Health World Ltd v Shin-Sun Australia Pty Ltd

[2009] HCATrans 320

[2009] HCATrans 320

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 THURSDAY, 10 DECEMBER 2009, AT 10.01 AM

(Continued from 9/12/09)

Copyright in the High Court of Australia

FRENCH CJ:   Yes, Ms Baird.

MS BAIRD:   Your Honours, may I turn to the case of Powell v Birmingham Vinegar Brewery [1894] AC 8 and turning first to the judgment of Lord Herschell. Your Honour Justice Heydon yesterday asked what our position was in relation to Lord Herschell and whether he was correct. We say certainly he was. Your Honours will recall that the trademark in this case was Yorkshire Relish, the very name of the article and that concept or that fact underlay, in our respectful submission, the views that the courts came to in the House of Lords and earlier in the Court of Appeal and also before Justice Chitty. Lord Herschell, at page 10 of the report, says and we accept that:

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 –

May I pause there, your Honours, and note that His Lordship has identified that the term was no doubt inserted to prevent those who had no interest at all in the register being correct and excluding also “a mere common informer”.  His Lordship then goes on to say:

It is undoubtedly of public interest that there should not be unduly limited –

Pausing there, his Lordship is of course noting that there were limits placed by the words “persons aggrieved” -

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 –

Pausing there, your Honours, his Lordship is again identifying that there is an effect and persons in the facts of this case were persons in trade who were affected by the appropriation ‑ ‑ ‑

GUMMOW J:   No, there may be an affectation.

MS BAIRD:   Yes, your Honour – who were appropriated, where in this case, the trademark which was in fact not a trademark, but the name of the good, had been appropriated by the one person who had obtained monopoly rights.  The full phrase:

and by which many persons may be affected who nevertheless would not be willing to enter upon the risks and expense of litigation.

In our submission, his Lordship is not there saying that simply by the fact of being well funded, one has an interest or should be entitled to seek to rectify the register under the section.  In our submission, the next passage read as a whole encompasses the principle that the later courts have adopted and it applies to the facts of this case quite squarely - meaning the facts of the Powell Case:

Wherever it can be shewn, as here –

namely in the Powell Case –

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, it appears to me he has a locus standi -

In our respectful submission, his Lordship is not there saying that being in the same trade by itself confers standing, but rather is saying that there are these two aspects, being in the same trade and where the trademark remaining on the register – that is, the trademark, not some other activity – would ‑ ‑ ‑

GUMMOW J:   Do you accept it is a public mischief if your client’s mark is on the register when it should not be there?

MS BAIRD:   I am sorry, that our mark is a public mischief?

GUMMOW J:   Yes.

MS BAIRD:   Your Honour, by reason of the notice of contention, we do not accept that, and we also do not accept that this ‑ ‑ ‑

GUMMOW J:   I said, do you accept that it would be a public mischief if your mark remains on the register when it should not be there?

MS BAIRD:   If our mark were to remain when it should not?

GUMMOW J:   Yes.

MS BAIRD:   If it is that case, save, your Honour, that it is not every mark that is – if I can use the term without pejority, not pejoratively, but bad or found to have non‑use – that the court then entertains to be removed, that proposition that when we find a mark, that is should not be there, it should be removed, in our respectful submission, does not confer standing on a person to bring it to the attention of the Court or the registrar in the case of section 92 at first instance.  It is the case where a mark is of itself improper, and that was the case in Powell.

FRENCH CJ:   This is not an exhaustive statement, is it, by Lord Herschell?  It is, in a sense, tailored to the facts of the case that were before the court.

MS BAIRD:   Yes, it is.  It is tailored to the facts of the court and it does say, in a broader sense, that those persons who had no interest at all in the register being correct are excluded.  So what it purports to do, in our submission, is to say these are the circumstances, namely in the facts of this case, being in the same trade and a person who would, or might – and in our submission that means as reasonable possibilities not as fancy – be limited by the fact of the registration by the trademark being there, then they are persons aggrieved.  His Lordship went on, as your Honour the Chief Justice has identified, to say:

In the present case I do not think it can be doubted that the rights of any person who was in the trade and who might desire to make use of the words “Yorkshire Relish” would be less if this mark were upon the register than they would be if he were only subject to the common law liability of being restrained from making any attempt to pass off his goods as the goods of another person.

Again pausing there, what his Lordship is identifying is that the mark in this case, in Powell’s Case, was the name of the article and it was improper it be there and in that sense, whilst the applicants for removal, the Birmingham Vinegar Brewery Company, had not expressed a definite intention that they would use the name of the goods or, indeed, would trade in those goods. there was a might, a reasonable possibility, being in the trading sources, making London Relish, that they would in the future.

That is a different case, in our respectful submission, from saying that where marks are deceptively similar or otherwise as trademarks, that a person would, without the mark being there, wish to use another person’s trademark rather than the name of the good of the article and in that sense, were our mark to be one which was improper of itself rather than by the circumstances of its use, then we would accept that it was a public mischief that the mark not be on the register.

If I can shortly just refer briefly to the case of Paine v Daniells where the Court of Appeal said it was not every mark which is brought to the attention of the court that should be removed by way of example of those differences between a case where it is the name of the good itself or a descriptive term as distinct from a mark that could have been opposed by a third party.

Your Honours, his Lordship then at page 11 turned to the facts of the case and which there were the words “Yorkshire Relish” had not in fact been used within the terms of the law at that time because it was used on packing cases to identify what was the good in the packing cases, the bottles of Yorkshire Relish, rather than being, as at the time, a label as a source of origin of this particular Yorkshire Relish.  Turning then, if I may take your Honours to Lord Watson at page 12 of the House of Lords, his Lordship at about a quarter of the page down, the second paragraph:

In my opinion, any trader is, in the sense of the statute, “aggrieved” whenever the registration of a particular trade-mark –

Again identifying that there must be an interest relating to the particular trademark sought to be removed –

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.

Again, as Lord Herschell identifying that the benefit of registration, appropriation of the common – to a single proprietor, disadvantages a person in the same trade who might possibly have had occasion to use the mark in the course of the business.  His Lordship goes on to explain what he means by “might possibly”:

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 –

May I pause there, your Honours, to note that that statement has been broadened in later decisions and it is not the case that a party needs to be trading in the same class of goods –

and that there shall be a reasonable possibility of his finding occasion to use it.

So “might possibly” is identified and explained by his Lordship as a reasonable possibility of finding occasion to use the mark.  That means a real possibility or having a real interest.  His Lordship goes on to identify a prima facie case –

But the fact that the trader deals in the same class of goods and could use it –

as a matter of possibility –

is prima 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.

Your Honours, in our submission, that invites an inquiry into the merits and it invites an inquiry into the respondent on that application bringing to the court evidence that the particular applicant for removal would not have a reasonable possibility or probability of using the mark. 

In the present case, your Honours, that reasonable probability was identified as not existing by the primary judge when he said that there was no intention to use, evinced no desire to use the trademark “Health Plus”, save as they were already using those words as part of their own mark and, in other words, also to bear in mind in the present case before this Court that there being now findings of no deceptive similarity in good faith and, of course, prior use by Nature’s Hive, in good faith there could be no reasonable probability of the trader, as at 2006 when the application was brought, being free to use the mark, a different case again where what the Court has before it is a mark that is either common to the trade or is descriptive or is the very name of the article.

Lord Watson then refers to the earlier decision of re Rivière and In re Apollinaris, both of which were concerned with questions of the same marks, very deceptively similar marks and in Rivière it was a red Maltese cross and competing traders.  However, in Rivière’s Case the competing trader was actually in another territory entirely and the registration of a trademark in England did not, as a reasonable probability, or indeed they were not in the same trade because they were not in the same country and had no evidence of entering that trade.

His Lordship then turns to the question of use of the trademark and turns to the reasonable probability that the respondents would have ever found occasion for the use at page 13 and states that:

Whether they would or would not –

have this possibility of using the mark –

is a mere question of fact, upon which the opinion of all the learned judges is against him –

meaning those in all the courts below.  Lord Ashbourne is to similar effect at page 14. 

FRENCH CJ:   He makes it clear the definition is not exhaustive.

MS BAIRD:   He does indeed, your Honour.  I was about to identify that. 

GUMMOW J:   The starting point is the last sentence in the second paragraph of Lord Ashbourne’s reasons, in a way, is it not?

MS BAIRD:   “I do not see any reasons of public policy”?

GUMMOW J:   Yes.

MS BAIRD:   Yes.  It is not to be limited, but it is to have meaning.

GUMMOW J:   What is the public policy?

MS BAIRD:   The public policy is, your Honour, this balance ‑ ‑ ‑

GUMMOW J:   No.  The public policy is that marks should not be on the register.

MS BAIRD:   Yes, they should not be on the register.

GUMMOW J:   Yes, because it is a form of statutory monopoly. 

MS BAIRD:   It is, your Honour.  It is a statutory monopoly with limits, as is shown by section 120 and it is a statutory monopoly which also provides, as in exchange with my learned friend, I think, yesterday from your Honour Justice Crennan ‑ ‑ ‑

GUMMOW J:   In a case dealing with discretion, in Carl Zeiss litigation, you will remember, the Australian part of the Carl Zeiss litigation, in 122 CLR 1 at 11 where there was a submission by Mr Kerrigan, I think, that the mark should remain on the register even if not used for special reasons. Justice Kitto at page 11 ‑ ‑ ‑

MS BAIRD:   “I see no reason for allowing this perversion of the trade mark law to continue.”

GUMMOW J:   Well, in the middle of the paragraph:

No advantage that I can see would accrue to the public from maintaining the register in its present form.

MS BAIRD:   Again, your Honour, accepting that, accepting that proposition ‑ ‑ ‑

GUMMOW J:   Notions of the public interest were running through that judgment too.

MS BAIRD:   Yes.  Again, your Honour, in that case ‑ ‑ ‑

GUMMOW J:   Because people might be scared off by an apprehension that something was so which was not so, namely, that the mark was properly on the register so they should not use it.

MS BAIRD:   Yes, your Honour, any person may be so scared.

GUMMOW J:   When, if they did use it, in fact, and had the resources, they could resist any infringement claim and get the mark off.

MS BAIRD:   Yes, your Honour, but that is not this case because ‑ ‑ ‑

GUMMOW J:   We are not worried about whether it is this case, we are trying to construe the statute.

MS BAIRD:   No, your Honour, but as the principle, yes, I certainly accept that, and noting, of course, that in the Carl Zeiss Case the marks were very similar, indeed, deceptively similar, but your principle point being a mark that is bad should not be there.

GUMMOW J:   Yes.

CRENNAN J:   That is why marks which become generic through use are subject to removal even if they were distinctive when first registered.

MS BAIRD:   Yes, your Honour, section 24 provides for that.

