On 12 April 2010, the High Court of Australia handed down its first decision in a trade mark dispute for around 10 years in Health World Ltd V Shin-Sun Australia Ply Ltd. This decision concerned the issue of an applicant having ‘standing’ as an “aggrieved person” for the purpose of bringing proceedings for cancellation of a trade mark under section 92 or revocation of a trade mark under section 88 of the Trade Marks Act 1995.
This decision provides useful guidance on aggrieved person status under the Act. However, the decision relates to an action commenced prior to the amendment to section 92 ofthe Act, effective 23 October 2006, which removed the requirement for a removal applicant to be a person aggrieved. Accordingly, its usefulness will be largely restricted to cancellation actions.
It was concluded by the High Court that while the “aggrieved person” requirement has a filtering function, it should be construed liberally. It was held that it was not necessary to show that the applicant intends to use the trade mark, or would be appreciably disadvantaged in a legal or practical sense by the trade mark remaining on the Register. Rather, the High Court concluded that Health World was aggrieved because the companies were rivals in selling the health products in question, “They are in the same trade, and they each trade in the class of goods in respect of which the challenged mark is registered.
Australian practitioners now have additional guidance as to Whether their clients meet the requirement of “aggrieved person”. The effect of the High Court decision is that it should be easier to apply to remove a competitor’s mark that may have been wrongly made or wrongly remains on the Register if the parties operate in the same ñeld of business.