“Person aggrieved”: a burden on the public freedom to trade?

On 31 July 2009 the High Court granted special leave to appeal in two trade marks matters.  One is Health World Ltd v Shin-Sun Australia Pty Ltd.

Health World, a manufacturer of health products including capsules, failed to demonstrate it was a person aggrieved by Shin-Sun’s registration of HEALTHPLUS mark also in respect of health products, and its appeal against the first instance decision was dismissed.  The High Court appeal will concern whether to be a person sufficiently “aggrieved” to apply for removal of someone’s mark for non-use there needs to be a reasonable possibility that you will be “appreciably disadvantaged in a legal or practical sense” by the mark remaining on the register (per Kraft Foods Inc v Gaines Pet Foods Corp (1996) 65 FCR 104). 

Justice Gummow’s attitude during the special leave application was:

“… what is the rationale for saying that? If there is a register and it has a trademark on it that should not be there, and another trader is prepared to come along and expend the money to get it removed, why would you say they cannot come? Why should this burden on the public freedom to trade be retained?”

In Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 Justice McLelland echoed this sentiment. His Honour refused to attempt a reconciliation, “even if it were thought possible”, of all of the authorities on meaning of person aggrieved.  His Honour said only that “decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed”.  His Honour said that the phrase would embrace persons with a reasonable possibility of being appreciably disadvantaged.  However, his Honour said nothing about whether that was an exhaustive definition of the phrase.  Perhaps the High Court will be in a position to do what a lower court is not well placed to.

In any event, it seems clear that the Full Federal Court in Health World confined the test even further than in Kraft.  It spoke of the “need” for “appreciable disadvantage” (excising the requirement of mere “reasonable possibility”), and said that “once it is accepted that the two marks are not deceptively similar and that their reputations do not intersect it is difficult to identify what interest of Health World is affected by the registration of HEALTHPLUS”.

Some may well question the use of a High Court clarification on this point.  Parliament has subsequently removed the “person aggrieved” requirement from the relevant section so persons filing trade mark removal actions for non-use no longer have to show that they are a “person aggrieved”.  However, the phrase  “person aggrieved” does pop up in other areas of the law, including other areas of intellectual property law, as well as administrative law and environmental law.  This High Court appeal could be one for non-IP lawyers to keep tabs on as well.

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