Plant breeder’s rights in the EU

The European Court of Justice has dismissed Ralf Schräder’s appeal from the rejection of its registration for plant breeder’s rights in plectranthus ornatus.

It would seem after detailed genetic testing, including travel to South Africa, the EU regulatory authorities have determined the variety the subject of the application is not distinct from a common South African plant.

IPKat has a good overview, with links to earlier stages in the dispute, here.

Case C?38/09 P Ralf Schräder v Community Plant Variety Office

High Court allows appeal in Health World

The High Court has unanimously allowed Health World’s appeal from the Federal Court’s ruling that it was not an “aggrieved person” and so had no standing to seek rectification of Shin Sun’s HEALTHPLUS trade mark.

Shin Sun had registered HEALTH PLUS for pharmaceutical products including vitamins and dietary supplements in class 5; and Health World was using INNER HEALTH PLUS for the same type of goods and had successfully registered it. Its action for rectification of the Register had failed in the Federal Court on the grounds that it was not an “aggrieved person”.

The High Court ruled that Health World was an aggrieved person as it and Shin Sun were trade rivals, 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.

French CJ, Gummow, Heydon and Bell JJ noted at [22]

the legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity”[9] and that it be “pure”[10]. It is a “public mischief” if the Register is not pure[11], for there is “public interest in [its] purity”[12]. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied[13].

This objective was balanced by a need to stop the courts being clogged by, and trade mark owners being vexed by, busybodies. At [27], their Honours noted:

While the Act offers these facilities for ensuring that the Register is pure in the sense that no mark is to be registered unless valid, and no registration of a mark is to continue if it is not valid, the purpose of ensuring purity exists alongside another purpose. That is the purpose of preventing the security of the Register from being eroded by applications for rectification or removal by busybodies or “common informers or strangers proceeding wantonly”[15] or persons without any interest in the Register or the functions it serves beyond gratifying an intellectual concern or reflecting “merely sentimental motives”[16]. Applications of that kind, by clogging up and causing delay in the courts, would cause an unnecessary cloud to hang over registrations. The purpose of avoiding this outcome is reflected in the standing requirements in ss 88 and 92. Applications by persons who are not aggrieved are positively inimical to the fulfilment of the statutory purposes through the Register.

The Full Federal Court from which the appeal was brought had erred by adopting the rule laid down in Kraft v Gaines, that the exhaustive test for standing included a requirement that trader could, or might reasonably, wish to use the mark under challenge.

Crennan J delivered a concurring opinion. Her Honour differed from the majority in considering that an aggrieved person must be affected by the wrongly registered trade mark. Her Honour accepted that Health World satisfied that test. However, Crennan J considered at [61] “it is not essential to the resolution of these appeals to decide that it is sufficient for “a person aggrieved” to prove no more than trade rivalry with the registrant of the trade mark sought to be removed.”

As a result of this ruling, it would seem that Shin Sun’s trade mark would be removed from the Register on the trial judge‘s findings that Shin Sun did not intend to use or authorise the use of the trade mark (s 59(a)) and Shin Sun had allowed the trade mark to become deceptive or confusing (s 88(2)(c)). Health World second action for removal for non-use under s 92 would also succeed.

Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13