mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25
Outcome: cited
I have found that both the first respondent and Mr Cranitch infringed the registered trade mark of the applicant under the Act , but that the applicant has not substantiated its claims in relation to breach of the TPA or passing off. Accordingly, I now turn to the applicant's claims for injunctive and associated relief and damages. In this respect I note that, in closing submissions, the applicant elected to seek an award of damages rather than an account of profits pursuant to s 126(b) of the Act and in accordance with the principles in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25 at 32. 105 On 11 March 2008 the first respondent gave an undertaking in Court through its counsel, Mr Crowe SC. Any consideration of relief which would have been available to the applicant must be carried out in light of this undertaking. 106 The undertaking was in the following terms: MR CROWE: Your Honour, while Mr Cranitch is coming to the courtroom, I have instructions from the first respondent to offer an undertaking to the court to give an undertaking to the court that the first respondent in relation to all references to the software, the subject of these proceedings, will not use the word "BING!" when directly referring to that software in any documentation, on websites, or otherwise. To make that plain it is not offering to change its name, but it is offering an undertaking that it will not refer to the software itself as BING! or any other combination of words using the word "BING!". (TS 86 ll 18-25) 117 In relation to the claim of the applicant in para 3 of the Amended Application, I consider that the undertaking given by the first respondent and the actions of the respondents to date and as anticipated by Mr Cranitch's affidavit of 12 March 2008 answer that claim adequately. As I propose to make an order in terms of that undertaking, in my view an order for delivery up and destruction as sought by the applicant is not warranted (cf Colbeam [1968] HCA 50 ; 122 CLR 25 at 39 per Windeyer J).
Case: Community First Credit Union Ltd v Khan (unreported, Supreme Court of New South Wales, 30 August 1995)
Outcome: cited
It is not in dispute that the undertaking given by the first respondent in Court through its Counsel is enforceable by order of the Court: O 35 r 11 Federal Court Rules . Indeed courts have, on occasion, declined to grant injunctions in circumstances where an undertaking given by one of the parties is adequate to protect the rights of the other (for example Simos J in Community First Credit Union Ltd v Khan (unreported, Supreme Court of New South Wales, 30 August 1995)). However it is also recognised that, in a proper case, a party may insist upon an injunction notwithstanding an undertaking which has been given (cf Phillimore and Pickford LJJ in Winkle &amp; Co Ltd v Gent &amp; Son (1914) 31 RPC 473 at 479, 480).
Case: Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 ; (2004) 209 ALR 1
Outcome: cited
These principles are well settled and have been applied on numerous occasions by the Full Court of the Federal Court (for example, Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 ; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 ; (2004) 209 ALR 1).
Case: CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408
Outcome: cited
In relation to the order sought by the applicant in para 5 of the Amended Application, namely that the first respondent transfer the registration of the domain name www.bing.com , I make the following observations: &#8226; The first respondent, apparently in good faith, acquired the domain name from the United States for the not inconsiderable sum of $US25,000. An order in the nature of that sought by the applicant, which would deprive the first respondent of that asset, is not lightly entertained by the Court. &#8226; While it may be commonplace for companies in Australia to use a ".com" or ".com.au" domain name, the first respondent's domain name is registered in the United States. An order that the first respondent transfer an international domain name to remedy infringement of an Australian trade mark which trade mark is territorial in its operation would in my view require extraordinary circumstances. &#8226; The applicant has relied on a number of cases in support of its application for an order that the first respondent be ordered to transfer the domain name, namely the English Court of Appeal case British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289 and the High Court of New Zealand case Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661. Further, Hill J ordered transfer of a domain name in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408. However each of those cases involved cybersquatting, defined by The Australian Concise Oxford Dictionary as "the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit", and which practice is, as Hill J noted in CSR Ltd [2003] FCA 279 ; 128 FCR 408 , conduct somewhat suggestive of criminality and fraud. The facts in each of those cases were very different from those in the case before me.
Case: de Cordova v Vick Chemical Co (1951) 68 RPC 103
Outcome: cited
In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered. 39 The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)...(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
Case: Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731
Outcome: cited
In order to substantiate a claim in passing off the applicant must show: 1) A misrepresentation. 2) Made by a trader in the course of trade. 3) To prospective customers of his or ultimate consumers of goods or services supplied by him. 4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and 5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742; cf Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414 at 443-444 and Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)
Case: Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291
Outcome: cited
In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered.