CRENNAN J:   It is all part of the same idea, that the register is a way of giving notice to the whole world of what is subject to, as Justice Gummow puts it, the statutory monopoly.

MS BAIRD:   Yes, where the rights vested should or should not continue, or were improperly vested at start.  We do not cavil with that public policy.  What we do say is – and, your Honours, in this case really there are the two aspects of the case.  First, what have the courts said about the test of what is an aggrieved person and then, secondly, looking at the facts of this case, is this appellant an aggrieved person.  We certainly do not cavil at the breadth of the test which identifies that a person who has an interest, a real interest we say, in the register being rectified in this ‑ ‑ ‑

CRENNAN J:   Why does not the appellant here have a real interest on your argument?

MS BAIRD:   Because the appellant is not impeded in any way in the conduct of its business, or its immediate potential business.  It does not use nor propose to use this mark, and it has its own registration which is unimpeded.  There is nothing more than the fact that it is in the same trade that brings it to this Court.  The fact that it is in the same trade in some circumstances may be sufficient to grant an applicant standing, but not in this case, because being in the same trade where a mark is not improper in the sense of being the name of the good, the good itself, does not in any way affect this trader’s trade or rights in business.  It does not limit who it sells its Inner Health Plus goods to, to have on the register a mark for Health Plus.  It does not limit who it can sue with one exception, for infringement of its registered trademark, Inner Health Plus.

Now, my friend says to this Court, the fact that there are defences in section 122, and the fact that there is in section 23 a carve, carving out if you like of the territory for concurrent trademark registrations, stands in its way.  That is as a matter of theory, but only, of course, if the marks are deceptively similar.  If the marks are not deceptively similar, and in our submission that has been found in the case of the “in use” mark in the cases below, then it is not affected.

CRENNAN J:   Would it be a real interest in the sense in which we have been speaking of a real interest for a party to want to narrow the specification of the mark which it is attacking?

MS BAIRD:   Your Honour, it depends on ‑ ‑ ‑

CRENNAN J:   In other words, at the moment there is overlap between the specification of your mark and the appellant’s mark.

MS BAIRD:   Yes.  The appellant has never sought to do that at all.  We did offer that in the courts below as a carve out of territory, and the courts I think – at least in the Full Court – said that the trial judge being correct, the marks not being deceptively similar, there was no need for a carve out.  To answer your Honour’s question, the area – if I may encapsulate, I may have your question wrong – would it be a real interest to seek to carve out part of a specification would again depend on what is the advantage that would be gained, what is the disadvantage that the trader has by the fact that there is not that carve out.  That brings it back to the second part of Lord Herschell’s inquiry, a characterisation of the test as applicable to that case In re Powell, which is – and who might possibly wish to use it.

That again, of course, assumes that there is an intersection of the mark’s reputation.  Mere intersection of goods is what traders in competition in the same area of business always have.  They differentiate themselves by their different marks.  To be able to say merely that, “There is a mark on the register and because it is registered and I am registered, but because it is registered, I cannot sue you”, without there being the issue that the marks are deceptively similar is an arid complaint, for it is only if the marks are deceptively similar that there is reputation here, that there is this area of intersection, there is truly an interest which an applicant brings to the court.

Otherwise it is a theoretical argument, and the argument is the interest in the purity of the register is an interest that, it could be said, a officious interferer has, a member of the public, we are looking into the public law notions of an interest such as to enable a person to come to court to argue for something.  The fact of the purity of the register, in one sense, is like having the same interest as in upholding the law.  That is an interest which excites – I may be putting it too highly – all members of the public who are right thinking about wanting the law upheld.  So that the trader, the applicant for removal, has to have an interest in the trademark which is affected by that registration ‑ ‑ ‑

GUMMOW J:   An interest in the trademark?

MS BAIRD:   Yes, your Honour, because it is the interest in rectifying the register by removing the trademark.  I do not mean a proprietary interest in the trademark, but an interest ‑ ‑ ‑

GUMMOW J:   You mean a concern?

MS BAIRD:   Well, a real concern, not a mere concern, but a concern in the sense in Powell, which is a good example and, in our respectful submission, actually at some of the outer limits, leaving to one side the question of – at the time, I think there was a question of legal interests, not practical matters, but certainly I think Powell identifies that there is a practical interest that the applicant had in ensuring that a mark that really was not a trademark in the sense of identifying origin, but was the name of the good itself, should be able, if they are trading, in that area of discourse of trade, to be open to use it.  They should be able, if making Yorkshire Relish, to call it Yorkshire Relish.  They make London Relish, it is not beyond the bounds of reasonable possibility that they would wish, if free to do so, make Yorkshire Relish.

FRENCH CJ:   Why should it not be sufficient that accepting that the appellant and the respondent are in the same area of trade that your registration imposes a limit on the appellant’s freedom?  It cannot move in that direction.  You put up a sign “here there be dragons”.

MS BAIRD:   Indeed, your Honour, and it cannot, but it ‑ ‑ ‑

FRENCH CJ:   That takes it well out of the category of a officious interferer.

MS BAIRD:   But not by reason, your Honour, of the trademark because it cannot put up the sign whether or not the trademark is on the register.

FRENCH CJ:   I am sorry?

MS BAIRD:   It cannot put up this sign “Health Plus” whether or not the mark is on the register because the mark is not the name of the goods.  The mark is a mark as at 2006 which another trader was using for a range of goods in the class and for goods which were not the appellant’s goods.  They were not probiotic products with the AB bacteria.  They were simply another trademark used by another trader who had an established trade of over 14 months in that same class of goods, using a different name and that is the limit.

Otherwise, for example, your Honour, what is to stop any trader – unless one has this concept of what is already in the market – saying, “I like your trademark.  Because you have it registered, I cannot use it.  I may not want to use it”.  Coles suing Woolworths because it decided that the fact of that trademark on the register stops me being able to use it.  Well, it is not just in the present case, the fact of the trademark being on the register.  It is the fact of the trade itself having already been and existing in the market.  So if this applicant, as an applicant should, is honest and bona fide in its trade it will not wish to appropriate for itself the trademark of another trader.

GUMMOW J:   That is a circular argument, is it not?

MS BAIRD:   Because if it is not bona fide then it would?

GUMMOW J:   Yes.

MS BAIRD:   Yes.  I am saying that that exposes the limit, if you like, of what is this interest of this trader.  This trader has eschewed any intention to use the mark “Health Plus”.  It has eschewed, in your Honour’s phrase, putting up the flag to say, “I want to use this mark”, or “I cannot because there is a sign there saying there would be dragons”.  What instead this trader comes to the court to say is “I am in the same trade”.  That is no more than trade, per se, and accepting the policy of the Act is that trademarks should be legitimately on the register where they do service a badge of origin, and where they are not improper, and that there is an interest in purity of the register.

What the legislature has said is the persons who can come to the court to say “We identify an occasion where a trademark is no longer used”, or has been used in a way by somebody other than the owner, or a person who may or may not be an authorised user – the legislature has said you must be aggrieved, and “aggrieved” there must have content, and it means something different from any person, we say, your Honour ‑ ‑ ‑

HEYDON J:   This question – cannot the appellant say to the Court, “The respondent and I are competing.  I have various advantages and assets and attractions, and the respondent has various advantages and assets and attractions.  The problem is that one of their assets is something that they should not have, that they have managed superficially or prima facie to have obtained it because they have a statutory monopoly.  They should not have that and I am aggrieved about that and I am entitled to try and establish that they should not have it”.  How does that fall outside the idea of “person aggrieved”?

MS BAIRD:   What your Honour has identified there in saying, “I am aggrieved by that”, and by “I am aggrieved”, in my respectful submission, what must be ascertained is that it is an objective state of grievance, not merely a subjective “It is because I say it is”, as I think the Earl of Selborne said.

HEYDON J:   Cannot the appellant say, “I may lose the competitive battle, or I might win the competitive battle, but if this advantage is taken away from them which they should not have, I might do better than I am doing at the moment”?

MS BAIRD:   Again, that is a mere assertion, and that assertion, your Honour, as ‑ ‑ ‑

HEYDON J:   Well, it is an estimation of future possibility.  You cannot prove such things in trade.

MS BAIRD:   Your Honour, that is simply to identify the fact of competing rather than competing by use of the trademark.  In my respectful submission, what such an applicant must say is, “That by reason of the trademark registration there is this area in which I might do better if it is not there”.  Now, in the present case, because the trademark is already used, the registration itself cannot found, in my submission, the claim that but for the registration I might do better, because what it actually is, but for this person already using the mark which they have registered, I might do better.  In my respectful submission, that is a different analysis and it is, to go back to our central point which is that the interest must have content and be objectively assessed, assessable, not as my estimation without anything to found it, to back it up, in relation to the trademark on the register.

HEYDON J:   Would it not be a reasonable inference that to trade under a mark that has been registered for some time is likely to be more advantageous than trading under the name “dietetic substance” or “pharmaceutical preparation” or “vitamins”? 

MS BAIRD:   Your Honour is identifying names that are the actual good itself, and that is not this case. 

HEYDON J:   I am inviting a contrast though between the mark which it is said is falsely on the register and some other mark or method of describing the goods.  It might be a purely generic method of doing it, as in those examples, or it might be some other mark.  Why is the appellant not entitled to say, “They would not be doing it unless they thought it was going to give them a competitive advantage, one may infer that it is giving them a competitive advantage, it is, we say, misleading that it should be so and unlawful that it should be so and I am entitled to stand before a court and ask the court to see whether that is correct”?

MS BAIRD:   Your Honour, we say that this trademark rather than any other trademark is really, as I understand your ‑ ‑ ‑

HEYDON J:   This is the one.

MS BAIRD:   Well, your Honour is actually saying a trademark rather than a descriptive name for the goods. 

HEYDON J:   I am comparing a trademark which arguably should not be on the register and a trademark which is not known about or in play at the moment but which is lawful.

MS BAIRD:   Your Honour, unless it can be established, in our respectful submission, that that possibility is a reasonable possibility and that is objectively assessed rather than a mere belief or mere concern, then, in our submission, that is no greater interest than a member of the public who says, “That person is using a trademark not registered, I may not want to use it, but I see that it is bad”.  What the trader, in our respectful submission, must establish, is that the mark on the register affects them. 

What we put in this case is that the mark on the register has not been shown by any evidence or any submissions to affect the trade of the appellant, save in the one respect identified here which is that it limits their ability to sue the other registered owner and that, of course, is a restriction only if the marks are deceptively similar.  Of course, if the marks were deceptively similar for other reasons, then the applicant would have standing because if the marks were deceptively similar, your Honour Justice Heydon’s point that it might affect me in my business or they might get a competitive advantage would be borne out.

