Health World Limited v Shin-Sun Australia Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 21 February 2008
• Neutral Citation: [2008] FCA 100
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Health World Limited v Shin-Sun Australia Pty Ltd

[2008] FCA 100

INTELLECTUAL PROPERTY– trade marks – rectification proceedings – expungement proceedings – statute applies as it stood at the time of commencement of proceedings – no deceptive similarity between INNER HEALTH PLUS and HealthPlus – applicant in each proceeding lacked standing as ‘a person aggrieved’ – registered proprietor of HealthPlus mark failed to demonstrate intention to use or actual use – use of HealthPlus mark by a company with the same directors as the registered proprietor does not amount to authorised use – no relevant control – discretionary principles

Acts Interpretation Act 1901 (Cth) s 8

Trade Marks Act 1995 (Cth) ss 7, 8, 9, 10, 42, 59, 60, 88, 89, 92, 101

Trade Marks Amendment Act 2006 (Cth)

Trade Practices Act 1974 (Cth)ss 52, 53

Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344referred to

Aristoc Limited v Rysta Limited (1944) 62 RPC 65 applied

Australian Co-operative Foods v Norco Co-operative (1999) 46 NSWLR 267 followed

Australian Woollen Mills Limited v FS Walton & Co Limited (1937) 58 CLR 641applied

CA Henschke & Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 distinguished

Campomar Sociedad, Limitada v Nike International Limited (1998) 85 FCR 331 (2000) 202 CLR 45referred to

Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc (1960) 103 CLR 422applied

Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 61 IPR 212 cited

de Cordova v Vick Chemical Co (1951) 68 RPC 103 referred to

EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277considered

Fisher v Hebburn Limited (1960) 105 CLR 188 applied

Health World Limited v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495 referred to

Health World Limited v Shin-Sun Australia Pty Ltd [2006] FCA 647referred to

In the Matter of Powell’s Trade Mark (1893) 10 RPC 195 (C.A. UK); (1894) 11 RPC 4 (HL) referred to

Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104referred to

Lomas v Winton Shire Council [2003] AIPC 91-839 referred to

Maxwell v Murphy (1957) 96 CLR 261applied

Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 referred to

New South Wales Dairy Corporation v Murray Goulburn Co-operative Limited (1990) 171 CLR 363 applied

Philip Morris Products SA v Sean Ngu [2002] ATMO 96 applied

Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670applied

Registrar of Trade Marks v Woolworths Limited (1999) 93 FCR 365applied

Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Limited (1986) 12 FCR 477 referred to

Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158referred to

Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147 referred to

Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd (2000) 100 FCR 166 referred to

Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137 applied

Thai World Imports v Shuey Sing (1989) 17 IPR 289 referred to

Unilever Australia Limited v Karounos (2001) 52 IPR 361 referred to

Davison M, Johnston K, Kennedy P, Shanahan’s Australian Law of Trade Marks and Passing Off (3^rd ed , Thomson Lawbook Co, 2003)

Dufty A & Lahore J, Lahore, Patents Trade Marks & Related Rights (LexisNexis Butterworths, 2006)

HEALTH WORLD LIMITeD (ABN 73 010 636 165) v shin-sun australia pty ltd (ACN 060 792 163), theresa YUN SUN shin AND NATURE’S HIVE PTY LTD (aCn 071 357 054)

NSD 226 of 2006

HEALTH WORLD LIMITeD (ABN 73 010 636 165) v shin-sun australia pty ltd (ACN 060 792 163)

NSD 1418 of 2006

shin-sun australia pty ltd (ACN 060 792 163) v HEALTH WORLD LIMITED (ABN 73 010 636 165)

NSD 1780 of 2006

JACOBSON J

21 FEBRUARY 2008

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALESDISTRICT REGISTRY	NSD 226 of 2006

BETWEEN	HEALTH WORLD LIMITED (ABN 73 010 636 165) APPLICANT
AND	shin-sun australia pty ltd (ACN 060 792 163) FIRST RESPONDENT theresa YUN SUN shin SECOND RESPONDENT nature’s hive pty ltd (ACN 071 357 054) THIRD RESPONDENT

