of the name of the good itself. In re Powell’s Case the trademark was “Yorkshire Relish”. That was the very article in which Powell traded. Whilst the applicants for removal traded in London Relish, a different type of sauce or relish, it was possible, and on the evidence possible, that were they free to do so – in other words, was the monopoly of the name of the good removed, then they might use that name, might actually make those goods. For example, they might trade in fruit, and absent a trademark “bananas” they might wish to call their bananas “bananas”.
So too this case is different from the Daiquiri Case. In Daiquiri the mark sought to be registered was “Daiquiri Rum”, in the face of an established meaning for “daiquiri” as a daiquiri cocktail. Lord Wilberforce, indeed I think all of their Lordships, identified that this prior meaning of “daiquiri” as meaning daiquiri cocktails would be likely to hamper or impede the applicants for removal, because whilst they might not wish to call their product Daiquiri Rum in the face of a registration for Daiquiri Rum they might find that purchasers would buy Daiquiri Rum for use in daiquiri cocktails and not their rum for use in daiquiri cocktails, and at the time I think daiquiri cocktails were a significant enough market for that to be of concern.
So if I could take you back to the present case, the mark here, Health Plus, is not the name of a good, it is not descriptive, it is not geographic. It is also not – and found to be not – deceptively similar. It is important to bear in mind, in our submission, that as at the commencement date of the first and of the second proceeding in February 2006 and then later in July 2006, and in the face of the presence of the Health Plus mark on the register, the Inner Health Plus trademark, the mark of the appellants, had been registered without limitation since 17 February 2005, so at least a year earlier, effective from 12 September 2001.
I emphasise it is registered without any limitations. That in the process of examination back in 2003 an examiner had taken a view that the marks might be deceptively similar and sought evidence of use was a matter of history only. It did not affect the fact of registration or any of the rights that the trademark owner has. I note that the notation on the database that my learned friend took your Honours to which identified section 44(4) as having been applied is not under the 1995 Act an endorsement or any kind of limitation on the rights of the registered owner.
GUMMOW J: Does the 1995 Act make provision for disclaimers?
MS BAIRD: Not in the same way.
GUMMOW J: They have gone, have they?
CRENNAN J: They are just voluntary, are they not?
MS BAIRD: Yes, they are voluntary, your Honour, and there was a system before the 1995 Act of specific endorsements. There can be limitations, for example, geographic limitations and those can be – if your Honour might pardon me I will find the precise section. Although, under section 33(2) of the Act:
The Registrar may accept the application subject to conditions or limitations –
and in section 6, your Honours, “limitations” is defined to mean:
limitations of the exclusive right to use a trade mark given by the registration of the trade mark, including limitations of that right as to:
(a) mode of use; or
(b) use within a territorial area within Australia; or
(c) use in relation to goods or services to be exported.
There are occasions where trademarks are registered and their only use is as an export trademark. So also, your Honours, in section 74 there is the regime for voluntary disclaimers, to which I adverted.
GUMMOW J: But not required.
MS BAIRD: Your Honours, noting the actual effect of section 44(4) in the present case if the registrar in either case is satisfied that the applicant – and I summarise – has continuously used the applicant’s trademark for a period, beginning before the priority date that is beginning the present case before May 2001 and ending on the priority date of the applicant’s trademark, that is that the use has been continuous, then the registrar may not reject the application. In other words the registrar must accept it and must proceed to registration. In that circumstance what the notation on the database shows is the thinking of the examiner and the process whereby the grounds for rejection – GFR – namely that the marks were deceptively similar in that examiner’s view, have been overcome.
The concurrent registration thus permits – absent – permits the registered owner to have all rights against the world, save as against the earlier registered mark. So thus the first matter to bear in mind, in our respectful submission, is that the Inner Health Plus mark is registered and the appellant has used it, indeed, unimpeded in its actual activities since at least May 2000. Thus, as at February 2006 it had effectively six years of unimpeded use. It had earned - my friend’s written submissions identifies over $30 million revenue in that unimpeded use.
It had also used this mark only for the one product or one type of product, a probiotic product, in two forms, in a capsule form on its own and then in a dairy-free formulation also in capsule. That was the range of products. It had and has another product, Inner Health, that has been used since 1991 and it had obtained a registration for the trademark “Inner Health”.
FRENCH CJ: That was the powder, was it not?
MS BAIRD: That was the powder form. The evidence, both before Justice Cooper and before Justice Jacobson, was to the same effect, as is seen in their judgments, that Inner Health Plus was a new and improved version of the Inner Health powder in a more convenient form with greater efficacy and such like.