Where the marks are not deceptively similar, it is no more than saying, as I think I have said, that Coles or Woolworths comes to this court and says, “In fact, Coles Grocery has not been using the trademark, but Davids Holding has been using the trademark”, and therefore there is – and I think I am rather out of date in who owns Coles – but another company within a family, but not necessarily corporately related, is using the trademark.  Where there is no intersection by reason of the trademarks in the trade, in our respectful submission, there is no interest and it is an insufficient interest to say it is a mark on the register which should not be there.  That is the same interest as a member of the public.  Being in trade does not elevate, in our respectful submission, that interest.  It may as a matter of fact be able to be established in a particular case ‑ ‑ ‑

CRENNAN J:   But the main plank in that argument of yours is that the marks are not deceptively similar, whereas the appellant says the marks are deceptively similar and, indeed, the endorsement under section 44(4) suggests that degree of deceptive similarity, and accordingly there is the potential for confusion in the marketplace.  It is not just that the appellant cannot sue your clients for infringement.  There is the potential for confusion between the two marks in the marketplace.

MS BAIRD:   Yes, your Honour.  The problem for the appellant in that case is first that – and accepting that it was the composite mark that was found not to be deceptively similar – but secondly, in our respectful submission, the trademark on the register would come to no different position.  “Inner Health Plus” is not deceptively similar to “Health Plus”. 

CRENNAN J:   You mean despite the endorsement on the register?

MS BAIRD:   The endorsement is a matter of history before Justice Cooper’s decision.  It does not limit, and it has not identified, anything subsequent to Justice Cooper’s decision.  The endorsement was put on, accepted – at the time of acceptance, acceptance occurred ‑ ‑ ‑

CRENNAN J:   Your client could not have been registered, presumably, without the endorsement?

MS BAIRD:   No, your Honour.  Our trademark is first in time, with respect, so our trademark is May 2001, “Health Plus”.

CRENNAN J:   I am sorry, I meant the reverse.  The appellant’s mark could not have been registered without the endorsement.

MS BAIRD:   It could not have been accepted without the endorsement at that time.  If your Honour remembers the chronology - May 2001, “Health Plus” is applied for.  September 2001, “Inner Health Plus” is applied for.  Inner Health Plus goes through a process of examination.  That examination concludes in approximately mid-2003.  At that time, there was opposition in the Trademarks Office, brought by the appellant asserting deceptive similarity against the respondent’s mark.  That assertion of deceptive similarity was accepted, one can assume, by the examiner because it was made by the second‑in‑time applicant, and was overcome by the second‑in‑time applicant showing its concurrent use - in fact, it is prior and concurrent use, so section 44(4) therefore the mark must be accepted.

The chronology continues, the opposition failed, the appellant appealed to the Federal Court in the Queensland registry appearing before Justice Cooper.  When the appellant appealed before Justice Cooper, at that time responsively the respondent opposed the appellant’s mark that had now been accepted, accepted with that endorsement.  His Honour Justice Cooper gave his decision in January 2005.  The respondent, Health Plus, immediately after the expiration of the time in which leave to appeal might be sought withdrew the opposition and the appellant’s mark proceeded forthwith to registration. 

Now, at that time it was certainly open to the appellant to go back to the – if it had made any difference at all to the registration, and it does not, but if it had made any difference to the registration, the appellant was open to go back to the examiner and say, “The marks have been found not to be deceptively similar, please re‑examine”.  They did not need to because they had already had the mark accepted, so there was no practical advantage ‑ ‑ ‑

CRENNAN J:   Yes, but their argument in the context of being a person aggrieved is that the marks are deceptively similar.  You are asking us, are you, to take Justice Cooper’s decision and on the basis of that find that that argument is not available any longer to the appellant?

MS BAIRD:   No, your Honour, not just on the basis of Justice Cooper’s decision.  The matter was also addressed by the primary judge in the first instance in this case and we say your Honours applying yourselves, should it be necessary, the test of deceptive similarity would find that these marks, looking at it on an infringement basis now as I understand your Honour to be addressing the matter, that the mark is not deceptively similar.

HEYDON J:   You point to the fact that Justice Jacobson held they were not deceptively similar and the appellant has never sought to challenge that in the Full Court or here?

MS BAIRD:   Has never sought to.  I should say, your Honours, in passing that, of course, the appellant ran and lost and did not appeal the section 52 case.  So it has already run the case that the marks are deceptively similar or there is misleading and deception in the marketplace; ran and lost and did not appeal that case.

CRENNAN J:   I suppose you would say that the argument that they are constrained from suing you for infringement lacks substance because of already having run all the arguments in various contexts about the deceptive similarity and having lost them?

MS BAIRD:   Yes.  The only argument that has not been formally run, I should say, is the argument that the plain words on the register “Inner Health Plus” are deceptively similar to “Health Plus”.  The only narrow difference ‑ ‑ ‑

CRENNAN J:   That is because the label was used before Justice Cooper.

MS BAIRD:   Yes, but the only difference, when your Honours look to the primary judge in this case, is an element of any test of deceptive similarity, which is the visual appearance of the marks.  By 2004, which was the next level of test because that is when the respondents came into the market, so that is for the section 52 case, there was a great deal of evidence of promotion and trade which was beyond the mark on the label; the bottle was not the only thing that was marketed.  If your Honours would pardon me a minute, I will find my list of where in the primary judge – yes, if your Honours could turn to appeal book 2 at page 716, Justice Jacobson, primary judge, is looking ‑ ‑ ‑

CRENNAN J:   Line 125.

MS BAIRD:   Paragraph 128.  Yes, your Honour.  His Honour’s conclusion was if the marks were deceptively similar, then “I would be satisfied that Health World is an aggrieved person”.  His Honour then, in paragraph 126, informs us of his conclusion, not dissimilar.  Then in 128 and following identifies the respects in which the principle of deceptive similarity – I referred to this briefly yesterday, your Honours, paragraph 129, his Honour first turns to the statutory definition in section 10.  His Honour then considers the principles in Crazy Ron’s. 

His Honour, relevantly we say, your Honours, says whilst their Honours in the Crazy Ron’s Case were dealing with the question of deceptive similarity in the context of trademark infringement, the same principles apply for section 60.  Of course, remembering that there are two limbs to section 60 as it then stood, the first limb being that the marks are deceptively similar and the second limb being the reputational intersection or impact, the potential for reputational impact.  The first limb, his Honour then turns to paragraph 131, “not to be judged by a side by side comparison”, “look and sound”, “due allowance for imperfect recollection”, “applied must be considered together with all the surrounding circumstances”.

CRENNAN J:   And his Honour is comparing the word “marks”, is he?

MS BAIRD:   His Honour is comparing the word “marks” but in the form, we do accept, in which they were used, because these are word marks.  The respondent’s mark is a fancy word mark, but his Honour discounted the fancy element.  His Honour then refers with principles which we did not understand, indeed, there was no appeal so there was no dispute, Australian Woollen Mills.  Your Honours, at paragraph 134 it is clear that his Honour is looking at the unregistered Inner Health Plus mark and the Health Plus registered mark, but his Honour first looks at different – paragraph 136 over the page at 718 – “different ideas and concepts” and looks at the concepts of Health Plus:

impression of enhanced health and well-being.  It is directed to the idea of overall or general health –

Your Honours will recall this has certain echoes from what was said by Justice Cooper about the Health Plus mark, to which I took your Honours yesterday.  Paragraph 137:

By contrast, the Inner Health Plus trade mark conveys the impression that it is concerned with a specific aspect of bodily health, namely internal health.

His Honour then goes directly to the visual comparison and identifies clear differences there and identifies that the “plus” emphasises the enhancement.  His Honour says:

No such impression is created by the look or appearance of the trade mark HealthPlus.  As I have said, it is concerned with general health and well‑being.

His Honour then turns to the aural impression and the aural comparison is, in our respectful submission, the comparison that the court would have on a test of infringement assessing the Inner Health Plus mark against the Health Plus mark.  His Honour there identifies a usual understanding or way of spoken English being accepted:

Here, stress and pronunciation would usually given to the first syllable of the word or mark –

Or, indeed, the first word of a mark, “Inner”, Inner Health Plus.

HEYDON J:   I just do not accept all of that, paragraph 141.  It does not seem to have any relationship either to life in general or this case.  People pronounce things in slightly different ways and these are very subtle differences, even where it does accord with reality.  Anyway, it is not challenged.

MS BAIRD:   Anyway, the appellant did not appeal on the matter, so in my respectful submission is ‑ ‑ ‑

FRENCH CJ:   Anyway, it all takes us to conclusion at 148, does it not?

MS BAIRD:   Yes, your Honour, and that is on the essential feature.  So his Honour is looking at what he says under principles which – in the June Perfect Case, a perfumery to which his Honour refers in 145, which was also referred to and relied on by the Full Court of the Federal Court in the Crazy Ron’s decision, that you look at the essential idea, and his Honour found and it was not appealed that the essential ideas were different.  In our respectful submission, any different conclusion is not open on the appellant’s case, given the finding of the court, given that there was no appeal from it and given that section 52 case was brought for misleading and deception and was rejected, dismissed and not appealed.  That is a different section 52 case to the one that was brought before Justice Cooper because the case before Justice Cooper was on the potential of Health Plus to deceive or cause confusion before ‑ ‑ ‑

CRENNAN J:   The likelihood.

MS BAIRD:   The likelihood, yes, there not actually being any trade at the time.  I would say that it was a different consideration, but it was different only in timing because what had happened was, Justice Cooper and Justice Jacobson considered the matter between 2001, which was Justice Cooper’s analysis as at the date of application, and Justice Jacobson’s analysis which is when the second trader in the fact in trade commenced its trade, which is August 2004, what was the situation in the market.

Your Honours, I was taking your Honours through the House of Lords decision in Powell, and I do not think I need to take your Honours further to Lord Ashbourne in that.  Before turning to the 20th century decisions, if I might briefly refer to two decisions of the Court of Appeal in the United Kingdom, indeed in the first instance in the case of Wright, Crossley and Co (1898) 15 RPC 131 - your Honours, this is the first instance decision which was approved in the Court of Appeal. I wish simply to take your Honours to this as an example of traders being in the same trade, but no intention to actually use the mark. Justice Romer at the bottom of page 132 of the report:

In my opinion, the Applicants in this case, looking at the whole of the circumstances, are not parties aggrieved within the meaning of the section.

