Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 (17 February 2009)

Last Updated: 20 February 2009

FEDERAL COURT OF AUSTRALIA

Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14

INTELLECTUAL PROPERTY – rectification of register of trade marks by expungement – whether applicant aggrieved by reason of deceptive similarity alone – whether reputation necessary to show legal or practical disadvantage

Held: appeals dismissed – appellants lacked standing

WORDS AND PHRASES – "aggrieved person"

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

Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 applied
Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc [1960] HCA 37; (1960) 103 CLR 422 cited
Daiquiri Rum Trade Mark [1969] RPC 600 cited
Farley (Aust) Pty Ltd v J R Alexander & Sons (Queensland) Pty Ltd [1946] HCA 29; (1946) 75 CLR 487 cited
Health World Limited v Shin-Sun Australia Pty Ltd [2005] FCA 5; (2005) 64 IPR 495 affirmed
Kuru v New South Wales [2008] HCA 26; (2008) 246 ALR 260 considered
Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 applied
Powell v Birmingham Vinegar Brewery Co Ltd [1894] AC 8 cited
Re Apollinaris Company’s Trade Marks (1891) 8 RPC 137 referred to
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 applied
Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27; (1949) 78 CLR 601 cited














HEALTH WORLD LIMITED v SHIN-SUN AUSTRALIA PTY LTD
NSD 394 OF 2008

HEALTH WORLD LIMITED v SHIN-SUN AUSTRALIA PTY LTD
NSD 395 OF 2008

EMMETT, BESANKO AND PERRAM JJ
17 FEBRUARY 2009
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 394 of 2008

BETWEEN:

HEALTH WORLD LIMITED ACN 010 636 165 Appellant

AND:	SHIN-SUN AUSTRALIA PTY LTD ACN 060 792 163 Respondent

JUDGES:	EMMETT, BESANKO AND PERRAM JJ
DATE OF ORDER:	17 FEBRUARY 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the costs of the respondent on the appeal.

3. There be no order as to costs in relation to the notice of contention (styled notice of cross-appeal).

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 395 of 2008

BETWEEN:	HEALTH WORLD LIMITED ACN 010 636 165 Appellant
AND:	SHIN-SUN AUSTRALIA PTY LTD ACN 060 792 163 Respondent

JUDGES:	EMMETT, BESANKO AND PERRAM JJ
DATE OF ORDER:	17 FEBRUARY 2009
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellant pay the costs of the respondent on the appeal.

3. There be no order as to costs in relation to the notice of contention (styled notice of cross-appeal).

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 394 of 2008 NSD 395 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

HEALTH WORLD LIMITED ACN 010 636 165 Appellant

AND:	SHIN-SUN AUSTRALIA PTY LTD ACN 060 792 163 Respondent

JUDGES:	EMMETT, BESANKO AND PERRAM JJ
DATE:	17 FEBRUARY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

EMMETT J

1 These two appeals involve the same factual background. They arise out of a dispute between the appellant, Health World Limited (Health World), and the respondent (Shin-Sun), concerning the registration under the Trade Marks Act 1995 (Cth) (the Act) of Trade Mark Number 874755 for the mark HEALTHPLUS (the Mark). Health World sought to have the Mark removed from the Register. A judge of the Court concluded that Health World did not have standing to bring a proceeding to have the Mark expunged. Health World then appealed to the Full Court from the orders of the primary judge.

2 I have had the opportunity of reading in draft form the reasons for judgment of Perram J. I agree with his Honour’s conclusion that the primary judge was correct in concluding that Health World does not have standing. I agree with his Honour’s reasons for concluding that the primary judge was correct in that regard.

3 As Perram J indicated in his reasons, Shin-Sun filed a notice of contention raising several other issues. However, those issues would be relevant on the appeals only if the primary judge erred in his conclusion on standing. For the reasons given by Perram J, I agree that it is neither necessary nor desirable for the Full Court to deal with those issues, having regard to the conclusion that Health World’s appeals should fail by reason of its want of standing.

4 It follows that both appeals should be dismissed with costs.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated: 17 February 2009

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 394 of 2008 NSD 395 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

HEALTH WORLD LIMITED Appellant

AND:	SHIN-SUN AUSTRALIA PTY LTD Respondent

JUDGES:	EMMETT, BESANKO AND PERRAM JJ
DATE:	17 FEBRUARY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

BESANKO J

5 I have had the advantage of reading in draft form the reasons for judgment of Perram J. For the reasons his Honour gives, I agree that both appeals should be dismissed. I also agree with his Honour’s proposed order as to costs.