CRENNAN J: Does your removal application ask in the alternative for amendment of the specification so as to narrow it down? That is an alternative to complete removal.
MS BAIRD: We did not seek complete removal, at no stage.
CRENNAN J: You are seeking a narrowing of the specifications?
MS BAIRD: We were, in defence and as the third proceeding, seeking a narrowing of the registration for Inner Health Plus defensively so as to leave the area in which Health World was actually using the mark, but removing it from the area where we considered an overlap of goods in the light and in the face of Health World’s continued allegations of deceptive similarity against us and against the possibility that the court would find the marks deceptively similar, would find that by prior use Inner Health Plus thereby pre-empted the Health Plus registration because the use was a year and a month.
CRENNAN J: March 2000, I think, 14 months.
MS BAIRD: Yes. It is a small point but it appears that there was marketing from March but the actual use of the product started in May 2000. So, in any effect, there is 12 to 14 months of prior use. So that removal application at all times, third in time, was directed to the defence that in the event the court found the marks deceptively similar, reducing the registration down to the goods for which that prior use was established, would have the consequence that, on any case of infringement – and the appellants did not admit that they would sue – did not say they would not sue – that the respondent in this proceeding would be then within section 122, namely, goods of the same description, and have available to them in defence that the manner of use was such that there was not any likelihood of deception or confusion. Your Honour, the terms on which the third application, the third proceedings, sought removal are at volume 1 of the appeal books at page 75. I can read it out to your Honour. Insofar as:
directing the Registrar of Trade Marks to remove Trade Mark 889038 insofar as it is registered in respect of goods other than:
“Probiotic products containing AB bacteria in capsule form, and probiotic products containing AB bacteria and ‘probioplex’ in capsule form in class 5.”
Your Honours, that is not goods in which the respondent trades so that the area of overlap would be omitted. The trademarks were held not to be deceptively similar. Justice Cooper had held so in 2005 and in so doing his Honour determined the matter on the balance of probabilities. His Honour looked at the Inner Health Plus trademark, as it was used, and your Honours, may I hand up a copy of his Honour Justice Cooper’s decision? The conclusion his Honour reached is at paragraph [34] at page 503 of the report at [2005] FCA 5; 64 IPR 495:
The mark INNER HEALTH PLUS as it appeared on and in context in the labels in May 2001 conveyed two discrete ideas.
That was the particular form of label. It:
conveyed the message of enhanced or more efficacious operation of the product to bring about “inner health”.
[35] Although in an aural sense there may be no [discernable] break between the words “inner health” and “plus”, the use of the composite phrase “inner health”, with the stress when spoken being normally on the first word of the phrase, to convey a complete idea of internal health or well being, maintains the severance of ideas which is clear in the visual presentation of the words on the label. The “plus” in the aural sense, as with the visual sense, presents as a descriptor or qualifier of the words “inner health”.
His Honour then turns to the decision-making process of the appellant at paragraph [36].
GUMMOW J: Is his Honour putting himself in the shoes of consumers?
MS BAIRD: I honestly now, your Honour, with the benefit of years could not say whether his Honour was. What his Honour was doing was - - -
FRENCH CJ: He talked about what a - - -
GUMMOW J: .....the authorities require him to do that.
MS BAIRD: Yes.
FRENCH CJ: That is at [37] “of impression conveys to the ordinary person”. That is about as close as you get, perhaps.
MS BAIRD: Yes, “sense of additional or improved health and well being.” His Honour had earlier looked at the authorities commencing at page 498 at paragraph [15].
GUMMOW J: Is this one of the issues that the Full Court did not get to?
MS BAIRD: No, your Honour, it was an issue which was not appealed from in the first decision but here we are considering Justice Cooper’s decision which is - - -
GUMMOW J: I realise that, yes.
MS BAIRD: The matter was reagitated before Justice Jacobson at first instance on the rectification suit and found again adversely to the appellant and on the same quality of evidence your Honour asked whether there was any suggestion of any kind of actual deception or confusion. There was none. There was no evidence of anything being raised. The matter was argued, as is apparent from Justice Jacobson’s quite lengthy reasoning on deceptive similarity on the comparison for marks.