Pausing there, your Honours, there are occasions and we say where there is a question of deceptive similarity.  It is often the case that the whole of the case needs to be before the court.  Accepting that it not need:

to show evidence . . . of great or serious damage; and I further accept the statement of the Court of Appeal. that a man in the same trade as the one who has wrongfully registered a Trade Mark and who desires to deal in the articles in question is primâ facie an aggrieved person –

Your Honours will recall that is what Lord Watson stated in Powell:

but only primâ facie; and the circumstances of the case may show that an individual Applicant is not a person aggrieved.  I think, notwithstanding what was said in that case, and has been said in other cases dealing with Trade Marks, that an Applicant, in order to show that he is a person aggrieved, must show that in some possible way he may be damaged or injured if the Trade Mark is allowed to stand; and by “possible” I mean possible in a practical sense, and not merely in a fantastic view.

Your Honours, in our submission, that meaning of “possible” as in a practical sense and not merely in a fantastic view, is one which has found its way through the later cases.  Re Wright, Crossley and Co is after re Powell.  His Honour then goes on to say:

Now, applying that principle to the case before me, is there practically any possible damage or injury occurring, or likely to occur, to the Applicants if this Trade Mark stands? . . . The Respondents in this case, whether they have a proper and good Trade Mark or not, are clearly entitled to sell their goods in their own name.

Your Honours, that would include in the present case that whether or not the respondent has a trademark, the user of the trademark before the date of the application for removal has a right to continue using it itself.  The Yorkshire Relish Case is distinguishable, as was the Stone Ale Case, line 24, your Honours:

In those cases, so long as the Trade Mark stood, other traders, including the Applicants in those cases, might, in a substantial way, clearly be hampered in their trade.  I cannot see anything approaching to that in the case before me.  As Lord Justice Bowen pointed out in the case of Paine and Co v Daniells and Sons’ Breweries, to which my attention has been called, the Court deals differently with Trade Marks according to whether the registration was on the face of it, as it were, originally illegal or improper.

Your Honours, I should pause there.  There was, I think, in that case a question of discretion for the removal.  There is here discretion but it is applied at a different point in time, not at the threshold point.  His Honour Justice Romer goes on to set out what Lord Justice Bowen said in Paine and Co v Daniells.  Paine and Co v Daniells was a case involving the trademark John Bull and various pictures of a John Bull‑like character.  His Honour concluded at the bottom of the page 133:

As I have said, all cases of this kind, where the original registration is not illegal or improper, ought to be ‑ ‑ ‑

FRENCH CJ:   This is just all designed to support the proposition that being in the same trade is not enough?

MS BAIRD:   Yes, it is, and also to say, your Honour, it is certainly not sufficient reason that they are at loggerheads with the respondents.

GUMMOW J:   I am not sure this decision is correct?

MS BAIRD:   Your Honour, that is what the appellants say and it does come back to this question about whether being in the same trade per se is sufficient.  In our submission, the same trade per se is not sufficient and the test, your Honours, that we say is relevant is being in the same trade and a possibility of using the mark is a prima facie test that may be displaced by evidence and, in our submission, the courts below have found that and that finding of no desire to use the mark again was not a finding that was the subject of any appeal.

GUMMOW J:   There is another aspect of the public interest which you should be aware of, I think.  If one has a registered trademark and it remains on the register, the registered proprietor in licensing arrangements has the advantages of escaping section 45 of the Trade Practices Act by virtue of section 51(3)(c) of the Trade Practices Act.  Now, this is an aspect of the public interest which has not previously had to be thought about, but it is there because a registered trademark proprietor has a privilege from what otherwise would be the reach, for example, 45 of the Trade Practices Act by virtue of what they can put in their licensing arrangements under section 51(3).

MS BAIRD:   Yes, and that deals with that element of competition, but again it is a ‑ ‑ ‑

GUMMOW J:   It is not exactly competition, it is competition in the sense of how they can deal with licensees, the restraints they can impose that they otherwise could not.

FRENCH CJ:   It immunises a certain ‑ ‑ ‑

MS BAIRD:   Yes, in the context of section 45.

GUMMOW J:   It is an immunisation, as the Chief Justice says.  It is a very significant matter.

MS BAIRD:   We are accepting that, your Honour.  But it is, again, in the context of section 45 and other sections of the Trade Practices Act.

GUMMOW J:   Yes, of course, 45 is the most obvious one, but not 48.  I do not think they get out of 46 or 48, I am not sure.

MS BAIRD:   Section 46 is beyond the ambit of this case ‑ ‑ ‑

GUMMOW J:   Monopolisation or resale price maintenance, I am not sure ‑ ‑ ‑

MS BAIRD:   Your Honour, may I briefly turn to ‑ ‑ ‑

GUMMOW J:   But this notion of public interest is something that moves with the times, that is what I am trying to get you to grapple with.

MS BAIRD:   We accept that there is a public interest in the purity of the register.  We say that interest is balanced in the test of “aggrieved person” and that question – whilst the test of “aggrieved person” is to be considered in a liberal way, it is not to be considered in such a way as to apply where the applicant for removal does not have a real interest itself in the removal of the trademark.

GUMMOW J:   Your client can extract from licensees promises it could not extract if the mark was not registered.

MS BAIRD:   Your Honour, we may there be going into questions of hypotheses to the future, and again, the ‑ ‑ ‑

GUMMOW J:   I am not talking about your client as such.  I mean a registered proprietor of a mark that should not be there.

MS BAIRD:   Your Honours, could I take your Honours briefly to the Union Label Case for a slightly different proposition – certainly Attorney‑General for the State of New South Wales v The Brewery Employees Union of New South Wales (1908) 6 CLR 469. Your Honours, remembering first that this is a constitutional case as to the validity of the workers trademarks provisions of the then Act ‑ ‑ ‑

GUMMOW J:   Was there not a big debate about the standing of the State?

MS BAIRD:   There was.

GUMMOW J:   To seek, in effect, a ruling as to invalidity of this federal statute?

MS BAIRD:   Yes, that part of it.  The case, your Honours, briefly – it is beyond the example for why I wish to draw your Honours’ attention, but briefly ‑ ‑ ‑

GUMMOW J:   But today, whatever the uncertainties in 1908, today it is pretty clear that the States have a sufficient interest to challenge validity of federal statutes without getting into questions of affectation.

MS BAIRD:   Yes, and indeed, your Honour, the question addressing the States’ entitlement to bring proceedings were slightly different from another party’s which were the four brewery plaintiffs, your Honours. 

GUMMOW J:   Yes.  But that is how they got into the question of standing.

MS BAIRD:   Yes, because there were four brewery plaintiffs and, indeed, it was of the suit of the four brewery plaintiffs that the Attorney-General for New South Wales itself ‑ ‑ ‑

GUMMOW J:   Mr Mitchell, who was for the plaintiffs, cited the Trade Mark Cases at pages 474 and 475.  Then there were various degrees of enthusiasm as to the applicability of the analogy.

MS BAIRD:   There were, your Honours, and the reason why I mentioned that it was a constitutional case, because there was also at that time a question about whether the brewery employee and the brewery companies had to have a cause of action, which is not something on which we rely.  All we say is the law present today, we are certainly not saying that.  What I did wish to identify for your Honours were certain passages briefly within each judgment where the ‑ ‑ ‑

GUMMOW J:   So whatever they say about Powell is only dicta, but given the detail in which they approach the question it may be dicta of some weight.

MS BAIRD:   Certainly, yes.  It is also, your Honours, the only previous time that a Full Court of this Court has considered the question of “standing”, “aggrieved person” in the context of the Trade Marks Act.  But it has these differentiating factors, and if I could take your Honours very briefly to 497 of Chief Justice Sir Samuel Griffith where his Honour - beginning at 496 - refers to re Powell.  At the bottom of page 496, the last paragraph:

Persons who are aggrieved are persons who in some way or other are substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained.  It is very difficult to frame a nearer definition than that.

Your Honours, just pausing there, when we come to The Ritz and in Justice McLelland’s encapsulation of the test of “aggrieved person”, your Honours will find substantially interested, or substantially damaged, will find some resonance – not the same words, but some resonance.  The next page, your Honours, at page 497, the third line:

To my mind, it is equally true that persons would be aggrieved if they are in the same trade, and might reasonably be expected to deal in the same article, though not prepared to prove at the moment that they had formed a clear determination to do so.

That is continuing the quotation from Lord Justice Bowen in re Powell.  His Honour approves that it is not only applicable to those who formed affixed and crystallised intention of dealing in the particular article of permitted to do so.

GUMMOW J:   But Sir Samuel Griffith was of the view that the breweries had standing, was he not?

MS BAIRD:   He was, your Honour, he was, and it ‑ ‑ ‑

GUMMOW J:   And he applies the reasoning in Powell at the bottom of 497:

in the sense that it hampers them in carrying on their business with the freedom which they are entitled to enjoy in the absence of any valid legislation restraining it.

MS BAIRD:  Yes, and, your Honours, we say that that means that it hampers them, it is a real interest, a real affect on them, an adverse effect on them ‑ ‑ ‑

GUMMOW J:   That was sufficient in that case.

MS BAIRD:   It was sufficient in that case, your Honour, and the particularities of the sufficiency are set out at 498.  I do not need to take your Honours to it.

GUMMOW J:   He is translating that into constitutional standing.

MS BAIRD:   Is what his Honour then did.

GUMMOW J:   Yes.

MS BAIRD:   Can I take your Honours next to Justice Barton.  His reasoning commences at 518 at the bottom of the page, the passage in the middle of the page, the second paragraph:

But when a plaintiff says to a defendant, “You are injuring my trade by registering this label as to the very article in which I trade.  Its continuance on the register hampers and embarrasses me in my business and must be injurious to it,” it seems to me that, if he can establish the truth of these propositions, he has a right to the assistance of the Court, and therefore is a competent plaintiff to be allowed to endeavour to establish it.

If he can establish the truth of this proposition, in our submission, is an indication that in many cases, indeed, the question of whether one has standing can only be determined after examination of the merits of the case and that it is not merely an assertion of injury, but an establishment of the truth of the proposition of injury or likely injury.  I am meaning there not in a hypothetical sense but back to real sense. 

Again, Justice Barton found that the parties were embarrassed in their trade, because here they had to make a decision, his Honour said, between whether they applied a worker’s trademark to goods and only use union labour or whether they do not and they are thus placed in a dilemma as to which constituency of customers they encourage and which ones are, if I can use it colloquially, turned off by such a label on their goods.  Justice O’Connor was to the same effect.  I do not need to take your Honours in detail, but it is at page 550. 

Justice Isaacs, whilst referring to Powell, found in the circumstances of the case that there were not – in the facts of the case, the brewery companies were not aggrieved.  At page 556, your Honours, at the bottom is a sentence I wish to draw your Honours’ attention to which, in my submission, are not taken away by the facts of the case in finding there that he did not find that the brewery companies had standing.  At the last paragraph:

If mere distant possibility of impediment dependent on conjectural occurrences be enough to entitle a plaintiff to challenge [in this case] the validity of an Act of Parliament, I do not see why any person in the community could not, immediately an Act was passed relating say to the incorporation of Banks, raise the question of its constitutionality, because he already has a legal power of associating with others to form a banking corporation –

Your Honours, Justice Higgins, at page 595, my learned friend has already taken your Honours to the passages there.  Can I merely note that in the middle of the page his Honour stated that:

the mover must have some possible interest in the entry in the register . . . Therefore the Court [In re Paine] held that a rival trader, who finds that the –

Not limiting to re Paine, he refers to re Paine, but then goes on to say:

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.