I certify that the preceding one (1) numbered paragraph is a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko.

Associate:

Dated: 17 February 2009

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 394 of 2008 NSD 395 of 2008

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

HEALTH WORLD LIMITED Appellant

AND:	SHIN-SUN AUSTRALIA PTY LTD Respondent

JUDGES:	EMMETT, BESANKO & PERRAM JJ
DATE:	17 FEBRUARY 2009
PLACE:	SYDNEY

REASONS FOR JUDGMENT

PERRAM J

6 These are appeals against orders made by Jacobson J on 21 February 2008 dismissing the appellant’s applications with costs. It is convenient to refer to the appellant as "Health World" and the respondent as "Shin-Sun". Health World and Shin-Sun are both involved in the manufacture and supply of health products. Health World produces probiotics; Shin-Sun markets a range of products derived from bees, their wax and squalene. The nature of squalene does not appear from the reasons of the primary judge but resort to the Oxford Dictionary definition suggests an association with sharks, or at least shark livers.

7 Shin-Sun’s range of products is called the "HEALTHPLUS" range and includes:

HealthPlus Propolis capsules HealthPlus Squalene capsules HealthPlus Royal Jelly capsules HealthPlus Evening Primrose Oil HealthPlus Green Lipped Mussel capsules HealthPlus Organic Raw Honey HealthPlus Osteosamine capsules

8 An example of the packaging is as follows:

9 Since May 2000, one of Health World’s products has included a probiotic capsule known as "Inner Health Plus" as well as a dairy free version of the same product. Each capsule of the Inner Health Plus range contains 10 billion acidophilus bacteria. The Inner Health Plus label and packaging are as follows:

10 Shin-Sun applied for registration of the word mark HEALTHPLUS on 7 May 2001. Four months later Health World applied for the registration of the word mark INNER HEALTH PLUS. Ultimately, HEALTHPLUS was accepted for registration following an earlier decision of this Court, Health World Limited v Shin-Sun Australia Pty Ltd [2005] FCA 5; (2005) 64 IPR 495. The present proceedings represent Health World’s attempts to remove Shin-Sun’s HEALTHPLUS mark from the register.

HEALTH WORLD’S COMPLAINTS

11 At the trial Health World sought to rectify the register of trade marks to remove Shin-Sun’s HEALTHPLUS mark on four bases. First, it alleged that Shin-Sun had not intended to use the mark as at the date of its application for registration on 7 May 2001. That mattered because s 59 of the Trade Marks Act 1995 (Cth) ("the Act") provides:

Applicant not intending to use trade mark The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

12 Section 59 refers to opposition to the registration of a mark which does not, of course, reflect Health World’s application to rectify the register. However, the connection springs from s 88 which provides relevantly:

(1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a) cancelling the registration of a trade mark; or

...

(2) An application 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 this Act;

...

It will be seen that s 88(2)(a) erects as grounds of rectification all grounds of opposition which, naturally enough, include s 59.

13 Secondly, Health World also alleged that the HEALTHPLUS mark was deceptively similar to the INNER HEALTH PLUS mark. This complaint arose from the operation of s 88(2)(a) which picked up the grounds for opposition contained in ss 60 and 42(b). There is no issue now that the relevant version of s 60 is that which was in force as at 7 May 2001 (although there was a dispute about this at trial):

The registration of a trade mark in respect of particular goods or services may be opposed 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 of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b) because of the reputation of that order trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

14 His Honour concluded that the HEALTHPLUS mark and the INNER HEALTH PLUS mark were not deceptively similar for the purposes of s 60. Section 42(b) (again made relevant to rectification proceedings by s 88(2)(a)) provides:

An application for the registration of a trade mark must be rejected if: ... (b) its use would be contrary to law.

The particular illegalities relied upon were breaches of ss 52, 53(a), 53(c) and 53(d) of the Trade Practices Act 1974 (Cth), that is, misleading or deceptive conduct of various species. For essentially similar reasons to the s 60 ground, his Honour rejected this ground too.

