mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Viskase Corporation v Cryovac Inc [2000] FCA 1695
Outcome: distinguished
counsel for the Department placed considerable emphasis upon the decision of French J in Viskase Corporation v Cryovac Inc [2000] FCA 1695. There, his Honour was dealing with an application for information discovery under O 15A r 6. He said at [24] that the rule should not be permitted to authorise information discovery except for good cause shown in terms of the conditions. He continued:- In respect of patents for inventions, the exercise of the discretion must have regard both to the intrusive nature of the order and the need to encourage research and development unhampered by the prospect of speculative review of working papers by competitors. To allow the remedy in this case based upon formulaic recitations of wide application would set the threshold for pre-action discovery so low that there would be few cases in which a person wishing to challenge a patent could not obtain discovery of the kind which is sought here. However, these remarks are to be read in their context. His Honour expressed the view at [23] that the evidence which was required to satisfy the first element of O 15A r 6, namely reasonable cause to believe that an applicant has the right to obtain relief against the prospective respondent, was an opinion expressed as a conclusion stated in terms of the rule. His Honour considered that the conclusionary statement was insufficient to meet the requirements of O 15A r 6(a). I do not think it follows that his Honour's observations establish that a high threshold must be satisfied before an order will be made under O 15A r 3. It is true that French J said at [24] that if an order were made in that case it would establish a very low threshold for the application of the rule. But, in my opinion, that was because of the slender basis of the evidence in support of the "reasonable cause to believe". In my view the decision in Viskase does not establish a gloss on the principles stated in Hooper . Whilst good cause must be shown, each case must turn on its own facts and the prospects of success are to be weighed in the balance of the interests of justice. Wyeth's evidence as to prospects of success
Case: Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 
Outcome: referred to
The same differences are created by an aural comparison. Here, stress and pronunciation would usually given to the first syllable of the word or mark: see for example Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [32], [157] [164]. 142 Thus, an aural comparison of the marks by the person of ordinary intelligence and memory would bear out the impression that Health Plus is concerned with enhanced general health whereas Inner Health Plus invokes improved internal health. 143 I reject Health World's submission that the Health Plus mark should be characterised as two words, at least in a visual sense. Although the word " Plus " is italicised, the usual impression is plainly of one word.
Case: Aristoc Limited v Rysta Limited (1944) 62 RPC 65
Outcome: applied
The function of a trade mark is to give an indication to a purchaser as to the manufacture or quality of the goods and an indication of the trade source from which the goods come or through which they pass on their way to market: Aristoc Limited v Rysta Limited (1944) 62 RPC 65 at 74, 79. 186 Here, whatever the subjective intentions of the Shin family may have been, the public face of the Health Plus trade mark was that of Nature's Hive. It was the only name that appeared publicly as part of the "badge of origin" of the product.
Case: Australian Co-operative Foods v Norco Co-operative [1999] NSWSC 274 ; (1999) 46 NSWLR 267
Outcome: followed
In Australian Co-operative Foods v Norco Co-operative [1999] NSWSC 274 ; (1999) 46 NSWLR 267 at [84] [86], Bryson J took a wide view of the operation of s 88(2)(c). His Honour proceeded on the basis that the ground is available if the use of the mark is likely to deceive or cause confusion for any reason. 178 In Norco , Bryson J was of the view that there was no likelihood of deception because the packaging of the goods accurately identified the source of the goods and the registered owner of the trade mark: Norco at [84]. 179 In the present case, Health World points to the evidence which discloses that at the date of the commencement of the rectification proceedings, the Health Plus trade mark was used to identify the goods as those of Nature's Hive, and not those of Shin-Sun. I will deal with this below. 180 This would give rise to the likelihood of deception or cause confusion because of the failure to identify the registered owner as the source of the goods. 182 Pending consideration of s 88(2)(c) by a Full Court, or by the High Court, it seems to me that I should follow the approach adopted by Bryson J in Norco . On that basis the s 88(2)(c) ground is enlivened by the failure to distinguish the Health Plus products as goods of Shin-Sun. 183 In dealing, later in my judgment, with Health World's non-use application, I give six reasons why the Health Plus trade mark is used to identify the goods as those of Nature's Hive. 184 In summary, the effect of the evidence was that Shin-Sun's name has never appeared on the packaging and Nature's Hive procured the manufacture of the products.