His Honour then refers to the facts in Powell’s Case and distinguishes them on the facts of this case.  Your Honours, my learned friend took your Honours to the Daiquiri Case and Justice Heydon yesterday identified as the next question whether we accept whether Lord Pearce was correct.  The decision of Daiquiri Rum Trade Mark is reported at [1969] RPC 600. Your Honours, daiquiri was established in this case as – used as a rum cocktail since 1920, as I referred to yesterday. It was thus in a similar category, being an improper mark, because it was a descriptive of a cocktail. Lord Pearce, the judgment beginning at page 614, identified second paragraph:

The proprietors took a commercial gamble when they bought and developed the trade mark DAIQUIRI RUM.  They had been warned by their agents of the dangers of confusion.  On the other hand, the advantages were great.  Both the dangers and the advantages arose from the same source.

That same source, his Lordship goes on to say, was that –

Daiquiri cocktails had by then become well‑known on their own merits, with help from certain writers of fiction.

His Lordship goes on to identify actually how it might be that “daiquiri” was used.  The last sentence in the third paragraph:

Indeed, the proprietors clearly acknowledged and emphasised this impulse –

to reach for Daiquiri rum when making a daiquiri cocktail –

when they laced their opening advertising campaign with constant references to the delights of Daiquiri cocktails.

His Lordship then identifies in the middle of the next paragraph at line 29:

The interest of the public is the dominant consideration –

which is a consideration we have already identified.  His Lordship then turns to the question of whether the applicant is a person aggrieved and quotes with approval Lord Herschell in the Yorkshire Relish Case.  At page 615 in the paragraph immediately under the quote – indeed, I think picking up a point your Honour the Chief Justice made earlier, was that his Lordship in Powell was looking at that particular case and so 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.

His Lordship then continues to talk about the origin of the Trade Marks Act 1975, the purpose of it being so that, unlike in passing off where you had to establish a reputation in the mark and that it was your exclusive use having the mark registered, that impulse led to the passing of the 1875 Act and that was a great advantage and that is then a corresponding disadvantage to his rivals.  That is, in the present case Lord Pearce is identifying a claim over the common, the common being the use of the name Daiquiri here for cocktails.  The conclusion of that paragraph:

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.

In our submission, his Lordship is there identifying that there has to be a real interest it has to be an effect, a real effect.

FRENCH CJ:   I suppose the question is in giving content to the notion of “person aggrieved”, getting away for a moment from the plethora of dicta, you have a dominant public interest in only having on the register that which ought to be on the register.  There can be no legitimate private interest in retaining on the register that which ought not to be in the register.  So the question is what is the counterbalancing public interest?  I suppose one possible counterbalancing public interest, which explains why one limits access to the right to challenge, is the need to maintain a degree of certainty and stability in the register so that registered owners of trademarks are not harassed by people coming in for all kinds of collateral purposes, coming under the general rubric of officious interferers or common informers, and so forth.  So the question really is if that is the counterbalancing public interest that rather suggests, does it not, a wider notion of person aggrieved than you are propounding?

MS BAIRD:   No, your Honour, I do not believe so because that counterbalancing interest applies in terms of a proprietor not being harassed, includes a proprietor not being harassed by a competitor for reasons extraneous to the trademark or extraneous to the interest that the competitor has in the trademarks.  So we say that these counterbalances are certainty of the proprietors – I think your Honour has expressed it really as freedom from harassment – is a freedom from harassment, not merely by officious members of the public, but by persons who do not have an interest ‑ ‑ ‑

FRENCH CJ:   You are saying that can only be avoided by a person with the kind of interest that you say is necessary to sustain the characterisation, “person aggrieved”?

MS BAIRD:   That might be a bit circular, your Honour.  I think effectively I am saying that yes, that interest is one that is encompassed by the phrase “person aggrieved”, as distinct from a person and that must give to the person aggrieved, in order to be a person aggrieved, an interest that is there affected by the registration and their effect by the person illustratively, the person who has an intention to use the mark or illustratively where a person may not have such an intention to use the mark, but it is a mark which is the name of the good and that general test ‑ ‑ ‑

FRENCH CJ:   But do you accept those are the counterbalancing public interests?

MS BAIRD:   Yes, I do.  I should expand perhaps the counterbalancing interest for the proprietor is of registered owners generally to enjoy the vested interest in their mark and accepting, your Honours, that there is a first step of attack on the mark before it is registered.  So that first step of attack on the mark is a person.  Now, my friend says, well, practically that is only people who read the official journal.  But it is not put as people who only read the official journal.  It is put in the statute as “any person” – “a person” may oppose a mark before it is registered.

So your Honours will see there is a balance drawn and, I think in our submission, content given to “person aggrieved” by the fact that there is a statutory entitlement of any person to apply before the mark is registered.  Now, that may weigh some greater weight on purity of the register, but again it still must come back to this contrast between a person before registration and an aggrieved person after registration.

Your Honours, can I turn now to the Ritz Hotel decision - Ritz Hotel Ltd v Charles of the Ritz (1988) 15 NSWLR 158. His Honour considered the authorities and formulated a test for the purposes of the matter before him at page 193. His Honour says at 193F:

It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed -

Pausing there, your Honours, we submit that real interest is another way of saying what has been said in the dicta of all of the previous cases, that there must be an interest over and above a member of the public, and an interest which is demonstrated by an effect of the trademark registration on the business, or potential business, or on the person claiming to be aggrieved.  “Real” there may be contrasted with not fanciful, not unreal or not a mere concern.  His Honour then gives content to the expression in the next paragraph, including, accept that is inclusive:

any person who would be, or in respect of whom there is a reasonable possibility of his being –

Your Honours will note that the case to which I have referred referred to reasonable possibility.  Indeed, Lord Watson identified possibility and then contrasted that with there being no real probability of, in fact, using the mark:

of his being, appreciably disadvantaged.

Your Honours will note from the passage of Lord Justice Bowen, to which Sir Samuel Griffith referred in the Union Label Case that “appreciably disadvantaged” could be another way of either saying there is a reasonable possibility of disadvantage, or substantially damaged.  It is not necessary to read “appreciably disadvantaged” as meaning that there must be actual harm established, for indeed there was not actual harm of any great measure whilst there was potential harm established in the Ritz Hotel.  But what there is, and here is where his Honour has widened the case from the test from the earlier cases:

a legal or practical sense.

So that, whilst many of the earlier cases before re Powell in particular identified that there was a legal sense only in which they might be disadvantaged, it is certainly extended to practical sense and we do not cavil with that.

His Honour, in rejecting the submission that there must a trade rivalry by demonstrating actually in trade or fixed a present intention, certainly, in our submission, does not there say that where there is no trade rivalry and there is no intention, that means that there is nonetheless a real interest or an interest from person aggrieved.  It comes back to the facts of each case. 

GUMMOW J:   It comes back to the subject, scope and purpose of the Trade Marks Act, it seems to me ‑ ‑ ‑

MS BAIRD:   It does, your Honour, and within that whether the ‑ ‑ ‑

GUMMOW J:   - - - which does not receive much analysis in some of these decisions.  The matters the Chief Justice put to you seem to slip out of sight.

MS BAIRD:   I think in many of the cases, your Honour, there remains an identification of there being the notion of the public interest in the register and the purity of the register.  The analysis is mostly turned on the standing of the particular person in the particular case.

GUMMOW J:   That is true, whether it was sufficient.

MS BAIRD:   In some cases, yes, and in some cases not.  In this case, of course, it was in Ritz and it certainly was there because Ritz had already at that time, by licensing and by its own activities, expended an interest and present intention to engage in a range of uses of its Ritz trademark, a trademark which was deceptively similar – well, the same as and in many instances deceptively similar to the marks on the register which was sought to be removed.  Without taking your Honours to it, at pages 185 and 186 of the decision his Honour summarises the trading activities and potential trading activities of the plaintiff.  His Honour concludes, at page 195, that those plaintiffs’ interests included using the name “Ritz” by character merchandising, which may not give it a trademark interest itself, particularly in the particular goods of the registration sought to be removed, but that this activity of character merchandising, at page 195, point G:

would be likely to be appreciably inhibited by the registration by someone else of the mark intended to be the subject of merchandising, or a mark of which that mark is a significant element, in respect of the same, similar or associated goods.

We say “significant element” there means deceptive similarity in the trademark sense.  So, your Honours, we do not say that Ritz has on the face of his Honour’s decision sought to narrow the test of aggrieved person to what was said from their Lordships In re Powell or from Lord Pearce in Daiquiri.  What it does identify is in the particular instance persons in trade may be appreciably disadvantaged.  Appreciably disadvantaged we say means no more than exclude sentimental, fanciful, hypothetical, must be real, a real interest.  That is the interest that Lord Powell identified.  Kraft, your Honours, I can dispose of fairly simply.  In Kraft Foods Inc v Gaines Pet Foods (1996) 65 FCR 104, his Honour Justice Sackville commences his discussion of person aggrieved at page 111, accepting the starting point the observations of Lords Watson and Herschell in Powell. His Honour then, at page 113, and importantly at point B, identifies various persons who have been identified as persons aggrieved in the same trade and who shows they will use the mark is ordinarily a person aggrieved.

A trader who 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 . . . The inference may be rebutted by evidence from the objector –

Pausing there, your Honours, Justice Sackville is doing no more than reiterating what was said by Lord Herschell and Lord Watson In re Powell, that is, there is, in Lord Watson’s decision, prima facie that a person in the same trade and could use the trademark can be rebutted and rebutted by evidence.  His Honour then identifies other persons who are types of aggrieved person.  That does not mean that persons who do not fit within this category are not aggrieved.  We come back to that there must be this interest.  His Honour in paragraph E on page 113 says:

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.

We adopt what the Full Court says on this point, which is merely not being a person who is an officious interferer or a common informer does not define the class of who is a person aggrieved but defines a category of persons who are not.  His Honour then refers to Wright Crossley in the phrase that I took your Honours to, Justice Romer, at the bottom of page 113, point G:

possible in a practical sense, and not merely a fantastic view.

