Case: Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478
Outcome: applied
Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478 , Jacobson J said (at [117] [121] (p 493 494)): Aggrieved person In order for s 88(1) to be enlivened, so as to enable Health World to invoke the grounds of opposition under ss 42 , 59 and 60 , Health World must be an aggrieved person. The expression "an aggrieved person" is to be given a wide interpretation: see In the Matter of Powell's Trade Mark (1893) 10 RPC 195 at 201 (CA UK); (1894) 11 RPC 4 at 7 8 (HL); see also Continental Liqueurs Pty Ltd v G F Heublein &amp; Bro Inc [1960] HCA 37 ; (1960) 103 CLR 422 at 427. An aggrieved person is one who has a real interest in having a trade mark removed from the register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 4 ; 95 FLR 418 at 451; 88 ALR 217 at 254; 12 IPR 417 at 454; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112 13; 136 ALR 68 at 77; 34 IPR 198 at 207. It is not sufficient that an applicant for rectification of the register is in the same trade as the registered owner of the mark; what is required is that the applicant have a desire to use the mark, or be likely to be hampered in some other way by the registration of the mark that the applicant seeks to have expunged: Shanahan at [14.90]. I do not consider that Health World has any genuine desire to use the HEALTH PLUS mark. It is true that Health World has filed an application No 1121282 for the series trade mark HEALTH PLUS including a number of variations. That application was filed on 28 June 2006, approximately 6 months after Health World commenced the rectification proceeding, and 3 days after it commenced the Health World non-use proceeding. Applying the test explained by Jacobson J, Anying Auburn appears to me at the moment to be an aggrieved person within the meaning of s 88(1) of the Trade Marks Act . Andrew Chen may also be such a person, as may An Ying NZ. I am not prepared to hold for the purposes of the applicants' summary judgment application that none of the respondents is an aggrieved person within the meaning of s 88(1) of the Trade Marks Act . In my opinion, there is every reason to think that, at the conclusion of a trial, each of Anying Auburn, Andrew Chen and probably An Ying NZ will be held to be aggrieved persons within the meaning of that section. That being so, it seems to me that the respondents have some prospect of having the Registered Trade Mark cancelled pursuant to s 88 by reason of the operation of s 58 (Harry Wang not being the true owner), s 62(b) (registration procured upon the basis of false representations), s 62A (application for registration made in bad faith) and s 88(2)(e) (entry made as a result of false suggestion or misrepresentation). It is apparent from the brief summary of the respondents' case at which I have given at [17] [40] above, that there is material before me at the moment which suggests that Harry Wang applied for and procured the registration of the Registered Trade Mark in circumstances where he well understood that the owner of that mark was either An Ying NZ or Andrew Chen and that he did so in breach of duties owed to them or one or other of them and in breach of duties owed to An Ying Melbourne.