Health World Ltd v Shin-Sun Australia Pty Ltd

[2009] HCATrans 181

[2009] HCATrans 181

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S58 of 2009
  No S59 of 2009

B e t w e e n -

HEALTH WORLD LTD

Applicant

and

SHIN-SUN AUSTRALIA PTY LTD

Respondent

Applications for special leave to appeal

GUMMOW J
HEYDON J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 31 JULY 2009, AT 12.23 PM

Copyright in the High Court of Australia

MR R. COBDEN, SC:   May it please the Court, I appear with my learned friend, MR J.S. COOKE for the applicant.  (instructed by Bennett & Philp Solicitors)

MS J.R. BAIRD, SC:   May it please the Court, I appear for the respondent (instructed by Middletons Lawyers)

GUMMOW J:   We will hear from you first, Ms Baird.

MS BAIRD:   Your Honours, the test of whether an aggrieved person is an aggrieved person has received wide assent in the courts and is the test that was applied by the Full Court.  The Full Court test is at appeal book 69, paragraph 23:

an applicant is aggrieved if there is a reasonable possibility of the applicant being appreciably disadvantaged in a legal or practical sense by the register remaining unrectified ‑ ‑ ‑

GUMMOW J:   That is a question.

MS BAIRD:   That is the question, your Honour.

GUMMOW J:   The question is whether that is correct.  I am not convinced why anybody ever went beyond what Lord Herschell said in 1895 and 1896.

MS BAIRD:   Your Honour, Lord Herschell in Powell at 10 ‑ ‑ ‑

GUMMOW J:   Which is a somewhat broader expression.

MS BAIRD:   It is broader, your Honour.

GUMMOW J:   He says he is doing it this way because on the one hand there was the role of the common informer and on the other hand there is the developing idea in equity that to get an injunction in certain cases you had to show special damage.  Neither of them appeared suitable, but what seemed to be controlling was the idea that if someone comes along and seeks to purge the register of something that should not be there that is for the public benefit and one should not too narrowly construe the standing requirement.

We considered all these questions in Truth About Motorways 200 CLR 591, which would have provided some assistance, I think. Justice Higgins considered it too in the Union Label Case in 6 CLR 469 at 595. Is there not then a question as to what is involved in these subsequent glosses on what was said so long ago in Powell?

MS BAIRD:   Your Honour, in Powell and in the glosses that follow what the courts have looked at is that there is a real interest that the person coming to court will be disadvantaged by or seeks to protect.  In Powell, in Lord Herschell’s judgment it is not merely that a person is in the same trade but that – at page 10 ‑ ‑ ‑

GUMMOW J:   Yes, but what is the rationale for saying that?  If there is a register and it has a trademark on it that should not be there, and another trader is prepared to come along and expend the money to get it removed, why would you say they cannot come?  Why should this burden on the public freedom to trade be retained?

MS BAIRD:   The burden on the public freedom to trade, your Honour, is, in the context and purpose of the Trade Marks Act, related to the registration of trademarks, not trade per se.  That another trader says, I see that there is a trademark that in my opinion – my belief, my concern, – should not be there is no more, in my respectful submission, than any person coming to the trademarks register and saying, I see some trademarks that should not be there.  The structure of the Trade Marks Act makes a distinction between who can come to the Court and seek that a mark be removed or rectified between when we are looking at opposition before monopoly rights have been granted and after opposition when there is a monopoly right that has been granted, and the registered owner then has the opportunity to exploit that monopoly right.

That is why the Parliament has actually made a distinction in who may come to Court by including in the requirements in section 88, and as it stood at the time section 92, that that applicant be a person aggrieved.  That means that there is a real interest above any member of the public.  His Lordship, Lord Herschell, in Powell did not say, in my respectful submission, that that interest was satisfied merely by being a person in the same trade.  That would not stop; for example, Coca Cola coming along and seeking to remove the mark “Pepsi Cola” merely because they both deal in fizzy drinks. 