15 Thirdly, Health World complained that Shin-Sun had not used the mark during the period 23 May 2003 to 25 May 2006. Provision for application for expungement on the basis on non-use is contained in Part 9, s 92 of which at the times pertinent to this litigation provided relevantly:

(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.

...

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(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:

(i) to use the trade mark in Australia; or

(ii) to authorise the use of the trade mark in Australia; or

(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv) has not used the trade mark in Australia; or

(v) has not used the trademark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(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 and/or services to which the application relates.

The learned primary judge held that Shin-Sun had not used the mark in the relevant period.

16 Fourthly, Health World complained that the use by Shin-Sun of HEALTHPLUS was confusing. At the time of the application for rectification, s 88(2)(c) provided:

(2) An application may be made on any of the following grounds, and on no other grounds:

...

(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 for which:

(i) the application for the registration of the trade mark could have been rejected under section 43 or 44; or

(ii) the registration of the trade mark could have been opposed under section 60;

...

17 Although Health World’s complaint under this provision is concerned with the notion of confusion or deception it is materially different to Health World’s complaints alleging deceptive similarity under s 88(2)(a) operating on ss 42(b) and 60. The inquiry required by s 60, at least, focuses on the marks themselves and not the use to which they are put. Further, it requires the identicality question to be posed at the time of the initial application, unsurprising given its nature as a ground of opposition. Section 88(2)(1), on the other hand, is concerned with the use to which a mark is put which is, of course, a broader inquiry. Two marks might not be deceptively similar to each other for the purposes of s 60 (and hence for the purposes of opposition to registration) but one might, nevertheless, be used in a way which causes confusion or deception for the purposes of s 88(2)(c). And, of course, s 88(2)(c) is a ground for expungement so that the question of whether a particular use is misleading or not is to be determined at the time rectification of the register is sought.

18 The primary judge was of the view that, in this regard, the use of the HEALTHPLUS mark as at 13 February 2006 was likely to cause confusion. This confusion was unconnected to the relationship between Health World’s INNER HEALTH PLUS mark and Shin-Sun’s HEALTHPLUS mark. Instead it derived from the view that Shin-Sun’s HEALTHPLUS mark, as used on the products, was apt to cause confusion. That confusion arose because the primary judge concluded that the goods bearing Shin-Sun’s HEALTHPLUS mark were not Shin-Sun’s but rather the goods of a related entity, Nature’s Hive. The use of the mark was confusing because it inaccurately suggested a connection between goods of Nature’s Hive and the HEALTHPLUS mark.

19 The primary judge, therefore, found that some, but not all, of the grounds alleged by Health World were made out. Health World nevertheless failed in the proceedings. This was because of the primary judge’s conclusion that Health World had no standing to bring any of its applications. As a matter of formality the actual applications by Health World were made pursuant to s 88(2)(a) and (c) and s 92. As an examination of the text of s 88(1) shows, relief under s 88(2)(a) or (c) could be granted at the suit only of an "aggrieved person". And, in the same way, relief under s 92 was, at least at the times relevant to these proceedings, available only to a "person aggrieved". Both at first instance and in this Court the parties proceeded on the basis that these expressions had the same meaning, an assumption which it is convenient to accept. The primary judge found that Health World was neither an aggrieved person for the purposes of s 88(1) nor a person aggrieved for the purposes of s 92. Inevitably, therefore, his Honour dismissed the proceedings. Against the possibility of this Court reaching a different conclusion on the question of standing Shin-Sun filed a notice of contention.

20 The issues which arose on the appeal were therefore:

1. The standing issue: Health World argued, and Shin-Sun denied, that it had standing to bring the proceedings.

2. The intention to use issues: Health World submitted that Shin-Sun did not intend to use the HEALTHPLUS mark as at 7 May 2001, being the date of its application. Shin-Sun denied this. On this issue at the trial, Health World would have prevailed if it had been found to have had standing. In the event that Shin-Sun succeeded in showing that it did intend to use the mark, Health World argued that that intention was with respect to a logo in which the mark was included in such a way that it had lost its identity.

3. The deception and confusion issues: If Health World established its standing, Shin-Sun contested the trial judge’s finding that, as at the date of the filing of the application for rectification, the use of HEALTHPLUS was confusing because it suggested a connection between the goods of Nature’s Hive and HEALTHPLUS. This was because, so it was argued, Nature’s Hive had been authorised by Shin-Sun to use HEALTHPLUS.

