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Trademark rivals more likely to have their day in court

30/04/2010

Health World Ltd manufactures and supplies probiotic capsules containing acidophilus bacteria and other live bacteria as well. They are marketed under the registered trademark “Inner Health Plus”.  Shin-Sun Australia Pty Ltd applied for registration of “Healthplus” as a trade mark for “pharmaceutical products including vitamins and dietary supplements”. Health World opposed that application on the basis that that the mark was deceptively similar to Health World’s own mark. The Registrar of Trade Marks registered Shin-Sun’s trademark.  Shin-Sun’s mark was registered after the Federal Court dismissed Health World’s appeal.  Both Health World  and Shin-Sun commenced further proceedings about the matter.  The judges at first instance found that neither party was “a person aggrieved”.  They followed the full Federal Courts decision in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 to find neither trade competitor had sufficient standing to be heard about the dispute.

The High Court held that approach to be overly restrictive.  It found that the full Federal court had quoted selectively from a House of Lords decision, which should not be read down to require that the trademark must be actually or imminently in use.  It should be sufficient to show the simple possibility of use of the mark.  The legislation did not require proof, in this case, of anything beyond trade rivalry.   However, the legislation does not define “aggrieved” and it is not desirable to exhaustively define it.  Instead, each case should be dealt with according to its own peculiar circumstances.

Of course, the fact that a litigant’s objections are heard by a Court does mean that the Court will then overturn a trademark’s registration.

Read the High Court’s judgement in Health World Ltd  v Shin-Sun Australia Pty Ltd

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