So that the meaning which Justice Cooper finds that the ordinary person would find of the marks is first looking at Inner Health Plus, and if we were to look at the infringement, that is what we would be looking at, the registered trade mark Inner Health Plus first, and that has an Inner Health Plus, an improved version of the Inner Health. That conclusion is at [35] through to [36]. Turning then to Health Plus identifying aurally, “totally dissimilar”, “contrived single word”. At the middle of the paragraph:
The word as a matter of impression conveys to the ordinary person a sense of additional or improved health and well being.
There are some visual stylistic differences. Then his Honour finds at paragraph [38]:
the message conveyed by the respondent’s mark –
that is Health Plus –
is clearly different to that conveyed by the applicant’s mark, the use of the respondent’s mark in respect of like products . . . would not in my view be likely to cause confusion or deceive as to the source of the product . . . The use of the term “plus” as part of a single word does not, and would not, convey to any ordinary customer or potential customer of the product the idea of potency or enhanced effectiveness of the product generally or in comparison with other like products which is the clear message conveyed by the applicant’s mark in respect of the “Inner Health Plus” product.
His Honour concludes at paragraph [39]:
that the aural and visual effects of the two marks when compared by reference to the effect and impression each would produce - - -
GUMMOW J: It is not a passing-off case, though.
MS BAIRD: No, your Honour.
GUMMOW J: Cause to wonder whether is enough.
MS BAIRD: Yes, your Honour. His Honour has first - - -
GUMMOW J: He talks about confusion or deception which I know are the words of the statute.
MS BAIRD: His Honour was looking first at Cooper Engineering, which he refers to in paragraph [15] and, of course, Justice Windeyer in Shell v Esso, the imperfect recollection test. His Honour then turns to section 60 in paragraph [40]. He is not satisfied that there is a real risk of confusion in the minds of the public. His Honour then turned to section 42(b), which is the section of the Act through which the Trade Practices Act can be enlivened and his Honour finds that because of that that there was no likelihood of deception or confusion; noting in that case that, as at 2003, the respondent had not used Health Plus. It had applied for registration but not used it.
GUMMOW J: There are Federal Court decisions, are there, saying that in 42(b), as it now is, the old section 28(d) , the word “unlawful” brings in a statute like the Trade Practices Act, Part 5?
MS BAIRD: Yes, your Honour. One of the decisions is I think the Advantage Rent-A-Car decision.
GUMMOW J: Yes. His Honour refers to that in paragraph [44].
MS BAIRD: Yes. Or that, contrary to law, would include other statutes, including the Trade Practices Act, including the Copyright Act and generally other Acts that may be relevant in particular circumstances.
CRENNAN J: When his Honour was making the comparison, was the Inner Health Plus mark treated as a common law mark because it was just an application at the time?
MS BAIRD: The Inner Health Plus mark that the appellants relied on was their actual use for the 14 months.
CRENNAN J: On the labels?
MS BAIRD: On the label and in marketing and general promotion. That label use was “Inner Health” and then “Plus” on another line. His Honour looked at the matter both aurally as Inner Health Plus and visually as at the label and his Honour concluded, on our reading of the judgment, that on both ways, whether it was recognised aurally, which is a way you can use a trademark under the Act, or visually, that there was no deceptive similarity and moving then to complete his task for section 60, that there was no likelihood of confusion or deception, then moving to the section 52 case which was a hypothetical case at that stage, that there was no hypothetical likelihood of misleading deception or confusion at that stage.
His Honour found on the balance of probabilities, but the test that had been raised in a number of cases, including in the Full Court in a decision called Lomas, was that it was only if the mark was clearly not registrable that it should be rejected. So, whilst his Honour found on the balance of probabilities, which is the test for rectification, his Honour did not need to go so far.
CRENNAN J: On one view, what is thought to be agitated by the appellant as a “person aggrieved”? Is the issue of the deceptive similarity of the two marks simpliciter which, on one view, is a different exercise from what Justice Cooper was - - -
MS BAIRD: It is not a matter that is open for this appellant to argue in this Court having not appealed from Justice Jacobson’s decision that the marks were not deceptively similar.
CRENNAN J: I was putting to you that it is a different argument, that the argument here, as I understand it, to be advanced on the proceedings sought to be pursued is an argument that the two marks simpliciter are deceptively similar, which is a different argument, it seems, from the argument that was put to Justice Cooper.
MS BAIRD: With respect, your Honour, I do not know that in quality it is or should be a different argument. Deceptive similarity under the Trade Marks Act, section 10, the test is:
taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
That brings in with it the question of a likelihood of confusion which, when one looks at section 44 - - -
GUMMOW J: You are looking at notional use, are you not, across a whole range of very sought registration?