Case: Australian Woollen Mills Limited v FS Walton &amp; Co Limited [1937] HCA 51 ; (1937) 58 CLR 641 
Outcome: applied
These principles are well established. They were stated by Dixon and McTiernan JJ more than 50 years ago in Australian Woollen Mills Limited v FS Walton &amp; Co Limited [1937] HCA 51 ; (1937) 58 CLR 641 at 658 and reiterated by the High Court in other authorities. 133 Perhaps the most succinct statement of the principles is to be found in the observation of Dixon and McTiernan JJ in Australian Woollen Mills at 659 that the question is: ... never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 134 The Health Plus mark was not being used as at 7 May 2001. Thus, the comparison which is to be made for the purposes of s 60 is between the unregistered mark Inner Health Plus and the Health Plus registered trade mark. 135 In my opinion the Health Plus trade mark was not deceptively similar to the Inner Health Plus mark for the reasons set out below.
Case: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (1998) 85 FCR 331 (2000) 202 CLR 45 
Outcome: referred to
If I were of the view that the Health Plus trade mark was deceptively similar to the Inner Health Plus trade mark, I would be satisfied that Health World is an aggrieved person: Campomar Sociedad, Limitada v Nike International Limited (1998) 85 FCR 331 at 364; reversed by the High Court but not on the "aggrieved person" issue in [2000] HCA 12 ; (2000) 202 CLR 45. 126 However, for reasons set out below, in my opinion, Health Plus is not deceptively similar to INNER HEALTH PLUS. 127 Accordingly, subject to what I say below about the s 59 ground (which Health World relies upon under s 88(2)(a)) and the s 88(2)(c) ground, I do not consider that Health World is an aggrieved person. 181 It is possible that the observations of the High Court in Nike at [61], suggest a more restrictive approach to the construction of s 88(2)(c). In Nike (2000), their Honours were concerned with the provisions of s 28 of the Trade Marks Act 1955 (Cth), which was in different terms but it is part of the legislative history of s 88(2)(c) which is discussed in Shanahan at [14.230]ff.
Case: Continental Liqueurs Pty Ltd v G F Heublein &amp; Bro Inc [1960] HCA 37 ; (1960) 103 CLR 422 
Outcome: applied
Subject to a dispute about the terms of s 60 , all parties' counsel proceeded on the basis that the Act applies as it stood at the time of the hearing. However, the general rule of the common law, and the effect of s 8 of the Acts Interpretation Act , is that: when the law is altered during the pendency of an action the rights of the parties are decided according to the law as it existed when the action was begun, unless the new statute shows a clear intention to vary such rights: see Continental Liqueurs Pty Ltd v G F Heublein &amp; Bro Inc [1960] HCA 37 ; (1960) 103 CLR 422 at 427 per Kitto J. 31 All three of the proceedings described were commenced prior to the commencement of the Trade Marks Amendment Act 2006 (Cth) on 23 October 2006. The rectification proceeding was commenced on 13 February 2006. Health World's non-use application was commenced on 25 July 2006. Shin-Sun's non-use application was commenced on 15 September 2006. Thus in the absence of a clear legislative intention to the contrary, the provisions of the Act apply as they stood prior to the 2006 amendments. The relevant provisions are set out below, in their pre-amendment form. 32 Section 7 of the Act deals with the use of a trade mark. It provides: 7 Use of trade mark (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark. (4) In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods) ... 118 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 (C.A. UK); (1894) 11 RPC 4 at 7-8 (HL); see also Continental Liqueurs at 427. 119 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 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113.