4. The non-use issues: If Health World established that it had standing, Shin-Sun attacked the primary judge’s conclusion that it had not used the mark in the relevant period. Its principal but not sole basis for this contention was that Nature’s Hive had used the mark during the relevant period and that it was authorised so to do.

5. The discretion issues: Had standing been established, the primary judge would have exercised his discretion to expunge the HEALTHPLUS mark. Shin-Sun took issue with that conclusion.

STANDING

21 Health World contended that the primary judge had erred by concluding that it could not be an aggrieved person when it was shown that the two marks were not deceptively similar. That approach, it was said, impermissibly conflated the notion of standing in s 88(1) with the actual grounds of review in s 60 and s 42(b). The consequence was that the primary judge had adopted an approach which meant that only those entitled to succeed in having a mark expunged, because of its misleading character, had standing.

22 In my opinion, this criticism of the primary judge should be rejected for a number of reasons. To begin with, however, it is useful to note some aspects of the operation of s 88(2) when the grounds relied upon include notions of deceptive similarity or misleading use.

23 First, the standing requirement in s 88(1) is not triggered merely by the fact that the presence of a trade mark on the register is misleading or deceptive. This is both as a matter of common sense and as a matter of authority. The misleading and deceptive nature of the mark must affect the applicant in some meaningful way. The general test laid down by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 ("Ritz") at 193 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 is a test which has commanded widespread assent in this Court: Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 ("Kraft") at 112-113 per Sackville J (with whom Sheppard and Tamberlin JJ agreed); Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 ("Campomar") at 363 per Sackville J with whom Lehane J agreed at 381 (reversed, but not on this point Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45).

24 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: Campomar at 364 per Sackville J with whom Lehane J agreed at 381.

25 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. Put another way, although s 60 is concerned with reputation it is not necessarily concerned with the applicant’s reputation.

26 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. 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.

27 With those principles in mind it is necessary then to attend to the reasoning of the primary judge. His Honour began by noting that the product line Inner Health Plus was an extension of an earlier product manufactured by Health World called Inner Health. Inner Health was a probiotic which came in powdered form. It was available from 1991. Sales of Inner Health Plus capsules commenced in May 2000. It contained more probiotic bacteria than Inner Health and included additional and different bacteria. Both were marketed using a plush soft toy in the form of a blue bug.

28 His Honour expressly considered the reputation of the mark INNER HEALTH PLUS, saying that it was relevant to "the grounds raised by ss 42 and 60 of the Act". In that context, this was clearly a reference to those provisions as picked up by s 88(2)(a). He then went on at [94] to record his finding:

In my view, the evidence to which I have referred above makes it plain that, as at 7 May 2001, the reputation of Inner Health Plus was that of a probiotic product in a stronger and more convenient form than that of Inner Health powder.

29 It is in the context of that finding that his Honour concluded at [125]-[126]:

125 If I were of the view that the HealthPlus trade mark was deceptively similar to the Inner Health Plus trade mark, I would be satisfied that Health World is an aggrieved person: Campomar Sociedad, Limitada v Nike International Limited (1998) 85 FCR 331 at 364; reversed by the High Court but not on the "aggrieved person" issue in [2000] HCA 12; (2000) 202 CLR 45.

126 However, for reasons set out below, in my opinion, HealthPlus is not deceptively similar to INNER HEALTH PLUS.

30 There are three comments which should be made. First, his Honour referred to the precise passage in Campomar in which Sackville J had explained that the mere allegation that two marks were deceptively similar would not suffice to establish standing but that there needed to be a reputational impact as well. Secondly, his Honour had, by then, expressly considered the reputation of the INNER HEALTH PLUS mark. Thirdly, his Honour had concluded that the two marks were not deceptively similar. So viewed, Health World’s submission that the trial judge treated the standing requirement as being merely whether the two marks were deceptively similar must be rejected. His Honour clearly had in mind that the reputation of INNER HEALTH PLUS was such that, if the marks had been deceptively similar, he would have concluded that Health World was aggrieved. To embrace Health World’s argument it would be necessary to conclude that his Honour’s extensive treatment of the reputation of the INNER HEALTH PLUS mark was a frolic and his reference to the critical passage in Campomar a confection. Ockham’s razor suggests a simpler solution. The trial judge did not reason as Health World alleges.