MS BAIRD: Of the registration, yes.
GUMMOW J: It is a rather special inquiry, I think, is what Justice Crennan is putting to you.
MS BAIRD: Your Honours, in the present case it cannot, in my respectful submission, properly be suggested that the marks are likely to deceive or cause confusion or are deceptively similar. In the face of the findings in the trial judge in this matter, Justice Jacobson, that the marks were not deceptively similar - - -
GUMMOW J: I realise that, but that is post hoc reasoning. The question is whether right at the beginning they were a “person aggrieved”.
MS BAIRD: Yes, your Honours.
GUMMOW J: You want to say, no, they were not because they have lost this point.
MS BAIRD: I am sorry, your Honour?
GUMMOW J: You want to say, no, they were not because they argued this other point and lost.
MS BAIRD: Yes, and they were not because - - -
GUMMOW J: That is not how the Act works.
MS BAIRD: They were not because their claim brought to this Court, brought to the first court, was that the marks were deceptively similar, that they had a reputation of their mark and this mark was in the way.
CRENNAN J: Well, they had a reputation in a composite mark was how they were putting it.
MS BAIRD: They had a reputation in their mark “Inner Health Plus”. The signification of Health Plus within that mark is, on the face of the mark, one that is not deceptively similar because of the different meanings that are conveyed. Those different meanings are conveyed by the words themselves, “Inner Health Plus” and “Health Plus”. That is the point which – at that point, the reasons of Justice Cooper, I took your Honours to. Indeed, they had obtained their registration and these different ideas of their marks and there was and is no intersection of reputations or collision of interest because of their ability to co-exist as marks that are registered and also to co-exist in the market with these different ideas and their marks.
The appellant suggests – and I think, your Honour Justice Crennan, this is the point you were raising – that today the appellant suggests it might be limited in its rights because persons might be confused between Health Plus and Inner Health Plus established in the market. Again, that looks at what is Inner Health Plus established in the market and Inner Health Plus established in the market, so Justice Cooper found and so Justice Jacobson at first instance in this Court found, which was not appealed from, was as of a separate idea, separate product, separate names – separate names and separate ideas conveyed for two different marks.
That one mark is contained in another does not have any trademark significance where those marks have been found to be deceptively similar. Secondly, where this is the case the claim to passing off and to misleading and deceptive conduct under section 52 was based on the same material as grounded their argument for deceptive similarity and was rejected by the trial judge, from which claims, none of those claims were, is there any appeal. The only appeal that the appellant brought in both the first and second proceeding is to the same end, which is that it is a person aggrieved and that the court erred in finding it was not a person aggrieved because in the first instance it was the marks were not deceptively similar, there was no reputational interference and on appeal for the additional five reasons that the appellants raised in that court.
It is also important, in our submission, to bear in mind that the appellant has no intention to use the trademark “Health Plus”, save as part of its existing Inner Health Plus mark, and that that finding of the trial judge was also a finding from which there was no appeal, that his use was inconsistent with any desire to use the trademark “Health Plus”.
Now, the rectification proceedings, as at February 2006, were brought in the circumstances where Nature’s Hive, a company that was run by the same general manager, the daughter of the shareholders of the respondent, had been using and continues to use the mark “Health Plus” for a range of natural health supplements and vitamins and dietary supplements. Nature’s Hive have been using the “Health Plus” mark since August 2004. That finding is referred to by the primary judge in the appeal book, volume 2 at page 709, paragraph 78. It is also referred to later in relation to the use of Nature’s Hive at paragraph 102. At appeal book volume 2, page 712, the primary judge noted that:
Sales of Inner Health Plus had increased dramatically by 2004 –
This is the appellant’s mark –
However, the essential message and reputation of Inner Health Plus remained constant; it was part of the Inner Health range and offered greater strength and convenience for beneficial intestinal well-being.
Your Honours, further reference to when Shin-Sun and Nature’s Hive – and there is debate, which is subject to a notice of contention, referring back to the Full Court as to whether Nature’s Hive use was use by Shin-Sun. The launch was in August 2004. It is referred to by the primary judge in paragraph 25 at appeal book volume 2, page 697.
Looking then at the territory of any inconvenience, absent the registration of Health Plus as an honest and bona fide trader, then Health World, or the appellant, could not legitimately use the mark “Health Plus” because it now faces and faced as at February 2006 the prior use by Nature’s Hive. So Nature’s Hive is a first user, Nature’s Hive has some reputation as to ground section 52, arguably a passing off case and thus it would be to misappropriate the goodwill generated by Nature’s Hive in the same trade in the same class of goods.