What their Lordships said – and, of course, Powell was concerned with Yorkshire Relish, which was an instance where a mark had been appropriated to a trademark owner which was in truth the name of the product, and what Lord Herschell’s statement of what is a person aggrieved identifies at page 10.  In the bundle of my friend’s authorities Powell is at tab 11.  Page 10 says that – not looking also at why “aggrieved person” was included, namely, as in a negative “to prevent officious interference”, but also looking at persons who are “in the same trade” ‑ ‑ ‑

GUMMOW J:   His Lordship refers to “officious interference” at page 10 and:

no interest at all in the register being correct and to exclude a mere common informer; it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons ‑

not just the applicant –

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

MS BAIRD:   They have to be affected by the registration, your Honour, not just affected because they are in the same trade and not just be affected because as a matter of purity of the register there is a trademark which ‑ ‑ ‑

GUMMOW J:   That is not what he says in the next sentence:

Wherever it can be shewn, as here, that the applicant is in the same trade . . . and wherever the trade–mark if remaining on the register would or might limit the legal rights of the applicant ‑ ‑ ‑

MS BAIRD:   Yes, your Honour, but that is “might” as a reasonable possibility, not “might” in a fanciful or, in my respectful submission, artificial ‑ ‑ ‑

GUMMOW J:   You may be right, but it just seems to me there is a question.

MS BAIRD:   Your Honour, in my respectful submission, that question is one that has been – the test has been articulated through a number of courts without dispute both in this country and – not here, your Honour, since probably the Brewery Union Trade Label Case.  In that case, your Honour, each of my friends, as it was some time ago – nonetheless, your Honour, in that case each of the judges that were for the majority identified that there was more than – being in the same trade, and that there was an interest that was affected or likely to be affected by the trademark being on the register; a real interest that the breweries identified.  Chief Justice Griffith at page 494 identified a number of factors, the first of which was that there was a real question for other brewers whether or not they either put the trademark on their beers and then either attracted or alienated members of the drinking public.  His Honour identified, commencing at page 491:

a person who has a direct material interest in the determination of the question sought to be decided.

At page 494 his Honour listed the statement of damage that the person seeking removal of the trademark identified that it would compel – and I start with (a) at about point 9:

(a)     It will compel the plaintiffs . . . to allow the use of the mark on their goods or lose business with members of the said Brewery Employés’ Union . . . 

(b)     Many people who now buy the plaintiffs’ . . . goods will refuse so to do . . . 

(c)     It will prevent the plaintiffs . . . from or render it difficult for the plaintiffs . . . to employ workmen ‑

The other justices in the majority were to the same effect and Justice Isaacs, who was in the minority, identified that Powell’s Case did not assist the applicants in that case because it was, when truly construed, a question of whether or not a trader should be able to use the name of the article, Yorkshire Relish.  In the Yorkshire Relish case what had happened was that one trader had actually appropriated to itself the very name of the article.  That is far different and those particular circumstances show that there were material interests in that case that were identified.

In this case, on the facts, it has been found that there is no real interest and none of those facts of lack of interest have been open for question in this Court.  The applicant here did not appeal either on the key issue that the marks were not deceptively similar.  That issue, that the marks were not deceptively similar, had been held by Justice Cooper in the Federal Court over a year earlier from the commencement of these proceedings not to be deceptively similar.  In other words, there was a clear finding on the same facts that the trademarks were not deceptively similar, and by reason of that finding ‑ ‑ ‑

GUMMOW J:   A trader might have the view that, it is all very well what the lawyers tell me but out of the marketplace I am of another view.  That is not an irrational view; after all, it had to go to court and be adjudicated.

MS BAIRD:   It was held against it; it did not appeal, it did not seek leave to appeal, and in this proceeding it did not adduce any evidence at all to identify any reputational interference.  So it was, in my respectful submission, the possibility – as my friend puts it – that in 2006 there was a possibility of “deceptive similarity” was fanciful in the extreme.  It was not borne out by any evidence put before the Court.  Indeed, the applicant had both registered its own trademark, INNER HEALTH PLUS; it was not curtailed in any factual or practical way from using that mark, and it had used that mark for a number of years before 2006 – I think approximately six years – without any evidence of reputational interference.