31 Once it is accepted that the two marks are not deceptively similar and that their reputations do not intersect it is difficult to identify what interest of Health World is affected by the registration of HEALTHPLUS. Health World suggested five matters in answer to that difficulty. First, it contended that in view of the long history of dispute between Health World and Shin-Sun it could not be described as an "interferer" or "common informer". The significance of that denial can be seen from statements of principle to the effect that the "person aggrieved" test was designed as a low threshold to prevent officious interference or mere common informers: Powell v Birmingham Vinegar Brewery Co Ltd [1894] AC 8 ("Powell") at 10 per Lord Herschell LC, 14 per Lord Ashbourne; Kraft (1996) 65 FCR 104 at 113 per Sackville J (Sheppard and Tamberlin JJ agreeing). However, accepting that Health World has demonstrated that it is not an officious interferer or a common informer, it does not follow that it is an aggrieved person; membership of one class is not proved by demonstrating non-membership of another class.

32 Secondly, it was submitted that where an applicant for expungment deals or intends to deal in goods of the same class, or similar to, as that for which the trade mark is registered, that fact is prima facie sufficient evidence of it being a person aggrieved. The existence of that prima facie rule is well-established: see Powell at 10 per Lord Herschell LC, 12 per Lord Watson, 14 per Lord Ashbourne, 15 per Lord Shand; Farley (Aust) Pty Ltd v J R Alexander & Sons (Queensland) Pty Ltd [1946] HCA 29; (1946) 75 CLR 487 at 491-492 per Williams J; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27; (1949) 78 CLR 601 at 606 per Williams J; Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc [1960] HCA 37; (1960) 103 CLR 422 at 427 per Kitto J; Daiquiri Rum Trade Mark [1969] RPC 600 at 615 per Lord Pearce; Ritz at 195-196 per McLelland J; Kraft at 113 per Sackville J (Sheppard and Tamberlin JJ agreeing).

33 Shin-Sun submitted that analysis of those cases revealed the prima facie rule was a manifestation of the general test and hence had to be tied back to the effect on the applicant in a practical or legal sense. So viewed, where the intention to trade in the same class is obscure or fantastic, the rule does not apply. This may well be true. However, for myself, I think it is more useful to look at that matter as an element tending to rebut the prima facie rule. This, I believe, was the approach taken by the Full Court in Kraft (1996) 65 FCR 104 at 113 where Sackville J (with whom Sheppard and Tamberlin JJ agreed) said:

A trader who has dealt in the same class of goods as the registered proprietor and shows that he or she could use the mark, establishes a prima facie case that he or she is a person aggrieved for the purposes of a removal application. The inference may be rebutted by evidence from the objector, demonstrating that the applicant would not take advantage of the opportunity to use the mark, but in the absence of such evidence the prima facie inference remains.

34 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 prima facie rule.

35 Thirdly, Health World submitted that a person aggrieved included a person who would or might be, or in respect of whom there was a reasonable possibility of being, disadvantaged in a legal or practical sense. It fell within that description "because of the possibility that HEALTHPLUS and INNER HEALTH PLUS were deceptively similar". This argument should be rejected. There is no doubt that the owner of a mark is an aggrieved person where by reason of the reputation of their mark another mark would be likely to deceive or cause confusion. But the possibility of appreciable disadvantage does not arise from the possibility of deceptive similarity alone, as submitted by Health World – it arises from the existence of goodwill.

36 Health World’s argument impermissibly ignores the need to show disadvantage in a legal or practical sense. Absent reputation, the possibility of deceptive similarity is both superfluous and insufficient. Any other view would mean, as Shin-Sun pointed out, that the mere making of the allegation of deceptive similarity is enough to confer standing. That, of course, reduces the requirement of s 88(1) to nothing. Such a view must be rejected.