In the present case his Honour found that the mere filing of an application for registration of the trademark Gaines in respect of dog and animal foods where there was no evidence at all of any – that Kraft was a trade competitor of Gaines in Australia in the sense that it manufactured or sold animal foods in this country, without any evidence of intention to use and trade competition in that case the person was not a person aggrieved.  His Honour’s conclusion is reached at page 116 at point D:

But the fact of filing the application, of itself, does not establish that the applicant is a person aggrieved for the purposes of proceedings under s 23(1) of the TM Act –

meaning the 1955 Act.  His Honour continues at paragraph E, part way through the next paragraph:

It is hardly a significant burden to require a person seeking to remove a blocking mark, either to support his or her own application with probative evidence of an intention to use the mark, or to adduce such evidence in the course of the removal application.

That is referring to the particular case –

Moreover, the rationale underlying the requirement in s 23(1), that the applicant for removal be a person aggrieved, is to ensure that the applicant is not a mere common informer or officious interferer –

as a class excluded –

By lodging its application for registration the day before its application for removal of Gaines’ mark, without any probative evidence of an intention to use the mark, Kraft has not shown that it is anything other than an officious interferer.

GUMMOW J:   I just do not think that sort of approach is part of the real world really.

MS BAIRD:   What it could mean though, your Honour ‑ ‑ ‑

GUMMOW J:   A body like Kraft Foods does not go round bothering people.  It is a large corporation.

MS BAIRD:   Yes, your Honour.  What it does show that is if ‑ ‑ ‑

GUMMOW J:   It is not, to put it in colloquial terms, “a ratbag”.

MS BAIRD:   ‑ ‑ ‑ if a person can come to the Court and say, “I am aggrieved because I filed a trademark application”, without more then it is - in our respectful submission “without more” does not show any intention that they are aggrieved.

FRENCH CJ:   So does it put it into the category of an officious intermeddler, does it?

MS BAIRD:   It does, merely filing the application at the point of filing.  Now, it may be that what one then finds, your Honours, is that the mark is subject to examination and that examination shows that it is indeed not going to proceed to registration then there becomes a live question about is it, as in Continental, a block to the person’s use in the course of trade.

Now, what of course there has to be with filing - with an application for registration is an intention to use the mark, either current or not.  Without that intention to use the mark – and this is really what his Honour Justice Sackville, in our respectful submission, was saying, there is nothing more than officious interference.

GUMMOW J:   The problem with his Honour’s reasoning, if I could put this to you, is ‑ ‑ ‑

MS BAIRD:   Your Honour, his Honour was also ‑ ‑ ‑

GUMMOW J:   Just a minute, the trouble with his Honour’s reasoning is that it does not begin an analysis with the dominant public interest and the purity of the register.

MS BAIRD:   No, your Honour.  His Honour does turn to that at the end, but not in a way ‑ ‑ ‑

GUMMOW J:   It should be at the beginning.

MS BAIRD:   ‑ ‑ ‑ that does that.  Accepted, your Honour.  The Full Court, in the present case, did not rely on Kraft for its reasoning, save to identify that the test which is really the position from Lord Watson in re Powell that being in the same trade and the possibility of using the mark can be rebutted by evidence.  That is the point on which Kraft is relied on, if it is relied on, by the Full Court.  So that the decision in Kraft was not and is not necessary for the Full Court’s reasoning.

Your Honours, I have in the course of my submissions so far, I think, addressed at least several of the grounds on which the appellant asserts that the Full Court was in error.  The appellant also asserts that there was a conflation of the grounds of rectification with standing.  Can I take your Honours to the Full Court decision at volume 2 of the appeal book - the decision commences at page 751.

The contention of the appellant is that the Full Court conflated the question of standing with the actual grounds for rectification.  In our submission, the court did not do so and was concerned to demonstrate that the primary judge had not done so.  It was first to bear in mind that the court may need to consider the question of the grounds raised in standing in the legal and factual context of the case before it and ‑ ‑ ‑

FRENCH CJ:   The question of whether one characterises the reasons as conflating those matters or not in a sense is almost incidental, is it not?

MS BAIRD:   Yes.

FRENCH CJ:   I mean, the heart of this debate is really about the content of the test imposed by the requirement that the person applying for rectification be a person aggrieved.  I just do not want to get us distracted into a sideway ‑ ‑ ‑

MS BAIRD:   Not going over ground we already need to have gone over, yes.

FRENCH CJ:   Even though it is - I appreciate it is part of the argument, just put on the other side.

MS BAIRD:   Yes.  Your Honour, it is set out in my submissions commencing and following from page 56.  Your Honours, what however is relevant to the way the court approached the matter at first instance and, indeed, on appeal is that the applicant particularised its grounds for standing as being that the marks were deceptively similar and that it had a reputation, which by reason of its mark at a later date, its use and the deceptive similarity of the respondent’s mark meant that it was aggrieved.

So central to the appellant’s case as particularised, pleaded and relied on during the conduct of its case was this notion that the marks were deceptively similar and that it had potential reputational interference.  It is, in those circumstances, when considering the question of standing, the question of deceptive similarity must be addressed and an appropriate way to address it was to look at the legal and factual context of the debate.  Your Honours, commencing at paragraph 23 at page 767, the Full Court notes that:

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 a matter of a statement because in this particular case, there having been no appeal from the finding of the trial judge that the marks were not deceptively similar, the inquiry into what is misleading or deceptive was bound by that finding.

The question as identified by section 88 is that it is not merely that the marks are deceptively similar but there must be an effect on the applicant and whilst the Full Court then goes on to say that the general test laid down by McLelland in Ritz is that an applicant is aggrieved if there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense, in our submission, what the court is there doing is saying no more than that there must be an effect on an applicant, or a likely effect, that would bring the applicant within the test of being an aggrieved person. 

The court refers to the assent of the Full Courts on the test in Ritz.  Looking at the practical matters before the court, the first question then was, are the marks deceptively similar.  That has been already established as no, they are not, but is that where the marks are said to be deceptively similar, is there likely to be any impact is a question of reputational potential interference.  That showed that in the facts of Campomar where of course the marks were not in the same class, the question was really just what was the position in the market. 

The court, noting then that the test for 88, aggrieved person, is not exactly the same as the test for section 60 grounds because what we are looking at there is not necessarily deceptive similarity for the applicant’s mark or of an applicant’s reputation.  By paragraph 100 of 26 and the reference back to an interest in the reputation such that the misleading or deceptive nature of the impugned mark matters in the sense described by Justice McLelland in Ritz, in our respectful submission, the Full Court here, Justice Perram, is saying no more than that there must be a real interest.

FRENCH CJ:   He seems to say that had there been deceptive similarity that would have been enough, but that is not the end of the question.

MS BAIRD:   Yes, and not the end of the question because it had to be deceptive similarity in relation to a mark which was the applicant’s mark and there being a reputation.  His Honour then looks at reputation, but at paragraph 30 concludes that where there needs to be reputational impact that must be read, in line 4 of paragraph 30, as a potential for reputational impact, not as meaning actually having harm occurred.  That is by reason of referring back to paragraph 24. 

The conclusion that had the marks been deceptively similar, there would have been a grievance, is a conclusion which is based on the Full Court’s analysis, but what the primary judge did was not look merely at whether the marks were deceptively similar, but whether this applicant had a reputation that was intersecting – by reason of deceptive similarity it would be intersecting interest, in other words, an area of interference, or potential interference on the facts of this case.  Our submission, there is no suggestion or necessity in this paragraph 30 for there to be any great weight attached to the nature of the potential reputational interference, by which I mean, there is nowhere suggested that actual harm had to have been suffered but there had to be a potential for interference by the intersecting reputations.

His Honour then in paragraph 31 addresses the additional matters that the appellant raised outside the question of its reputation and of deceptive similarity.  The court addresses common informers with a statement with which we adopt, is that:

membership of one class is not proved by demonstrating non‑membership of another class.

That leads into the next consideration which the appellant says “Well, we are in the same trade, and indeed we deal in goods of the same class”.  There, Justice Perram accepts that as a prima facie rule and says that may be rebutted – which is what Lord Watson identified ‑ ‑ ‑

FRENCH CJ:   He finds the rebuttal in paragraph 34.

MS BAIRD:   He does, and that rebuttal is consistent with the authorities and, indeed, saying that here is this finding of an inconsistent intention to use the mark and thus if you tie it back to what is the interest of the applicant in the removal of the mark, the interest of this applicant is certainly not so it can use the mark itself.  It has no interest there.

Then there was a question of possibility - and this is the submission made by the appellant, that it was a person of whom there was a reasonable possibility of being disadvantaged in a legal or practical sense.  Again, the court here says what, in our submission, should be self‑evident is that there has to be some disadvantage.  Legal or practical can be as against hypothetical or fanciful as against a mere concern without any substance, and that the mere making of an allegation of deceptive similarity, mere making without it being established as Justice Barton said in the Union Label Case, or indeed as Lord Watson said by looking at the reasonable possibility of use, should not confer standing.

FRENCH CJ:   It does not get you there without goodwill, which is the way it is put.

MS BAIRD:   It does not get you there without – it does not have to be goodwill, your Honour ‑ ‑ ‑

FRENCH CJ:   I am just looking at the reasoning of the court.

MS BAIRD:   Yes, it may be that there is other legal disadvantage in a legal or practical sense.  This appellant identified it as being the possibility of being the marks were deceptively similar.  That is what the appellant argued.  There were then other matters – I am sorry, your Honour?

GUMMOW J:   I think the trouble started, as the appellant would see it, at page 715 in the primary judge’s decision.  There were some very succinct statements of principle in the primary judge’s reasons at page 715 ‑ ‑ ‑

MS BAIRD:   Paragraph 119.

GUMMOW J:   Paragraphs 118 and 119, this notion of real interest.  There is a citation of Continental Liqueurs at 427 of 103 CLR.  In fact, it has to be read with 428 and what Justice Kitto said:

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”.

He was saying that that was sufficient.  He was not saying something else could not have been sufficient ‑ ‑ ‑

MS BAIRD:   Your Honour ‑ ‑ ‑

GUMMOW J:   Just a minute.  Then there is the citation of Ritz Hotel, pages 193 and 194 of Ritz Hotel which has the same characteristic, and then there is a citation of Kraft Foods which, on the appellant’s case, misunderstands what is being said in Ritz Hotel.  So the statements of what in particular cases were sufficient is somehow turned into a requirement of necessity for any case and what does not receive attention is the primary question of construction of the statute to see what is the mischief that is being addressed.  We can argue from here to kingdom come, but that seems to me to be the issue that is presented for us.

MS BAIRD:   That has two parts to it, your Honour.  First of all the statement of the test and then, of course, the application of such a test to this appellant.

GUMMOW J:   Yes, well, barristers love the word “test” because, without being unfair to them, it is a relief from further intellectual analysis of what is involved ‑ ‑ ‑

MS BAIRD:   Certainly, your Honour, we do not, and I think I have said this already ‑ ‑ ‑

GUMMOW J:   ‑ ‑ ‑ in construing a statute.