In my respectful submission, the facts that were found at the trial before Justice Jacobson, which facts were not in dispute on the applicant’s appeal before the Full Court where Justice Perram gave the decision of the Court, are such that this vehicle, this case, does not raise any interest ‑ ‑ ‑

GUMMOW J:   I notice his Honour was confident enough to say at paragraph 48:

A grant of special leave is unlikely ‑ ‑ ‑

MS BAIRD:   Yes, your Honour, we trust that that has not enlivened your Honour’s interest.

GUMMOW J:   The reason for not deciding other issues.

MS BAIRD:   Yes, the other issues were raised by notice of contention, and they are set out at paragraph 20 of his Honour Justice Perram’s decision at application book page 68.  We would raise those by way of contention, or else they would have to be either determined by this Court or remitted back.  Your Honour, really coming back to it, in our respectful submission, when you actually look at the facts on this case, here we have a trader who has had now five judges accept that the mark is not deceptively similar.

As at the commencement of the proceeding in this case it had a clear finding, with which it did not cavil, that the trademarks were not deceptively similar.  It did not bring to this proceeding any evidence of reputational confusion or likely reputational confusion.  It relied as its ground of being an aggrieved person that the marks were deceptively similar and that it had reputation in its trademark INNER HEALTH PLUS by reason of its good.  Those two matters were both found by reason of the mark not being deceptively similar by Justice Jacobson by a line of reasoning with which the Full Court agreed that the test in section 88 was not met. 

There was no real interest that the applicant in these particular facts could point to.  It is interesting that in most of the other cases that are in my friend’s list of authorities there has been, first of all, a question and really agreement that the marks were deceptively similar.  The only case that is in the list where there is no question that the marks were deceptively similar was the Brewery Union Case, and there, as I have indicated, there were

these other issues which raised quite considerable questions which led to a real interest.

Your Honour, there are a number of factual matters which my friend has identified as also conferring the presence of aggrieved person.  Each of those facts were either matters that, if I can deal with it briefly, conduct antecedent to the date of the application for the commencement of these proceedings; namely, that in response to a previous opposition by the applicant the respondent had raised its own opposition proceedings.  Those proceedings were withdrawn as soon as Justice Cooper’s decision came down.  The mark, INNER HEALTH PLUS, proceeded to registration, and when it proceeded to registration those pre‑opposition proceedings were not available any more, and so the respondent could not make and did not make any allegations or threats against the applicant.

A third proceeding commenced later was brought a year later, after the commencement of the present proceeding here, and it was in response to the aggression of the applicant in seeking to remove the respondent’s mark, and then it sought in defence to limit the applicant’s mark to the goods it actually used.  There is also a letter of 2007 where we say the Full Court has correctly characterised the letter as not indicating any agreement by my client that the marks are deceptively similar.  So too past history as to why an examiner might consider the marks deceptively similar had been resolved by the registration of the trademark.

Finally, your Honour, the question was raised as to whether this is a threshold question, and as I said in my submissions and has been stated by Justice Davies in Alphapharm, whilst the question might be a threshold question it does not mean that it need be or must be considered in the abstract in the absence of the legal and factual context.  Again, here the legal and factual context was such that any claim of a grievance was in fact not found on the facts and that inquiry was undertaken in a particularly conventional way through the application of section 88.  Those are our submissions, your Honour.

GUMMOW J:   We do not need to call on you, Mr Cobden.  There will be a grant of special leave in this case, which will be a one day appeal, I imagine.  The parties might give some attention to the body of authority leading up to Powell’s Case.  It includes Hayward’s Trademark in 53 Law Times 487.  The authorities for Powell are collected in Sebastian’s Law of Trade Marks, third edition, published in 1890.  We will adjourn until 1.45 pm.

AT 12.42 PM THE MATTER WAS CONCLUDED