HEALTHPLUS registration is fighting fit

In Health World Limited v Shin-Sun Australia Pty Ltd, the Federal Court has upheld a decision to dismiss the plaintiff's opposition to the registration of HEALTHPLUS.

Health World Limited uses the registered trademark INNER HEALTH on pharmaceutical preparations in Class 5 of the Nice Classification, including preparations for promoting the growth of beneficial intestinal bacteria. In July 2000 it introduced a new version of the INNER HEALTH product, which was in capsule form and did not require refrigeration. Health World used the unregistered mark INNER HEALTH PLUS on this new product.

Shin-Sun Australia Pty Ltd applied to register the HEALTHPLUS trademark 12 months after Health World introduced the INNER HEALTH PLUS product. Health World opposed registration but the opposition was refused.

On appeal, the Federal Court upheld the Trademark Office's (TO) decision. It was satisfied that, in the minds of consumers, the aural and visual effects of the two marks were significantly different. Accordingly, HEALTHPLUS was not deceptively similar under Section 60 of the Trademarks Act 1995 to Health World's unregistered INNER HEALTH PLUS mark.

The court also held that Shin-Sun's use of the mark was not covered by Section 42(b) of the act, which provides that an application for the registration of a trademark must be rejected if "its use would be contrary to law". As Health World had failed to make out the test of deceptive similarity for the purposes of Section 60(a) of the act it could not show that future use of the mark would contravene Sections 52 and 53(b) and (c) of the Trade Practices Act 1974, which prohibit misleading or deceptive conduct and certain false representations.

The court also made findings on the standard to be applied by a single judge in considering an appeal from a decision by the TO under Section 56 of the Trademarks Act. It noted that an appeal in an opposition proceeding should not be a full exploration of the prospective validity of a trademark as an unsuccessful opponent would always have the opportunity to bring an expungement proceeding. As a result, the applicable test when considering an appeal under Section 56 is whether the trademark should "clearly not be registered". However, the court found that Health World had not made out its grounds of objection on a balance of probabilities and accordingly it was not necessary to apply the higher standard.

Lisa Ritson and Fionn Bowd, Blake Dawson Waldron, Sydney