37 Fourthly, Health World pointed to the fact that prior to the commencement of the present proceedings Shin-Sun had used the fact of its registration of the HEALTHPLUS mark in support of its opposition to the INNER HEALTH PLUS mark. In that opposition it asserted that HEALTHPLUS and INNER HEALTH PLUS marks were deceptively similar. Health World pointed to a well-known passage in Re Apollinaris Company’s Trade Marks (1891) 8 RPC 137 at 162 per Fry LJ where it was said that "when one trader uses the fact of registration as any part of his case against another trader in any legal proceedings, that second trader is aggrieved". The general truth of that proposition may be accepted, however, it is of no assistance in the present case. For whilst it is true that Shin-Sun did so assert, it is also true that it withdrew its opposition to the registration of INNER HEALTH PLUS prior to the commencement of the present proceedings. INNER HEALTH PLUS is now registered and that is no longer challenged by Shin-Sun. At the time of the commencement of these proceedings Health World was not being assailed by any legal proceedings by Shin-Sun dependent upon the registration of HEALTHPLUS.

38 Finally, Health World submitted that Shin-Sun had by 4 April 2007 sought to use its mark against Health World in two other ways. The first was a proceeding brought by Shin-Sun against Health World in which Shin-Sun sought to amend the register to limit Health World’s use of INNER HEALTH PLUS to the probiotic goods with which it was, in fact, used. INNER HEALTH PLUS was registered in class 5 of the register for:

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.

39 It was necessary in that proceeding for Shin-Sun to show that it was a person aggrieved by reason of s 88(1). This it did by pleading – consistent with Apollinaris – the existence of the present proceedings for expungement brought by Health World. So viewed the suit was not one in which Shin-Sun used its mark against Health World but, rather, a defensive action taken in response to Health World’s use of its mark. The principle in Apollinaris has to be read in a context in which it is clearly understood that the inquiry is ultimately directed to the discernment of a reasonable possibility of being disadvantaged in a legal or practical sense: Kraft at 113 per Sackville J; Campomar at 363 per Sackville J. An applicant for expungement does not become an aggrieved person because the party whose mark it attacks seeks to defend itself.

40 The second matter Health World relied upon was a letter dated 4 April 2007 in which Shin-Sun sought to persuade the Trade Marks Office to revoke its acceptance of INNER HEALTH PLUS. The basis for this request was the same point, viz, that Health World never intended to use INNER HEALTH PLUS for anything other than probiotics. Shin-Sun submitted that the letter was written after the commencement of Health World’s expungement proceedings the date of which, 13 February 2006, was the date at which standing was to be assessed. Correctly, Health World did not seek to cavil with that proposition; rather it submitted that such subsequent conduct could be taken into consideration insofar as it showed what was a reasonable possibility as at 4 April 2007: Ritz at 196 per McLelland J. Since, it was submitted, the letter clearly asserted that the registration of INNER HEALTH PLUS was deceptive it followed that it "could be taken into account to show what was a reasonable possibility" as at 13 February 2006.

41 I would reject this argument. The letter of 4 April 2007 does not say that the registration of INNER HEALTH PLUS is deceptively similar to HEALTHPLUS. To see why this is so it is necessary to say something of s 44. Section 44(1) prohibits the registration of a mark which is substantially identical with or deceptively similar to a mark registered for similar goods or services. Section 44(4) provides an exception where an applicant has used the mark in relation to similar goods or services in the period prior to the other mark’s registration. It is apparent from the letter that INNER HEALTH PLUS was registered pursuant to s 44(4). It follows that the registrar must have assumed that s 44(1) applied and must, therefore, have been of the view that the INNER HEALTH PLUS and HEALTHPLUS marks were substantially identical or deceptively similar.

42 Shin-Sun’s letter to the Trade Marks Office said:

3.1 As the Examiner has accepted the current application for registration over the citation of our client’s mark, on the basis of Section 44(4), the Examiner must have been satisfied that:

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

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

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

(ii) the similar services or closely related goods; and

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

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

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

43 Health World’s argument is that the passages contain an implicit assertion that s 44(1) applied and, hence, that the two marks were substantially identical or, at least, deceptively similar. There is no doubt, I think, that the letter sought to cavil with the registrar’s actions under s 44(4). So too, it cannot be doubted that the registrar had proceeded on the basis that the two marks were substantially identical or deceptively similar. However, to write a letter disagreeing with the registrar’s conclusions on s 44(4) need not entail an acceptance of the correctness of the registrar’s position on the issue of substantial identicality or deceptive similarity, and still less, I think, an assertion of that position. It would have been possible to argue that s 44(1) was inapplicable. However, it cannot be said that by disagreeing with the registrar’s conclusions about s 44(4) Shin-Sun actively asserted the registrar’s position on s 44(1). Indeed, it would have been possible for Shin-Sun to have done both at the same time which somewhat undermines the notion that the denial of one entailed the acceptance of the other. It follows that this argument must be rejected too.

