A recent High Court trade marks judgment has substantially widened the definition of persons “aggrieved” - a threshold test for applications and challenges to decisions in various areas of the law, including registered intellectual property like trade marks, patents and designs. Intellectual property registrations, and potentially a wide range of administrative decisions, may now be more open to challenge, which could present both increased risks and substantial opportunities to stakeholders.
Background
On 21 April 2010 the High Court handed down its decision in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13 (available here).
Health World owns the trade mark INNER HEALTH PLUS and manufactures “Inner Health Plus” health products including probiotic powder and capsules. Shin-Sun owns the trade mark HEALTHPLUS. Nature’s Hive, a company informally related to Shin-Sun, began manufacturing HEALTHPLUS supplements derived from squalene and shark cartilage, and from bees or beeswax.
Health World applied for cancellation and/or removal of Shin-Sun’s trade mark because the mark was used, and intended, to identify Nature’s Hive’s goods, not those of Shin-Sun. The primary judge said that Health World’s applications would have succeeded, but dismissed them because Health World was not a “person aggrieved”. The Full Court agreed, noting that Shin-Sun’s registration did not impede Health World’s ownership and use of its trade mark, Health World did not intend to use Shin-Sun’s trade mark and there was no potential for “reputational interference”.
Health World’s appeal to the High Court was successful and the matter was sent back to the Full Court for determination of the remaining issues.
The meaning of “person aggrieved”
The Kraft Foods case, previously tested that a person claiming to be aggrieved “must demonstrate … at least a reasonable possibility of being ‘appreciably disadvantaged in a legal or practical sense’ by the trade mark remaining on the Register.” Further, a person seeking removal of a trade mark is not aggrieved if there is evidence the person would not take advantage of the opportunity to use the mark.
The High Court overruled the Kraft Foods case. It considered that the word “aggrieved” should be liberally construed so that “more people are available to procure the removal of a ‘public mischief’”, i.e. a registered mark that does not properly function as an indicator of trade origin, thereby compromising the integrity and purity of the Register. This should include persons who otherwise would not want the risk and expense of litigation. The requirement to be a person “aggrieved” was intended only to prevent delay and erosion of the security of the Register by “busybodies”, “common informers or strangers proceeding wantonly”, persons with only an “intellectual concern” or those with “merely sentimental motives”.
Accordingly, the High Court said that:
there is no exhaustive test for a “person aggrieved”;
in particular, it is sufficient but not necessary for there to be a reasonable possibility of appreciable disadvantage in a legal or practical sense; and
another possible test (which is also not exhaustive) is that the proprietor and the person claiming to be aggrieved are “rivals in relation to the goods to which the mark applied. It did not matter whether or not they intended to use the mark on those goods”.
The implications
This decision has potentially far-reaching consequences. Many important applications to amend intellectual property Registers can only be made by persons “aggrieved”, in relation to trade marks, patents and designs.
The ramifications of this decision may also extend to any persons affected by or seeking administrative decisions or challenges to administrative decisions. The High Court was careful to stress that the meaning of a person “aggrieved” (and by implication the meaning of similar expressions like “affected”) depends on the particular statutory context. But the High Court’s decision will likely have an impact whenever there is a public interest in an administrative decisions and actions. There are numerous examples in State and Territory law.
Some examples in Federal law include:
applications under the Administrative Decision (Judicial Review) Act 1977 (Cth);
some complaints to the Australian Human Rights Commission;
some appeals from decisions of Fair Work Australia;
rectification of the Register of Ships and offshore mining registers; and
various applications under the Corporations Act, including orders with respect to contravention of market rules, corrections to Registers, and reinstatement of a managed investment scheme.
In those circumstances, this High Court decision might well indicate a preference for a more relaxed standing requirement, so that more persons (excluding of course busybodies and complete strangers) are able to remedy a “public mischief”.
Organisations may now be at greater risk of their intellectual property registrations and administrative decisions favourable to them, being challenged. However, organisations may also have improved standing and therefore increased opportunities to challenge intellectual property registrations and administrative decisions that are impeding their businesses