Case: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
Outcome: applied
expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. Pioneer Computers relies upon the policy of the Act to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register which, it submits, will generally demand the removal of an unused trade mark ( Shanahan at [15.145]). However, as Shanahan also points out at [15.145], the underlying policy of the Act is to give the Court sufficient flexibility to give effect to public interest considerations. This includes the flexibility not to order removal even though the trade mark is unused in the sense required by s 92. The authors suggest that removal may not be appropriate where, for example, the trade mark is nonetheless well-known either from earlier use or from advertising or publicity coming from abroad. A further consideration, as noted by McLelland J in Ritz Hotel and by the Registrar in this case, is where removal could be ' potentially conducive to public confusion ' ( Ritz Hotel at 224). Pioneer Computers submits the following in support of its contention that the Court should not exercise its discretion in favour of Pioneer KK: Pioneer KK has had a sufficient length of time to use the Pioneer KK marks, since 1985 and 1998 respectively, and there is no evidence of any present intention on the part of Pioneer KK to expand its products within the removal goods or the removal services. It is not in the public interest, nor is it reasonable, that a trade mark owner should be permitted to "hoard" trade marks for goods and services that it has not used and has no present plans to use. Pioneer KK's business is specifically in the field of audio and audio-visual products, particularly for entertainment, as evidenced by the slogan. It is not in the business of manufacturing IT equipment, apart from the one period between 1985 and 1987 when Pioneer KK manufactured the Palcom computer. It does not manufacture computer products. It exited that market. The legitimate interests of Pioneer KK as the trade mark owner are protected by s 120(2) and s 120(3) of the Act with respect to the tests for infringement of the registered marks. They are also protected by the Trade Practices Act 1974 (Cth). To maintain trade mark registrations for unused goods and services would be to substitute the rights properly given under ss 120(2) and 120(3) with that provided in s 120(1). Pioneer Computers has used the name "PIONEER" as part of its corporate name and as its trade mark in relation to computers, particularly personal computers, notebook computers and servers, for 10 years. The retention of the removal goods and removal services on the Register would empower Pioneer KK to take action against Pioneer Computers in circumstances where it does not have a legitimate interest to protect because there is no use in relation to the removal goods or the removal services. It is misleading to the public to maintain a registration in respect of goods and services that are not used by Pioneer KK under the Pioneer KK marks. The parties have co-existed for 10 years without any apparent confusion in the marketplace. There has been little demonstrated confusion to date and any future confusion is readily able to be remedied as it has been in the past. Pioneer Australia has known of Pioneer Computers and its business from about 1996, giving rise to an inference that Pioneer KK does not consider Pioneer Computers' business as relevantly within or impacting upon Pioneer KK's business. How should the discretion be exercised? Approximately 50% of Pioneer Computers' annual turnover is from sales to governments and their departments through its Government, Education and Corporate Division. It has been an Australian Government Endorsed Supplier since 1999. It has substantial contracts with State governments and all computer equipment that has been supplied to those governments has, since 1999, been supplied under or by reference to the trade mark PIONEER. The support and servicing of personal computers, notebooks and servers, and the provision of on-site training and service has, since 1998, been provided through Pioneer Computers' Service Division, predominantly for PIONEER branded built-to-order computers under warranty.