JUDGE:	JACOBSON J
DATE OF ORDER:	21 FEBRUARY 2008
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The matter be stood over to a date to be fixed for the making of final orders.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1418 of 2006

BETWEEN	HEALTH WORLD LIMITED (ABN 73 010 636 165) APPLICANT
AND	shin-sun australia pty ltd (ACN 060 792 163) RESPONDENT

JUDGE:	JACOBSON J
DATE OF ORDER:	21 FEBRUARY 2008
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The matter be stood over to a date to be fixed for the making of final orders.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1780 of 2006

BETWEEN	shin-sun australia pty ltd (ACN 060 792 163) APPLICANT
AND	HEALTH WORLD LIMITED (ABN 73 010 636 165) RESPONDENT
JUDGE:	JACOBSON J
DATE OF ORDER:	21 FEBRUARY 2008
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The matter be stood over to a date to be fixed for the making of final orders.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALESDISTRICT REGISTRY	NSD 226 of 2006

BETWEEN	HEALTH WORLD LIMITED (ABN 73 010 636 165) APPLICANT
AND	shin-sun australia pty ltd (ACN 060 792 163) FIRST RESPONDENT theresa shin SECOND RESPONDENT nature’s hive pty ltd (ACN 071 357 054) THIRD RESPONDENT

JUDGE:	JACOBSON J
DATE:	21 FEBRUARY 2008
WHERE MADE:	SYDNEY

REASONS FOR JUDGMENT

Introduction and Overview

1 The parties to these proceedings have been in dispute since 2001 over the registration of the trade mark “HealthPlus”.

2 At the heart of their dispute is the question of whether the HealthPlus trade mark is deceptively similar to the trade mark INNER HEALTH PLUS that was used in Australia before the priority date for registration of the HealthPlusmark.

3 The INNER HEALTH PLUS mark is owned by Health World Limited (“Health World”) which manufactures and supplies a range of natural medicine products.

4 In 1999 Health World started to develop a probiotic capsule containing acidophilus and other ingredients which encourage the growth of healthy bacteria that are beneficial for the digestive system. Health World launched the probiotic capsule product to the Australian market in May 2000 under the name Inner Health Plus.

5 About nine years earlier, in March 1991, Health World had commenced to manufacture and supply a probiotic powder called Inner Health Powder. At about that time, Health World applied for, and subsequently obtained, registration of the trademark INNER HEALTH. It successfully marketed the Inner Health powder from 1991 but commenced to develop the Inner Health Plus capsules in 1999 when sales of Inner Health powder fell below $1 million per annum. The development of the Inner Health Plus product and the style and emphasis of its packaging and marketing are important because Shin-Sun Australia Pty Ltd (“Shin-Sun”) contends that Inner Health Plus is a line extension of the Inner Health product.

6 Health World applied to register the INNER HEALTH PLUS trade mark on 12 September 2001. However, four months earlier, on 7 May 2001, Shin-Sun applied for registration of the HealthPlus mark.

7 The priority date for registration of the HealthPlus trade mark is 7 May 2001. As at that date, the provisions of the Trade Marks Act 1995 (Cth) dealing with opposition to the registration of a mark on the ground of deceptive similarity were in different terms from those currently in force, but the provisions were amended after the date of commencement of these proceedings.

8 The relevant provision is s 60. As at 7 May 2001, s 60 contained four pre-requisites for opposition. The first of these was that the application mark must be substantially identical with or deceptively similar to a trade mark which existed before the priority date of the application mark.

9 In December 2001 Health World filed notice of opposition to the HealthPlus 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.

10 The present proceedings are, of course, not an appeal from Cooper J. Nor is Health World estopped from asserting that the HealthPlus 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 HealthPlus 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.

The proceedings

11 The proceedings before me consist of three separate applications. In the first, Health World seeks expungement of theHealthPlus 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.

13 One of the issues in the rectification proceeding is whether s 60 applies in the form in which it stood as at 7 May 2001 or whether it applies in its terms as subsequently amended.

14 The s 42 ground is that the use...