FRENCH CJ: In an objective sense, and forgive me for the metaphor, but these are two ships passing in the night, incontrovertible, no ripples between them, to borrow Justice Brennan’s metaphor, and Health World’s anxieties about uncertainty are not sufficient to withstand it.
MS BAIRD: Yes, your Honour. Indeed, Health World’s anxieties, when properly analysed, are not shown to be any real anxieties at all. What the appellant appears to say is that it must suffice not only for general test as to standing, but for standing in this case, that it is sufficient that it is in the same trade, simpliciter. That may be so in relation to some trademarks, for example, the trademark in Powell which was the very name of the goods. If you are in the same trade and the very name of the goods is something which has been appropriated to an individual trader, it is an improper mark per se. In that case, and even in Powell’s Case, their Lordships did not say that being in the same trade simpliciter was sufficient. What their Lordships did say was, “and have a possibility, a reasonable possibility, of using the mark”.
In each of the cases I think my learned friend referred to there was, in addition to being in the same trade, some other quality that, added to in those particular cases, their entitlement to standing, for example, in Continental, the Smirnoff Case, the marks were, at the time of the debate before Justice Kitto, marks which the examiner had found were deceptively similar and had cited as adverse reports. In other words, there did not appear to be a way to overcome that. In addition, or indeed it was mentioned as the first of the matters identified by Justice Kitto, there was dispute between the parties and the trademark owner had shown its intention by whatever means possible as at that date of preventing the use by the subsequent user of the mark who sought to have the second mark registered.
That is not so in the present case. Any intention to prevent has been only, in this case, an intention to limit the registration as a defensive and later subsequent measure. Even the first opposition brought by the respondent was only brought after the opposition by Health World to Shin-Sun, the Health Plus application for registration, and after the appellant had appealed to Justice Cooper. In other words, the appeal to the Federal Court was already on foot before Shin-Sun filed its notice of opposition. Of course, as soon as Justice Cooper handed down his decision saying that the marks were not deceptively similar, there was no section 60 or section 42 impediment to registration, the respondent withdrew that notice of opposition, could not then proceed under any person seeking to oppose the mark. The mark went through the next week to registration.
CRENNAN J: A lot of these points suggest that you might ultimately succeed if you make good all these points, but why should they stop the appellant actually having the opportunity to run the arguments as a person aggrieved? I am not sure why they should be considered at that stage of consideration.
MS BAIRD: My learned friend has referred to the threshold question of standing and it is indeed a threshold question. However, the question of standing is not one, in our respectful submission, that should be decided in the abstract and in some cases, as the courts have identified, it therefore would be convenient to defer the question of standing until the merits of the case are considered. That was identified as an appropriate course, indeed adverted to as a course, by a case which I do not have on my list, by Chief Justice Gibbs in Davis & Anor v Commonwealth of Australia & Anor - - -
FRENCH CJ: That was the bicentennial thing, yes.
MS BAIRD: Yes. My report that I have is 58 ALR 18, and Justice Gibbs there refers to Robinson v Western Australian Museum.
FRENCH CJ: Is this a preliminary decision of some kind, because the substantive decisions are in the Commonwealth Law Reports?
MS BAIRD: Your Honour, it was a note that I had as background case when my friend raised it - - -
GUMMOW J: It was a pleading dispute.
MS BAIRD: It was a pleading point. Indeed, your Honour was thence for the defendants.
GUMMOW J: Unsuccessfully.
MS BAIRD: But, your Honour, it is referred - - -
GUMMOW J: But Robinson is a constitutional case as well, is it not?
MS BAIRD: Yes, Robinson v The Australian Museum was as well, also referred to in Onus v Alcoa of Australia Ltd [1981] HCA 50; (1981) 149 CLR 27 at 38, 39. Also, your Honours referred to in the Alphapharm decision, which is a case which my friend took your Honours, Alphapharm Pty Ltd v Smithkline Beecham (Aust) Pty Ltd & Anor [1994] FCA 996; (1994) 49 FCR 250 a Federal Court decision where his Honour Justice Davies referring in this case to the phrase “interests are affected” under the Therapeutic Goods Act, identified a question of standing at page 259D:
The question can be complex and this has led some judges to discourage parties from taking a point as to locus standi as a preliminary issue. See eg the remarks of Lord Scarman in Inland Revenue Commissioners v National Federation of Self-Employed and Small Businesses Ltd [1981] UKHL 2; [1982] AC 617 at 649.