44 For those reasons, the conclusion of the primary judge that Health World lacked standing under s 88(1) was correct. No separate argument was advanced in relation to s 92 so that his Honour’s conclusion that Health World lacked standing for the application pursuant to that provision must also be upheld. Shin-Sun proffered an undertaking during the course of the appeal to limit HEALTHPLUS to pharmaceutical products excluding probiotics. Given that Health World has no standing to vary the register there is no occasion to consider whether any such undertaking should be accepted.

THE REMAINING ISSUES

45 The above conclusion is sufficient to dispose of both appeals. There have been recent statements by the High Court about the duty of intermediate appellate courts, upon disposing of an appeal on a single decisive issue, to decide issues which do not arise. The most recent of these is Kuru v New South Wales [2008] HCA 26; (2008) 246 ALR 260. In that case, the appellant complained of assault by the police. He succeeded in the NSW District Court and obtained damages in the amount of $418,265. In its appeal to the NSW Court of Appeal the State contested both its liability and the quantum. The Court of Appeal unanimously allowed the appeal on liability but did not deal with the quantum issues. A majority of the High Court (Gleeson CJ, Gummow, Kirby and Hayne JJ; Heydon J dissenting) restored the trial judge’s conclusion on liability. That left unresolved the issue of quantum in the Court of Appeal.

46 At 260 [12] the majority said:

The appeal to this court should be allowed. There was neither statutory nor common law justification for the police remaining on the appellant’s premises. The matter must be remitted to the Court of Appeal for consideration of the outstanding issues about damages. That outcome means that this court cannot make orders disposing finally of the dispute between the parties. This court has said on a number of occasions that, although there can be no universal rule, it is important for intermediate courts of appeal to consider whether to deal with all grounds of appeal, not just with what is identified as the decisive ground. If the intermediate court has dealt with all grounds argued and an appeal to this court succeeds, this court will be able to consider all the issues between the parties and will not have to remit the matter to the intermediate court for consideration of grounds of appeal not dealt with below.

47 It is, I think, important to emphasise that the Court did not say that such findings had to be made. Rather, it merely exhorted intermediate Courts to consider whether to do so. That consideration, I venture to suggest, involves an assessment of the following matters: first, an assessment, so far as is possible, of the likelihood of there being a grant of special leave; secondly, an assessment, if special leave were to be granted, of whether the High Court would deal with the matters raised in any notice of contention or, instead, remit those back to the intermediate appellate court. In assessing that question it is pertinent to note the inappropriateness, generally speaking, of the High Court being asked to deal with factual matters. On the other hand, where the remaining issues are pure questions of law this may be a lesser consideration. Thirdly, the cost consequences to the parties, if special leave is granted but a remitter ensues; fourthly, an assessment of the intermediate appellate court’s own workload. None of those factors is decisive in itself and, it may be accepted, the notion of gauging the prospect of a grant of special leave is problematic.

48 I approach the matter on the basis that the primary judge’s approach to the question of standing was a straightforward application of this Court’s decision in Campomar. A grant of special leave is unlikely but not impossible. On the other hand, the remaining issues are legal arguments which could be dealt with by the High Court were it minded to grant special leave. In that circumstance, a remitter of those issues is reasonably unlikely. That being so, it is less likely to be a productive use of the resources of this Court to create obiter dicta which are unlikely to assist anyone. For those reasons I do not propose to consider the remaining issues.

49 A substantial part of the appeal was spent on those issues. In that circumstance the appropriate costs order is that Health World pay Shin-Sun’s costs of both appeals and that there be no order as to costs in relation to the notices of contention.

I certify that the preceding forty-four (44) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate:

Dated: 17 February 2009

Counsel for the Appellant:	Mr R Cobden SC with Mr J S Cooke
Counsel for the Respondent:	Mr D K Catterns QC with Ms J Baird SC and Ms P Arcus

Date of Hearing:	25, 26 August 2008
Date of Judgment:	17 February 2009