The issue in contention concerned the interpretation of the standing of an “aggrieved person” or “person aggrieved” in sections 88(1) and 92(1) of the Trade Marks Act 1995 (Cth).
In allowing the appeal their Honours FRENCH CJ, GUMMOW, HEYDON AND BELL JJ, allowed a liberal and non-exhaustive test to the meaning by overruling Kraft’s case:
Three points must be made about Powell’s case.
The first point is that none of the express language used suggests that any test stated is exhaustive.
The second point is that nothing in the case supported by implication the suggestion that any test stated was exhaustive. In particular, the passage in Kraft’s case which the Full Court in this case quoted and relied on to support the “prima facie rule” which Health World failed to satisfy is not derivable from any exhaustive test in Powell’s case. In Powell’s case in the Court of Appeal Lindley LJ said that though there was no evidence that the respondents “really will or do intend to make Yorkshire Relish”, it “may well be that if they can get rid of this mark they will sell [it].” He and the other members of the Court of Appeal concluded that the respondents were therefore “persons aggrieved”. The appellant contended to the House of Lords that to be a person aggrieved “the rival trader must actually at the time have an intention or desire to trade in the article in question; that at any rate there must be a reasonable probability of such an intention or desire at some future time”. Lord Watson accepted that submission, and cited two cases for it which counsel had cited. Despite the Court of Appeal’s statement that there was no evidence that the respondents wished or intended to sell Yorkshire Relish, both the Court of Appeal and the House of Lords held that the respondents were persons aggrieved. Hence a possibility of use of the mark unsupported by evidence suffices, even where there is no evidence of an actual desire or intention on the applicant’s part to use the mark. That is, even an absence of actual desire or intention to use the mark does not exclude the reasonable possibility or probability to which Lord Watson referred. Reliance by the Full Court in the present case on the primary judge’s finding that Health World did not intend to use the mark without considering any reasonable possibility or probability unsupported by evidence is inconsistent with the reasoning in Powell’s case as it applied to the facts.
Thirdly, McLelland J’s test, which the Full Court in this case took from Kraft’s case, and which it said Health World failed to satisfy, is explicitly stated by Lord Herschell LC in Powell’s case not to be exhaustive. The only support that test might find in Lord Herschell LC’s speech is in the last sentence quoted from it above – particularly the words “who might desire to make use”. But the second-last sentence quoted from Lord Herschell LC’s speech makes it clear that the test is not exhaustive, for in that sentence Lord Herschell LC stated a different test – not a test turning on whether the applicant “might desire” to use the trade mark, but a test turning on whether the trade mark “would or might limit the legal rights of the applicant”, whatever future course of conduct the applicant actually had in mind or was likely to embark on.
In short, as Lord Pearce said in “Daiquiri Rum” Trade Mark of Lord Herschell LC’s statement:
“Lord Herschell was not there purporting to do more, I think, than decide that the applicants were within the ambit of the words [‘person aggrieved’].”
The Ritz Hotel case. The next question is whether McLelland J in the Ritz Hotel case stated any exhaustive test. Although in Kraft’s case there is an explicit statement, quoted above, that he did, that is not so. McLelland J was considering the meaning of “person aggrieved” in ss 22(1) and 23(1) of the Trade Marks Act 1955 (Cth). Section 22(1) broadly corresponded with s 88(1) and s 23(1) with s 92(1). Before enunciating the supposedly exhaustive test, McLelland J said:
“Decisions of high authority appear to me to establish that the expression has no special or technical meaning and is to be liberally construed. It is sufficient for present purposes to hold that the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.” (emphasis added)
The emphasised words indicate that McLelland J, like Lord Herschell LC and the other members of the House of Lords, was deciding not what the legislation necessitated but what was sufficient to determine the precise issue presented for decision; they were not offering a complete account of what the legislation meant. McLelland J was deciding that Ritz Hotel Ltd, which was claiming to be aggrieved by Charles of the Ritz Ltd’s trade mark registrations “CHARLES OF THE RITZ” and “RITZ”, was an aggrieved person. Thus McLelland J was not laying down a “general” or exhaustive test. Instead he was enunciating a proposition “sufficient for present purposes”, namely deciding the particular controversy before him. He was not marking the outer boundary of the words “aggrieved person”.
It follows that so far as the Full Court in Kraft’s case held that the test which it found Health World to have failed was an exhaustive test, Kraft’s case should be overruled.
Brisbane Barrister – David Cormack