MS BAIRD:   We do not cavil from the purity of the register.

GUMMOW J:   And it is a comfortable means of getting adrift from the statutory text, its meaning and purpose, and this litigation, on one view of it, is a prime demonstration of this difficulty.

MS BAIRD:   At paragraph 119 of the primary judge the “real interest” is identified and “or one who would be appreciably disadvantaged”.  The real interest is consistent with statements that have been said in the public law context – we appreciate that is a different context – of what an interest of a person who comes to the court should have, needs to have, as distinct there from a person with mere concern, however deeply held.  One finds that characterisation in the judgments of Chief Justice Gibbs and Justice Mason at the time in the Australian Conservation Foundation Case and, indeed, mere interest or mere concern was identified as insufficient in relation ‑ ‑ ‑

GUMMOW J:   Are you talking about Onus v Alcoa?

MS BAIRD:   No, I was not speaking of Onus v Alcoa, although that also addresses it. 

GUMMOW J:   That is an injunction case in a public law context.

MS BAIRD:   Yes, it is and, your Honour, there ‑ ‑ ‑

GUMMOW J:   It is Boyce v Mayor of Paddington, is it not?  It is that setting?

MS BAIRD:   Yes, I am not too sure, I may be incorrect, in a decision where ‑ ‑ ‑

FRENCH CJ:   I may be wrong, but I think that it was.

MS BAIRD:   ‑ ‑ ‑ it is the interest need not be material.

FRENCH CJ:   Well, there we are talking about special interest.  We are in a different area of discourse, really.

MS BAIRD:   Yes, a different area, and really what comes out of some of those cases – I think it might be the Batemans Bay Case, for which I do not have the full citation in my mind – is that on those special cases that the interest may be not a material interest, in other words, one of a cultural or heritage significance, which has been our submission outside the present circumstance.  What I was seeking to identify was that in the Australian Institute of Marine and Power Engineers v Secretary, Department of Transport 13 FCR 124 – I do not need to take your Honours to it in detail - your Honour Justice Gummow there referred in the context of person aggrieved to note ‑ ‑ ‑

GUMMOW J:   It is in the AD(JR) Act is it not?

MS BAIRD:   It was, your Honour, that:

mere “interest in a problem” will not suffice, injury to legal rights is not essential –

Your Honours, that is at page 131.  Then the Court there turned to a consideration of the public law context, again to say, at the bottom of page 132:

whilst a mere belief or concern is not sufficient, a “special interest” over and above that enjoyed by the public will suffice.

It was a strange result that the AD(JR) Act posited by the use of the concept of grievance, some narrower criterion.  There is an element to which that reasoning is applicable to the present case and if that flows, then what we are identifying is that mere interest in a problem is not suffice and special interest, but used special not in the sense of proprietary or legal or equitable.

FRENCH CJ:   I think we have the message that the core of your case seems – I hope I am not oversimplifying it, but the only boundary fence that is going to keep out these hordes of officious intermeddlers is one defined by reference to interests in the sense that you have been seeking to explain it.

MS BAIRD:   Certainly, your Honour, and that we do not say that the class of – that a person aggrieved is everybody who is not a common informer or officious interferer.

FRENCH CJ:   There is daylight between those two categories?

MS BAIRD:   I do not know that it is daylight, your Honour.

FRENCH CJ:   A space, a gap.

MS BAIRD:   There is some, yes, indeed.  Daylight second.  It can be put perhaps no clearer than to say that non‑membership of the class “common informer” does not make one the person aggrieved.  If we go back to Lord Herschell there has to be an interest at all and the context of that case and the later cases to which I have taken your Honours show that that interest has content.

FRENCH CJ:   Critical to that proposition is its interface with the analysis based on these competing public interests, that is, the interests of the public in a register on which only those things appear which ought to appear and on the other hand the interests of the public in not having the security of the register eroded by frivolous interventions or interventions which are not disciplined by some form of interest.

MS BAIRD:   Yes, that is critical to the overarching of the balance of interests and then within that one does look at the applicant themselves and coming back to the - first of all then having looked at the context of the statute and the policy of the statute one comes back to the Chief Justice, Sir Samuel Griffith’s statement.  Having looked at the statute and that purpose:

Whether a person is aggrieved or not by the act of another depends upon the nature of the act complained of -

Here, the fact of this registration and the manner in which it will affect the complainant, bearing in mind these policy and purposes objection.  In some, your Honours, on any basis when one considers the propositions put forward by the appellant as having an interest in this case it has no interest above that of any member of the public in seeking to rectify the register and that is the interest of a person and so we come back to the structure of the Act, again, and its distinction, which it has done with this balance of interest before registration and after registration, section 52 as against section 88 and section 92.

Your Honours, I have addressed in our written submissions the particular ways in which the appellant asserts error of the Full Court and unless I can assist your Honours any further those are our submissions.  Thank you.

FRENCH CJ:   Thank you, Ms Baird.  Yes, Mr Burley.

MR BURLEY:   Your Honours, permeating our learned friend’s submissions is the defence of the proposition that in order to be a “person aggrieved” under the Act a party must be appreciably disadvantaged in a legal or practical sense, for the reasons I have submitted.  “Practical sense” has been understood by the Full Court below as being akin to harm or actual damage.  Part of our friend’s submissions concerned the proposition that we were unable to rely on the question of person aggrieved on the proposition that was advanced that the Inner Health Plus trademark was deceptively similar to the prior application and then registration of Health Plus.

In our respectful submission, that proposition is incorrect.  It is incorrect as a matter of analysis and as a matter of fact.  As a matter of analysis, the question of the test for “person aggrieved” is as at February 2006 or July 2006, being the dates when the applications were filed.  That is the date at which the question of deceptive similarity is to be tested, having regard to the state of the register.

The only decision prior to that date was the decision of Justice Cooper, who was there considering an opposition to registration brought on the basis of section 60 of the Act and section 42(b).  Those sections obliged his Honour to consider on the question of suitability for grant of the trademarks whether or not, on the one hand, the actual use of the words “Inner Health Plus” in the context in which they were used by Health World were deceptively similar and by reason of their reputation were deceptively similar, not the question as to the state of the register.  That was significant and becomes significant when one has regard to the actual decision that Justice Cooper handed down, him at that point considering a factual circumstance applicable at the date of application for the Health Plus mark, which was in about February 2001.

CRENNAN J:   Is that why he is concentrating on the labels, not on the Inner Health Plus word mark simpliciter?

MR BURLEY:   Yes, precisely.  That is the point we are wishing to advance.  His Honour at paragraph [27] of his reasons said, “The label was substantially similar to ‑ I am sorry, your Honours.  If I might invite your Honours to turn briefly to that decision, Health World v Shin‑Sun, 64 IPR 495. I think my friend handed up a photocopy of it at the outset of her submissions. His Honour was considering at a completely different point in time relevant to the person aggrieved test, some four years earlier, the question mandated under section 60. Your Honours might see from paragraph [27] of the judgment, which appears at page 501 of the report, that his Honour had regard to the reproduction at paragraph [26] of a particular label which his Honour considered as a whole.

The context in which his Honour was considering this was the development – because this is important to the reputation of the marks which was tied up in the question for section 60 – by the appellant of its line of goods, which, as the cross‑examination set out in paragraph [24] explains, was the development of a range which started in 1991 of products called Inner Health, and Inner Health powder was the particular product, and then the addition of the word “Plus”, as far as the appellant was concerned, happened afterwards.  So at paragraph [27] his Honour Justice Cooper says:

The label was substantially similar to the “Inner Health” label in Ex 3 save that the word “plus” replaced the word “powder” and was printed in orange rather than blue print and the words “High Potency Probiotic Capsules” appeared under the white circular area which included the words “inner health” and “powder” and “inner health” and “plus” respectively.  Both the “Inner Health” and “Inner Health Plus” products continue to be sold by the applicant as alternative choices to consumers.

So his Honour was there very much considering the mark in the context historical as well as actual use of the mark.  At paragraph 34 his conclusions are:

The mark INNER HEALTH PLUS as it appeared on and in context in the labels in May 2001 conveyed two discrete ideas.  This was because of the location of the word “plus” and the use of a contrasting colour to starkly distinguish the word “plus” from the words “inner health”.  The word “plus” also appeared in the context of the words below – “High Potency Probiotic Capsules” which conveyed the message of enhanced or more efficacious operation of the product to bring about “inner health”.

His Honour continued in the following paragraphs to analyse the marks, but it is quite apparent that his analysis was, in the context of use, in the context of the development of the marks and therefore in the context of public perception as to the actual use.  Now, that, of course, is quite a different analysis to that required for a question of deceptive similarity when comparing two marks on the register, as one would in section 44 of the Act, and it is the complete obverse of the analysis that would be made for an infringement case under section 120 of the Act where the trademark under scrutiny would be Health World’s Inner Health Plus, having regard to the range of goods for which it was registered, as against the actual use by the respondent, in this case putatively the respondents here, in the circumstances of their use. 

So, with respect, for our friends to say that there is somehow foreclosure from that argument, or was relevantly at the time that we were advancing the proposition that we are a person aggrieved, is one which reverses the analysis and is incorrect.  Justice Jacobson, to the extent it is relevant, because that was, of course, well after the threshold question arose and really does raise the circularity question to what extent his Honour’s ultimate findings are relevant to the person aggrieved, again does a different analysis and it matters not, in our submission, that there was no appeal from it. 

So Justice Jacobson also had regard to actual use.  If I could invite your Honours to turn to appeal book volume 2, page 704, at the top of the page there is a colour reproduction of the bottle which his Honour was reviewing.  Paragraph 51:

The colours and wording on the bottles are of some importance.  I will refer to them and set out words which may be difficult to read in the reproduction of the exhibit.

He goes and looks at that.  That is, of course, not a question that is relevant in the question of trademark infringement if one were considering the state of the register for a mark for Inner Health Plus against some other conduct and his analysis continues.  Then turning over to appeal book 2, page 709, his Honour considers the assessment of reputation of Inner Health Plus and at paragraph 80 says:

At the heart of the dispute between the parties is the question of whether the reputation of the Inner Health Plus capsules is, and was at the relevant date, separate and distinct from the reputation of the Inner Health Powder.

That is again a reference to the development of the trademark historically from 1991 through to 2000 when the Inner Health Plus mark started to be used.  Then in paragraph 94 at page 711 his Honour says:

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.

Again, influenced by that history which leads to the conclusion set out at paragraph 102 on page 712, the last sentence:

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.

Again, in the part that dealt with ‑ ‑ ‑

GUMMOW J:   What is his Honour identifying by the phrase “the essential message and reputation of Inner Health Plus”?  What is he talking about, a business, a trademark, a label, advertising, what?

