Case: Health World Limited v Shin-Sun Australia Pty Limited [2005] FCA 5
Outcome: considered
The respondents contend that the estoppel arises from a decision of Cooper J in Health World Limited v Shin-Sun Australia Pty Limited [2005] FCA 5 ("the decision") which was handed down on 11 January 2005. 4 The decision was an appeal under s 56 of the Trade Marks Act 1995 (Cth) ("the Act ") from a decision of the Registrar of Trade Marks dismissing the applicant's opposition to the respondent's mark. The applicant and the first respondent were parties to the decision. Cooper J dismissed the appeal. 5 In the proceedings which were the subject of the decision, the applicant relied upon the grounds of opposition stated in ss 42(b) and 60 of the Act . Those grounds raised the issue of whether the respondent's mark was substantially identical, or deceptively similar to the Inner Health Plus mark. 6 Cooper J found that the respondent's mark was not substantially identical, or deceptively similar to the Inner Health Plus Mark. 7 In the present proceedings, the applicant seeks, inter alia , an order under s 88 of the Act rectifying the Register of Trade Marks by cancelling the respondent's mark. Section 88(2)(a) of the Act provides that one of the grounds on which such an application may be made is "any of the grounds on which the registration of the trade mark could have been opposed". 8 The applicant relies in support of its application for cancellation upon, inter alia, ss 42 and 60 of the Act . It asserts that the respondent's mark is substantially identical or is deceptively similar to, the Inner Health Plus Mark. 16 The preliminary questions are as follows:- "1. Is the applicant estopped in these proceedings by the decision of Cooper J delivered in Health World Limited v Shin-Sun Australia Pty Limited [2005] FCA 5 delivered 11 January 2005 (the 'Decision') from alleging that the trade mark 'HEALTHPLUS', the subject of Australian trade mark number 874755 (the 'Respondents' Mark'), is substantially identical with, or deceptively similar to, the trade mark 'INNER HEALTH PLUS' in relation to which the pro-biotic products 'Inner Health Plus' and 'Inner Health Plus Dairy Free' manufactured by the applicant were marketed, sold and offered for sale in the period March 2000 to 7 May 2001. 2. Is the applicant estopped in these proceedings by the Decision from seeking an order pursuant to s88(2)(a) of the Trade Marks Act 1995 ('TM Act') that the Register of Trade Marks be rectified by the cancellation or removal of the Respondents' Mark (Australia trade mark 874755) relying on any of the grounds comprised in: (i) s41 of the TM Act, as pleaded in paragraphs 13 and 14 of the statement of claim filed in these proceedings ('Claim'); (ii) s42 of the TM Act, as pleaded in paragraphs 15 and 16 of the Claim;\ (iii) s43 of the TM Act, as pleaded in paragraphs 17 and 18 of the Claim; (iv) of the TM Act, as pleaded in paragraphs 19 and 20 of the Claim; (v) s60 of the TM Act, as pleaded in paragraphs 21 to 24 of the Claim." 17 The order for the preliminary questions was made by consent. Nevertheless, before making the orders, I raised with the parties my concern about the utility of the order in the present case.