In the same case, at 630 Lord Wilberforce pointed out that in some cases:
the question of sufficient interest can not, in such cases, be considered in the abstract, or as an isolated point: it must be taken together with the legal and factual context.
One relevant factor is the extent of the affection of the person’s interests, and his Honour then refers to Justice Brennan in McHattan and Collector of Customs and the paragraph to which my friend - - -
GUMMOW J: They are standing in public law cases.
MS BAIRD: Yes, they are. Across the pool of sundry interests.
GUMMOW J: Does your submission come to this, that it would have been possible in a Federal Court to deal with the question of “person aggrieved” as a discrete matter, but in the course of the litigation you have got caught up with all these other questions, all these other issues, they have been decided and once they have been decided, it becomes clear that from them one derives the proposition that your opponent could never have been a person aggrieved because of what we now know, having tried the whole case?
MS BAIRD: Your Honour, we say that it is both - - -
GUMMOW J: The whole dispute, I should have said.
MS BAIRD: No, your Honour, certainly that it is clear from the case that the appellant is not a person aggrieved and, looking at the beginning of the case, this was a case where it was appropriate to do as the court did and there was no suggestion by my friend, predecessor, to consider the matter separately or as a preliminary point, but - - -
GUMMOW J: But I think Mr Burley’s reply is, what were we fighting for months and years about?
MS BAIRD: That is the same as to say that a well-funded litigant must be a person aggrieved because they are well-funded and they have a belief or concern to take forward.
GUMMOW J: No, he has produced these judgments of some complexity.
MS BAIRD: Certainly, your Honour, it has, but it is nothing more, in our respectful submission, that saying that because we fought so long, we must be persons aggrieved and that is to put the cart before the horse. What we say is that when you actually look at the appellant in the circumstances in which they exist, there is no grievance. They are not, the statutory phrase, however it is construed - - -
GUMMOW J: That is not the way in which the Full Court dealt with it, is it?
MS BAIRD: The Full Court dealt with the matter by saying that we look at the question - - -
GUMMOW J: They dealt with it by looking at all these threshold decisions, like Kraft.
MS BAIRD: Yes, but that threshold question of Kraft was also the whole of the case in Kraft because there was no other case. It was brought before the court to say we are a person aggrieved and we do not need to show more. Even when invited to in Kraft, the applicant for removal said, “No, I am not showing any more”. But in this case, if you look at the matter as coming back to say that a person aggrieved must have content and meaning, then there is no content or meaning that the appellant truly can point to, except its own belief, not found to be substantiated, or except now its claim that it cannot sue the respondent, when you look fairly at the marks, it cannot sue because the marks are not deceptively similar.
If you are looking at, as indeed our submission is that you must, what is the manner in which this trademark affects this appellant, this trademark does not affect this appellant by being on the register or off the register. Off the register, the appellant cannot apply for the mark itself because of the prior use by Nature’s Hive. Off the register, it cannot either obtain its own registration – I think I have just said that – but it cannot use the mark legitimately, it cannot obtain its own registration because it is not the first user. It is not used the trademark itself and it has no intention to use the mark, save as part of another mark. It cannot prevent, even without the registration, Nature’s Hive from using the trademark “Health Plus” because the marks are not deceptively similar.
CRENNAN J: Is Nature’s Hive an authorised user of the mark?
MS BAIRD: Your Honour, that is a big question in the case. His Honour Justice Jacobson said no. We contended before his Honour that it was authorised use and raised that matter in the notices of contention before the Full Court. The Full Court did not deal with that matter, and it is a matter that will be remitted to the Full Court should your Honours find in favour of my learned friend and against me.
I should say here that the authorised user question is a different character of question than your Honours had to consider in the E & J Gallo v Lion Nathan case. In this case the use by Nature’s Hive is use by a company that was set up by the same family, the respondent Shin-Sun – it was set up as a later special purpose company, and it did not trade separately. The question was because it was not a subsidiary but rather had separate shareholdings until quite late in the piece - - -
FRENCH CJ: You had a finding against you of - - -
MS BAIRD: Yes, we certainly did, we had that finding.
FRENCH CJ: - - - deceptive and confusing, but that is not a finding which reflects on your submission any interest or impact on - - -
MS BAIRD: No, the deceptive confusion finding against us is one that because - - -
FRENCH CJ: Because of Nature’s Hive.