MR BURLEY:   I think it might be a mixture of those, your Honour, but with particular reference to the trademark.  Later on in the judgment, in the passages to which my learned friend referred at page 717, his Honour poses the question of whether the Health Plus mark was deceptively similar to the Inner Health Plus trademark.  In that context, in our submission, that is not to be divorced from the previous analysis that is part and parcel of it.  In expressing his opinion – the passages to which my friend referred but did not read include in paragraph 138:

Visually, the marks are very different.  The impression that the person of ordinary intelligence and memory would have of the Inner Health Plus mark is that of the dominant name and phrase, Inner Health.  This appears on the bottle in the same shade of blue as the cap and in a similar shade of blue to the words, “High Potency Probiotic Capsules”.

The word “Plus” on the bottle, in bold orange colour, emphasises the enhancement that the product brings to the internal health of the consumer.

CRENNAN J:   His Honour is using the principles that would normally be applied to infringement, but is still not comparing the word marks.

MR BURLEY:   Yes, with respect.  So he is highly influenced, it appears, by the different colour - “Inner Health,” different word and different colour, “Plus” and so forth.  Without dealing with that analysis it is quite apparent that that is not the same analysis that would be required for an infringement test or for a test as to deceptive similarity between two marks.  That indeed points to the relevance or one of the several interests that we have, because quite plainly our interest as a registered trademark owner would confer upon us a better and stronger right than the common law interest by the unregistered mark.  This type of comparison points just to that fact.

CRENNAN J:    In your cancellation and removal applications, are you relying only on your registration or are you proposing to rely on reputational evidence?  In other words, are you going to be introducing the labels into the arguments about cancellation and removal of the respondent’s mark?

MR BURLEY:   The reason why I am hesitating, your Honour, is to separate firmly in my mind the difference between the cancellation, the grounds of revocation relied upon, which are non-use effectively, or deception or confusion caused internally ‑ ‑ ‑

CRENNAN J:    It is really the cancellation application, I suppose, that is most relevant?

MR BURLEY:   Yes.  For the separate threshold question of standing we rely on the deceptive similarity and on our prior use as a trader in the trade within the course of goods.  But, of course, the grounds in which we are ultimately successful, subject to the question of “person aggrieved”, did not have any of those factors involved because the non-use application depended entirely on the respondent’s conduct and the deception or confusion visited on the register arose as a result of Shin-Sun, the registered owner, not being the user, but Nature’s Hive rather being, and so they are quite separate conceptional points.

CRENNAN J:   Arguments, yes.

MR BURLEY:   The conceptional point that we would emphasise and in considering the question of interests affected as a person aggrieved, the affectation of interest runs across the spectrum but at the highest point, from our perspective, includes a legal interest, that being our interest in being able to sue for the breadth of the registration.  That is unrelated to the grounds but is related to the interest as a result of the mark which is impeding our activities. 

HEYDON J:   You say that, notwithstanding your defeat in front of Justice Cooper and your defeat at the hands of Justice Jacobson, you are still at liberty to contend in support of the proposition that you are a person aggrieved that there is an irrelevant sense not considered by those two judges deceptive similarity?

MR BURLEY:   Yes.  The reason for that is that whatever his Honour found was not deceptive similarity of the same character as that which we are asserting.  That is one factor in our standing argument.

HEYDON J:   I am just reaching for security.  Are there any paragraphs in your written submissions that make the point you have been making in the last 10 minutes?

MR BURLEY:   I do not think so, your Honour.  But that is indeed reaching for security because, on our submission, the correct test for establishing standing is a far broader one than that which our friends contend for which arises from the first 10 lines of the relevant passage set out by Lord Herschell.  We have submitted that the second aspect of that which our friends have referred to in their submissions as being the statement of principle, are a non-limiting example chosen by his Lordship as a part of the proposition relevant to the facts of that particular case.

As far as Powell’s Case is concerned, in our respectful submission, the example given in the second part of the passage of Lord Herschell concerns a particular example where a trader might be inhibited in his or her conduct of trade but that is only one part of a type of harm that might be visited upon a trader.  The other side of the coin is that which Lord Pearce addressed in the Daiquiri Case which is not only an inhibition in use but also an interest affected by way of an advantage given to a trader over and above that which a competitive trader might have.

In our respectful submission Health World is able to point to that advantage being the presence on the register of a mark which is deceptive or confusing and which is for two‑thirds of the trademark which the appellant has, Health Plus against Inner Health Plus.  As part of the public dispute, the public register, the advantage given by that includes all of those to which our opening submissions addressed and, in our respectful submission, our learned friend’s submissions ignored that component, not only the disadvantage to the trader which is intrinsic by any registration which would or could prevent a trader from using the mark but also the advantage given to a trader by reason of having something on the register and that is not addressed in our friend’s submissions.

In relation to the Wright and Crossley decision, our learned friend did not address specifically in relation to the decision of the Court of Appeal, which is reported in (1998) 15 RPC at 377 – I think I said 1898. There the Master of the Rolls appears in his reasoning to have been affected by the thought that the applicant for rectification was in some respect vexatious in the bringing of the application. In the passage at page 379, the third sentence down, about line 4, his Lordship said:

What they are driving at is this, and their grievance is this, not that they are aggrieved, or can possibly be damaged by this particular entry on the Register, but that they think that they will be damaged if their Opponents get any Trade Mark on the Register.

That appears to have affected his reasoning and led to the conclusion to which my learned friend referred.  In our respectful submission, that decision is one which, if it is taken as a statement of principle, is one which unduly narrows the concept which we contend for, namely, that a trader in the same trade is intrinsically a person interested, and that that interest is sufficient to amount to a person aggrieved.

Your Honour Justice Heydon asked yesterday whether or not we have made reference in our submissions to the Daiquiri Case.  I can say, your Honour, that a reference was made in the written submissions, not in the oral submissions. 

HEYDON J:   Yes, there was a long quotation from it – in the court below?

MR BURLEY:   In the court below, yes.

HEYDON J:   Yes, thank you.

MR BURLEY:   We give it more attention in our submissions here.  Your Honours, a final factual point to address, at transcript 51 to 53, our learned friend, perhaps if I can summarise it because ‑ ‑ ‑

HEYDON J:   No, this is tricky.  You will be speaking from a transcript which is probably different in form from the transcript we have got.

MR BURLEY:   I see.

HEYDON J:   Where at line, for example, 2240 – do you have lines on your transcript?

MR BURLEY:   Yes, I do have line numbers of the version that I have.

HEYDON J:   What line do you want us to look at?

MR BURLEY:   Your Honours, I was going to summarise the effect of what was said rather than taking you to a particular passage which ‑ ‑ ‑

HEYDON J:   Later on we will have to read the particular passage several times, backwards, sideways and upside down.

MR BURLEY:   Yes.

HEYDON J:   Are you talking about the bit where it says:

MS BAIRD:  Your Honours, noting the actual effect of section 44(4) –

MR BURLEY:   No, your Honour.  the passage that begins at page 51, 2270, where my learned friend is referring to the use of the ‑ ‑ ‑

HEYDON J:  

It had also used this mark only for the one product –

MR BURLEY:   Yes.  That capsule was one of a:

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”. 

That is the commencement of the passage and it follows to the conclusion at the following page which refers to our friends’ application for removing part of the registration for the Inner Health Plus mark.  At the top of the next page 53, just before line 2330, if that correlates, my friend said:

Your Honours, that is not goods in which the respondent trades so that the area of overlap would be omitted. 

We would submit that that proposition is one which is not relevant to the question of standing in two senses.  First, at the date of the relevant applications, Health World’s registration was for a broad range of pharmaceutical preparations that extended beyond that limited area.  That was the state of the register and that was the relevant state of conduct.  To the extent that Justice Jacobson’s decision is relevant on the question of standing in this respect, his Honour found at paragraphs 233, 235 and 236 that Health World did intend to use, at the time of filing its trademark application, and so appeal book volume 2, page 731, paragraph 233:

In the present proceedings I have sworn evidence from Mr Gee and Mr Joiner that at the relevant date, Health World did intend to use the INNER HEALTH PLUS trade mark in relation to all of the goods for which it was registered.

Then the conclusion on the next page, at paragraph 236:

In my view, there is no reason why I should refuse to accept the sworn evidence of Mr Gee and Mr Joiner as to Health World’s intentions at the time of the application.  Shin-Sun has not discharged its onus of proving otherwise.

So at the relevant date there was the application and the intention to use in respect of the whole of the range.

HEYDON J:   You say that means you have standing because of that past intention even though that intention has now changed?

MR BURLEY:   The question of intention was not later examined.  What was considered in dealing with the non-use application and as a matter of fact it was found that for the three years less one month, or plus one month, prior to the application for removal Health World had not in fact used beyond the probiotic range, which was a separate consideration, the intention as distinct from the actual use.

GUMMOW J:   You had two applications in the Federal Court you explained to us yesterday?

MR BURLEY:   Yes, your Honour.

GUMMOW J:   The first one appears at page 3 and that was expungement under section 88, section 88 dealing with “wrongly made or remaining”?

MR BURLEY:   Yes.

GUMMOW J:   But not non‑use?

MR BURLEY:   No.

GUMMOW J:   The second application was for non‑use under section 92 and that appears at page 54.  But you also had in your first matter a whole range of other complaints, including passing off, I think?

MR BURLEY:   Yes.

GUMMOW J:   As well as 52 and 53 of the Trade Practices Act?

MR BURLEY:   Yes.

GUMMOW J:   You failed on those other claims?

MR BURLEY:   Yes.  I might just make an inquiry to see how many of them were pressed at trial.

GUMMOW J:   That is what I am wondering.

MR BURLEY:   Yes, they were pressed at the trial and unsuccessful, ultimately.

GUMMOW J:   I see.  Both applications were heard together?

MR BURLEY:   Yes.

GUMMOW J:   So the evidence crept from one to the other, I imagine?

MR BURLEY:   Yes.

FRENCH CJ:   But for standing on the findings at first instance, you would have succeeded in sections 88 and 59 and also on discretion, of course, and you would have succeeded under section 92 in the other?

MR BURLEY:   Yes.

FRENCH CJ:   And on discretion?

MR BURLEY:   Yes.  Your Honour, under section 88 there are two components or two limbs.

FRENCH CJ:   Yes, I appreciate that.  There is no intention to use, and deceptive and confusing because of the Nature’s Hive question.

MR BURLEY:   Yes, your Honour.  May it please the Court.

FRENCH CJ:   Thank you, Mr Burley.  The Court will reserve its decision.  The Court adjourns until 9.30 am tomorrow in Sydney and 9.30 am tomorrow in Melbourne.

AT 12.26 PM THE MATTER WAS ADJOURNED