Last Friday, the High Court granted special leave to appeal in 2 trade mark matters:
- Health World Ltd v Shin-Sun Australia Pty Ltd
- E & J Gallo Winery v Lion Nathan Australia Pty Limited
Given only about 80 cases a year score this level of achievement, there are obviously big issues afoot.
The Gallo case raises the fundamental issue of what is “use as a trade mark”. The trade mark owner had never sold or supplied wine bearing his mark into Australia. However, some wine which his authorised user in the USA had apparently sold to someone in Germany some how made its way to Australia. The Courts below had refused to find that was sufficient for use on the grounds that use required some intention to project the goods into the course of trade in Australia.
During the course of the application, Gummow J also questioned whether the potential exercise of the discretion against removal was on the table.
There would also appear to be an application for leave to cross-appeal lurking in the wings somewhere.
The Health World case seems to be of rather narrow compass. It raises the question of what constitutes a “person aggrieved” for the purposes of standing under s 92 to seek removal of a trade mark for non-use. The requirement for standing, however, has subsequently been broadened so that any person may now bring the action. The applicant for special leave was not even called on. During the course of the application, Gummow J noted:
GUMMOW J: Yes, but 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?
Lid dip: POF