Jacobson J found that the two marks were not deceptively similar because they conveyed different ideas and concepts. He was of the opinion that HealthPlus conveyed an impression of overall or general health and that INNER HEALTH PLUS specifically concerned internal health. In addition, he found the marks to be visually different as the dominant part of the INNER HEALTH PLUS mark was the phrase “Inner Health”.

At the heart of the dispute was the question of the reputation of Heath World in INNER HEALTH PLUS. Shin-Sun contended that Health World’s reputation in the Inner Health Plus capsules was not separate and distinct from its reputation in Inner Health Powder, the product it had launched nine years before. Jacobson J accepted Shin-Sun’s submission, and was of the opinion that the entire thrust of Health World’s launch of the Inner Health Plus capsules was to take advantage of the reputation of the Inner Health Powder and the goodwill attaching to it. He therefore rejected Health World’s ground for removal of the HealthPlus mark under s 88(2)(a) and s 60, claims that Shin-Sun had passed off its pharmaceutical products as those of Health World, and claims that Shin-Sun’s conduct was misleading and deceptive under the Trade Practices Act 1975 (Cth).

Health World also sought revocation of the HealthPlus mark under sections 88(2)(a) and 59, as at the time Shin-Sun applied for registration of their mark, they did not intend to use or authorise the use of the HealthPlus mark. Health World also sought removal of the HealthPlus mark on the ground that Shin-Sun had failed to use the mark in Australia during the three year period referred to in s 92(4)(a).

These grounds were raised because of the failure of Shin-Sun and the persons who conduct the business of that company to distinguish between the separate identities of Shin-Sun and an associated company, Nature’s Hive Pty Ltd (“Nature’s Hive”). In particular, the HealthPlus products identified Nature’s Hive rather than the trade mark owner Shin-Sun as being responsible for those products. Accordingly, Jacobson J found that Shin-Sun had failed to show an intention to use the mark and that Shin-Sun had not used the mark during the relevant three year period, but rather it was Nature’s Hive that used the mark during that period and at all other times. He also found that use of the HealthPlus mark by Nature’s Hive, although having the same directors as Shin-Sun, did not amount to authorised use because Shin-Sun did not relevantly control Nature’s Hive’s use of the mark.

Health World further contended that as the HealthPlus mark was being used to identify the goods of Nature’s Hive and not those of Shin-Sun, it was likely to deceive or cause confusion under s 88(2)(c). For the reasons above, this was accepted by Jacobson J.

It followed that if Health World had standing as a person aggrieved, the grounds under sections 59, 88(2)(c) and 92(4)(a) were made out. However, Jacobson J found that Health World was not a person aggrieved because the evidence was inconsistent with any intention of Health World to use the HEALTH PLUS trade mark, other than as part of its existing INNER HEALTH PLUS mark. As he found that the HealthPlus mark was not deceptively similar to the INNER HEALTH PLUS mark, Health World was found not to be a person aggrieved. Therefore, Health World’s applications seeking that the HealthPlus trade mark be removed from the register were dismissed.

The difficulties encountered by Shin-Sun illustrate the importance of ensuring that a trade mark is registered and remains in the name of the party that will use the mark. While Health World were able to show that Shin-Sun did not use the HealthPlus mark within the three year period specified in s 92(4)(a), the HealthPlus mark was not removed because Health World failed to show that they were a person aggrieved. It is important to note that the 2006 amendments have removed the requirement in s 92 that the applicant for removal of a mark be a person aggrieved.

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Following is an excerpt from the Abstract of the decision:

Some general principles that flow through to the dismissal of patent oppositions from recent changes to Section 31A of the Federal Court Rules and subsequent Federal Court decisions are discussed. Notably, an opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.

The claims as accepted defined a new polymorph of perindopril tert-butylamine salt which was characterised by X-ray crystallography. Uses of the compound in pharmaceutical formulations and methods were also defined. The proposed amendments sought to include claims to the compound and methods with the further characteristic that the polymorph was in the form of “individual needles”. The opponent opposed the amendments under section 104 and addressed all grounds of opposition available under section 102. The applicant requested dismissal of the opposition on the basis that it was manifestly groundless and could not possibly succeed.

A consideration of the case set out by the opponent shows that it has no reasonable prospects of success. The opponent has not established that there is a real issue to be determined, or the issues identified are in respect to matters that do not arise as a result of the amendments and would not be sustainable in an opposition under section 104. On that basis the opposition is dismissed.