Case: Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 61 IPR 212
Outcome: cited
Section 10 of the Act defines the expression "deceptively similar". The opposed mark must so nearly resemble the other mark that it is likely to deceive or cause confusion. The authorities dealing with the question of whether one trade mark is deceptively similar to another were reviewed by a Full Court of this Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 61 IPR 212 at [72]ff. 130 The Full Court in Crazy Ron's distilled five legal principles from the many authorities which have dealt with this subject. Their Honours were dealing with the question of deceptive similarity in the context of trade mark infringement but the same principles apply to the test of deceptive similarity in s 60 as it stood in May 2001. 131 It is unnecessary to set out the five principles stated in Crazy Ron's . It is sufficient to say that the marks are not to be judged by a side by side comparison; they are to be considered by their look and sound, with due allowance for imperfect recollection. The goods to which the marks are to be applied must be considered together with all the surrounding circumstances. 146 Those authorities, as well as authorities of Full Courts in CA Henschke &amp; Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] [90]. 147 The effect of those authorities is that the enquiry is not as wide as would be undertaken in a passing off action or in a proceeding under s 52 of the Trade Practices Act . Rather, the search is to be concentrated on ascertaining the essential element of the mark and the impression taken away by one who looks at it and how it sounds when pronounced: Crazy Ron's at [86], [88]. 148 The essential element of the Inner Health Plus mark is not found in the words "Health Plus". Rather, as I have already said, the idea or essential feature of Inner Health Plus is that it is concerned with internal health. Health Plus embraces a different concept. 149 To the extent that any notoriety of Inner Health Plus is to be taken into account, consumers must be taken to be familiar with it as an improved and more convenient version of Inner Health powder: Crazy Ron's at [90]. 151 Furthermore, there is no tangible danger of deception or confusion: Crazy Ron's at [76]. The Inner Health Plus product and the goods encompassed by the Health Plus trade mark have their own separate attributes. They may be recommended by health professionals. Their purchase is likely to be a considered decision after close appraisal and consideration. Health professionals are usually careful to listen and ensure that their customers select the correct product.
Case: de Cordova v Vick Chemical Co (1951) 68 RPC 103
Outcome: referred to
I do not consider that the Health Plus mark captures one of the essential features of the Inner Health Plus mark: c.f. Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147; de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106.
Case: EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 
Outcome: considered
The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the Court. 204 In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see eg. Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 at [97] ; Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 at [75] .
Case: Fisher v Hebburn Limited [1960] HCA 80 ; (1960) 105 CLR 188
Outcome: applied
As Fullagar J stated in Fisher v Hebburn Limited [1960] HCA 80 ; (1960) 105 CLR 188 at 194, a statute is, prima facie , to be construed as not attaching new legal consequences to facts or events which occurred before the commencement of the statute. 115 In my view, Shin-Sun's approach to statutory construction is correct, although more accurately it ought to be based on s 88(2)(a) as it stood when the rectification proceeding was commenced on 13 February 2006. On that date, s 88(2)(a) enlivened the power to order rectification of the register on "any of the grounds on which registration of the trade mark could have been opposed under Division 2 of Part 5". The pre-amendment form of s 88(2)(a) still requires s 60 to be applied as it stood when the trade mark was filed on 7 May 2001. The significance of applying the pre-amendment form rather than current form of s 88(2)(a) is that Health World is precluded from relying on the 'contrary to law' ground under s 42 (that provision not being found in Division 2 of Part 5). 116 For all these reasons, it follows, in my opinion, that the ground of opposition based upon deceptive similarity is to be determined under s 60 in its pre-amended form.
Case: Health World Limited v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495
Outcome: referred to
In December 2001 Health World filed notice of opposition to the Health Plus trade mark relying inter alia on the ground contained in s 60. The Registrar of Trade Marks dismissed the opposition but Health World appealed to the Federal Court under s 56 of the Act. The appeal was heard by Cooper J. His Honour determined the appeal adversely to Health World: see Health World Limited v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495.