MS BAIRD: - - - the use has been by Nature’s Hive. The argument is, contrary to authorised user principles, that the record on the register of Shin-Sun is therefore now deceptive and confusing.....was at the beginning, and that finding is a finding that we have raised in contention, but it is not a finding relevant to any suggestion of any impact against the appellant for their trading activities, or indeed except as policing the public good for those in the market because Nature’s Hive can obtain registration as first user whether or not apart from the suggestion of authorised user.
GUMMOW J: Now, you referred to Alphapharm; that was a question of administrative review, was it not - - -
MS BAIRD: It was, your Honour, it was - - -
GUMMOW J: - - - under the Therapeutic Goods Act?
MS BAIRD: - - - interest affected by not aggrieved person, not as high as aggrieved person if there is such a separate test, and the question by reference there to Alphapharm was for the point that in some cases – and we say this is one – not taking locus standi as a preliminary issue but it might be a question that needs to be considered in the whole of the circumstances, together with the legal and factual context.
Indeed, your Honours, the question of standing must in any event be considered in a question of the legal and factual context because the question is, is this person aggrieved, bearing in mind that the policy and purpose of the Act has an interest in purity of the register and also a competing interest in the rights of traders to be registered and to maintain and use their registration to assign their trade marks to - - -
GUMMOW J: At what time does one determine the question?
MS BAIRD: Of standing?
GUMMOW J: When they file their process, I suppose.
MS BAIRD: The time is the commencement of the proceeding for rectification. So that is, in the case of the first case, in February 2006. I think it is 13 February 2006, which is August 2004 to 2006 being the amount of use. Or, in the second proceeding, which was the removal proceeding, it is then 25 July 2006.
FRENCH CJ: Is it enough that they assert a non-frivolous basis for standing as a person aggrieved related to the merits of the contentions used in support of the rectification even if those merits are later found to be wanting?
MR BAIRD: Your Honour, the question of person aggrieved has generally been described as having – this is really what I would like to come to soon – the nature of the interest, a real interest. Non-frivolous is not a phrase that has been used by the older cases referring to the question of aggrieved in the context of trademarks. In administrative law and I think public law concerns the question has been a real or genuine interest, of course, objectively speaking, so that mere belief or concern does not suffice however honestly held. The Australian Conservation Foundation Case, which is a public law case - - -
FRENCH CJ: Yes. I am just trying to characterise your submission, that is all. I am familiar with that.
MR BAIRD: Your Honour, we put it that there must be a real interest and that in the facts of this case there is not.
FRENCH CJ: The real interest is to be judged at the commencement of the proceedings, you say, but it may be that it is judged retrospectively?
MS BAIRD: Yes, it may be. It may be that the court has to inquire into - - -
FRENCH CJ: You find out at the end of the case.
MS BAIRD: Make a decision about whether marks are deceptively similar. The older cases have said – and by older I mean pre-re Powell - we have referred to them in our written submissions in the footnote – tend to suggest that if the marks are deceptively similar and there are traders – traders in trade with deceptively similar marks in use – then they are persons aggrieved. That is, of course, not to say that if there is no such deceptively similar mark then you are not a person aggrieved. But it gives some meaning to the phrase and the phrase should have, in our submission, meaning over and above a person who has a concern over and above an officious interferer.
In a practical matter in this case the appellant’s trade is unaffected by the presence or absence on the register of the trademark “Health Plus” and this can be tested by what, in fact, then were the findings of the courts. There is no possibility, reasonable or otherwise, as an honest trader – and you have to bear in mind as an honest trader that the appellant could, or might use, the “Health Plus” trademark – it can neither permit nor prevent others from using the Health Plus trademark and it cannot be the case, in our submission, that consumers by reason of the trademark will be deceived or confused to acquire Health Plus goods, rather than goods labelled Inner Health Plus, because the marks are not deceptively similar.
It was no reasonable belief to consider that the marks were deceptively similar as at February 2006 in the face of their own registration and Justice Cooper’s findings and in fact there being no instance of any kind of confusion or deception. The Trade Marks Act - - -
HEYDON J: I think at some stage, for my part, Ms Baird, I think we have to know where you stand on these questions. One, was Lord Herschell right? Two, was Lord Pearce right? Three, was Mr Justice McLelland right? Or, four, was Mr Justice McLelland misunderstood by later authority? Are you coming to those things later?
MS BAIRD: Yes. In some we say Lord Herschell properly understood was right when you see the whole of the reasons and the whole of the judgment of their Lordships.
GUMMOW J: The phrase “properly understood” comes to us with a lot of baggage.
MS BAIRD: As properly understood, we say my friend does not properly understand.
HEYDON J: To us, that means he was wrong.
MS BAIRD: I am sorry, your Honour, no, I am not understanding it that way at all. I am understanding it that I do not accept my friend’s submissions in relation to the judgment, not I am saying that I think his Honour was wrong. Of course, for this Court, aggrieved person in the context of trademark law comes with the authority of the decisions going back to the 1875 Act in the United Kingdom, but it is also, of course, a statutory requirement and is seen in the context of the statute before your Honours, the Trade Marks Act, which has two attacks on the registration, prospective attack on a registration made by a person under Part 5 of the Act, which is our opposition, section 52, to which my learned friend took your Honours, and that is before registration and before the monopoly rights have been granted, and there it is a person unqualified.
My friend seeks to characterise this as saying, “Well, although it is a person and that means unqualified anybody” in fact it will not be anybody because it is only going to be persons who read the official journal and that therefore will only be traders and so therefore what you have to read “a person” as is in.....as competitors or trademark attorneys but, with respect, that is not what the section says, nor does the section require that a person in fact have read the official journal but that a person is aware of a trademark application going through, whether that is because a trademark is being used, as indeed many trademarks are used before they are applied for or before registration, as indeed the Inner Health Plus mark was used for approximately 18 months before it was applied for.
Then one comes to the position after registration, after rights are vested, after monopoly rights have been granted and there Parliament has chosen a different characterisation of a person who can come and seek the rectification of the register. It has chosen an aggrieved person and it has done that, we say, deliberately, and therefore in the structure of the Act those words should be given meaning and should not be substituted, in effect, for “a person” or “a person well funded” or simply “a trader well funded” who has no interest in the mark. Section 88 and section 92, which is for removal of the mark, both state first in section 88:
an aggrieved person, order that the Register be rectified by:
(a) cancelling the registration of a trade mark; or
(b) removing or amending an entry –
In our submission, that means that the focus of the grievance is on the fact of the registration and the consequence of that registration and the form of that registration on the register as a granted right. So too, when one turns to section 92:
A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.
And again, here, this is either after five years have passed and the mark has been registered or if the mark has been, so it is said, applied for without any intention in good faith to use and there has not been any use. So the assertions to be made to remove the mark from the register after the vested rights are granted or that there is an absence of good faith are assertions not to be made lightly and the Parliament has chosen the phrase “aggrieved person”. It has done so, in our submission, to balance the interest, the public interest, of any person in the purity of the register with the interest of traders in having registrations and having them done.
GUMMOW J: It has done it partly because it has been in the Act since 1905.
MS BAIRD: I am sorry, your Honour?
GUMMOW J: It is an expression that has been in the Australian legislation since the beginning.
MS BAIRD: It has, since the beginning of the Act, and that is why I say it carries its meaning from also thus back to the 1875 Act.
GUMMOW J: And with the case law.
MS BAIRD: And to the case law, I do not dispute that, your Honour. But I do say that all of that case law and statutory construction must be borne in mind with how the Act operates and, your Honour, it is the same way in large part how the Act is operated under 1905 and, indeed – I am more familiar with the 1955 Act – before registration a person could apply for the mark not to go onto the register, oppose the mark, after registration under the earlier Acts was an aggrieved person or the registrar.
Under the 1995 Act, after registration, it was and is the aggrieved person and by the 2006 amendments the position of the registrar as a party or person able to remove the mark has been brought back into the Act. It is apparent from the review of the legislation before the 2006 Act that the reason or a reason, retrospectively put, why the registrar was removed was because the registrar had not made any applications. Be that as it may under the Act with which your Honours are concerned an aggrieved person is the person who has the entitlement to seek rectification of the register. Your Honours, I will be some time. I do not know what your Honours would - - -
FRENCH CJ: Roughly what time?
MS BAIRD: Your Honour, I anticipate I would be close to three-quarters of an hour. I have covered much of the trade but I do wish to go to the earlier cases. Your Honours, I could and would prefer to continue, but I am in your Honours’ hands and I will - - -
FRENCH CJ: I think we will adjourn until 10 o’clock tomorrow morning.
MS BAIRD: May it please the Court.
AT 4.14 PM THE MATTER WAS ADJOURNED
UNTIL THURSDAY, 10 DECEMBER
2009
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URL: http://www.austlii.edu.au/au/cases/cth/HCATrans/2009/319.html