Case: Health World Limited v Shin-Sun Australia Pty Ltd [2006] FCA 647 
Outcome: referred to
The present proceedings are, of course, not an appeal from Cooper J. Nor is Health World estopped from asserting that the Health Plus mark was deceptively similar to the Inner Health Plus trade mark at 7 May 2001, even though Cooper J found on the balance of probabilities that the Health Plus mark was not deceptively similar to the Inner Health Plus mark as at that date: see Health World v Shin-Sun (per Cooper J) at [6], [41]; Health World Limited v Shin-Sun Australia Pty Ltd [2006] FCA 647. 11 The proceedings before me consist of three separate applications. In the first, Health World seeks expungement of the Health Plus mark under ss 88(2)(a) and (c) of the Act. This proceeding is sometimes referred to as the rectification proceeding. 12 Section 88(2)(a) provides that an application for cancellation or removal of a mark may be made on any of the grounds on which the registration of the trade mark could have been opposed under the Act. The grounds on which Health World relies in the rectification proceeding are those contained in ss 42 , 59 and 60 . 96 Indeed, the entire thrust of Health World's launch of the Inner Health Plus capsules was to take advantage of the reputation of the Inner Health Powder and the goodwill attaching to it. This is graphically revealed in Mr Joiner's evidence in the proceedings before Cooper J, as put to Mr Joiner by counsel for Shin Sun in cross-examination in the present proceedings. The relevant passage is as follows: I did not want to discontinue the Inner Health line as it had been and was still a successful product. I believed that the fact that Inner Health was an established product in its field gave Health World an excellent opportunity to introduce a new type of probiotic product similar to the existing Inner Health product but in an improved version which could be launched onto the market. My plan was to take advantage of the goodwill which had already been built up in the Inner Health brand. 97 I understood Mr Joiner to accept the accuracy of this evidence when it was put to him in cross-examination before me. In any event, its accuracy is fully supported by the promotional and advertising material referred to above. 98 It is true that when Inner Health Plus capsules were introduced they contained bifidobacteria which were not an ingredient of Inner Health powder at that time. But that does not distinguish the reputation of Inner Health Plus from its predecessor. 110 Second, this approach to construction is consistent with the scheme of the Act as discussed by a Full Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [18]. The Full Court there observed that opposition proceedings are quasi-summary and an unsuccessful opponent will have the opportunity to bring an expungement application if the opposition proceeding fails: see also the authorities to which I referred in Health World Limited v Shin-Sun Australia Pty Limited [2006] FCA 647 at [27] , [36], [40], and [41].
Case: In the Matter of Powell's Trade Mark (1893) 10 RPC 195 (C.A. UK); (1894) 11 RPC 4 (HL)
Outcome: referred to
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 (C.A. UK); (1894) 11 RPC 4 at 7-8 (HL); see also Continental Liqueurs at 427.
Case: Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 
Outcome: referred to
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 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113.
Case: Lomas v Winton Shire Council [2003] AIPC 91-839
Outcome: referred to
Second, this approach to construction is consistent with the scheme of the Act as discussed by a Full Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [18]. The Full Court there observed that opposition proceedings are quasi-summary and an unsuccessful opponent will have the opportunity to bring an expungement application if the opposition proceeding fails: see also the authorities to which I referred in Health World Limited v Shin-Sun Australia Pty Limited [2006] FCA 647 at [27] , [36], [40], and [41].
Case: Maxwell v Murphy [1957] HCA 7 ; (1957) 96 CLR 261 
Outcome: applied
Moreover, the general rule of the common law is that, subject to any contrary intention appearing with reasonable certainty, a statute changing the law is not to be understood as applying to facts that have already occurred so as to confer or otherwise affect rights or liabilities which the law has defined by reference to past events: Maxwell v Murphy [1957] HCA 7 ; (1957) 96 CLR 261 at 267 per Dixon CJ.
Case: Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27
Outcome: referred to
In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see eg. Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 at [97] ; Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 at [75] .
Case: New South Wales Dairy Corporation v Murray Goulburn Co-operative Limited [1990] HCA 60 ; (1990) 171 CLR 363
Outcome: applied
As to the exercise of discretion under s 88(1), the guiding principles would seem to be those that were referred to in the authorities under the 1955 Act. The principal factors would therefore seem to be the public interest and the respective contributions made by the parties to the proceedings in creating the likelihood that the use of the registered mark would deceive or cause confusion: New South Wales Dairy Corporation v Murray Goulburn Co-operative Limited [1990] HCA 60 ; (1990) 171 CLR 363 at 391 per Brennan J. 208 In my view, these factors point against the exercise of the discretion so that even if I may withhold relief under s 88(1), I would not exercise my discretion to do so. In short, it seems to me that the public interest is better served by expunging a mark that has become deceptive in the circumstances of this case. 209 Even though I am satisfied that Health World has made out the grounds for rectification under s 88(2)(a) (the s 59 ground) and s 88(2)(c), in my view it does not have standing to seek the relief because it is not an aggrieved person. 210 As I said above, I do not consider that Health World has any genuine desire to use the Health Plus mark. Accordingly, I am not satisfied that it has a real interest in having the Health Plus mark removed. Nor would it be appreciably disadvantaged in a legal or practical sense if the mark remains on the register. 211 By reason of my findings on the questions of the reputation of Inner Health Plus and deceptive similarity, I reject the claims of contravention of the Trade Practices Act and passing off against both Shin-Sun and Nature's Hive.
Case: Philip Morris Products SA v Sean Ngu [2002] ATMO 96
Outcome: applied
However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent's evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96 ; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].