Case: Fencott v Miller [1983] HCA 12 ; (1983) 152 CLR 570
Outcome: cited
Section 75B reflects the intention of Parliament to bring to account natural persons whose conduct brings about the contravention of the law by a corporation: Fencott v Miller [1983] HCA 12 ; (1983) 152 CLR 570 at 583; Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) FCA 1228 at [75] . However because s 75B imports the requirements of the criminal law ( Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661) , in order to establish accessorial liability pursuant to s 75B the applicant must establish the following: &#8226; in circumstances where the applicant contends that a person has aided and abetted the applicant must demonstrate that the relevant person was aware or ought to have been aware of the facts which gave rise to the contravention of the TPA, and intentionally participated in the contravention ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661) ; and &#8226; in circumstances where the applicant contends that a person was knowingly concerned in a contravention the applicant must demonstrate that the relevant person had actual knowledge of the essential elements of the contravention and intentional participation in it ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661).
Case: Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100
Outcome: cited
In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered.
Case: Johnson &amp; Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215
Outcome: cited
Further, it is clear that: &#8226; The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. &#8226; A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. &#8226; Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson &amp; Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. &#8226; Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.
Case: King v Milpurrurru (1996) 66 FCR 474
Outcome: cited
As the conduct of the first respondent infringed the applicant's trade mark, in my view it is clear that Mr Cranitch had procured or directed that conduct, and accordingly is similarly liable for such infringement (cf also King v Milpurrurru (1996) 66 FCR 474). 69 In both written and oral submissions the applicant emphasised that, so far as concerned a cause of action under the TPA, its primary claim related to alleged breach of s 52. The applicant in the amended statement of claim claimed that the first respondent had, inter alia , contravened s 52 TPA on the basis of the same conduct on which the applicant alleged infringement of its trade mark. 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.
Case: Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160
Outcome: cited
The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1 at 11.
Case: Mark Foys Pty Ltd v TVSN (Pacific) [2000] FCA 1626 ; (2000) 104 FCR 61
Outcome: cited
In order for the applicant to substantiate its case under s 53 , the applicant needs to establish that, by the use of the confusingly or deceptively similar name and mark ("bing"), the first respondent has represented that it has the necessary connection with the applicant such that a substantial number of members of the public will believe that the first respondent or its services has the sponsorship or approval of the applicant ( 10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299 at 301-302; Mark Foys Pty Ltd v TVSN (Pacific) [2000] FCA 1626 ; (2000) 104 FCR 61 at 77-78). 83 This finding is further supported by the absence of evidence before me that either the applicant or its products have a reputation from which the first respondent would be able to benefit (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392 ; Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626). Other than evidence of a small number of inquiries temporarily confusing the applicant with the first respondent, there is no evidence that the applicant or its products and service are sufficiently well-known that a substantial number of members of the public, or even a substantial number of members of those sections of the public which are likely to engage either with the applicant or respondent, would be misled in terms of ss 53(c) or 53 (d) TPA.
Case: Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231
Outcome: cited
In considering the liability of a director of a company for conduct of the company which has infringed the intellectual property rights of a third party, Lindgren J in Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 explained: The "procured or directed" test, sometimes referred to as the "authorised, procured or directed" test, focuses attention on the relationship between the director's intention and the particular corporate conduct which the law characterises as tortious. What seems to underlie this test is the notion that, necessarily, companies can engage in tortious conduct only through human beings, and, at least ordinarily, where a particular human being involved and responsible to an appropriate extent can be identified, he should, as a matter of policy, be liable... (at 243-244) 67 In my view it is clear on the evidence that: &#8226; Mr Cranitch is the managing director and Chief Executive Officer of the first respondent, and is in effective control of the first respondent; &#8226; Mr Cranitch did the relevant background searches prior to the first respondent using the word "bing" in relation to its services (Cranitch affidavit paras 47-55); &#8226; the decision to use "bing" in relation to the services of the first respondent was made by Mr Cranitch (Cranitch affidavit paras 42-46). 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.
Case: Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54
Outcome: cited
In ascertaining whether software is "incidental" to its internet postal service as submitted by the first respondent, it is useful to test the first respondent's hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was "incidental" to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54). 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.
Case: Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522
Outcome: cited
In ascertaining whether software is "incidental" to its internet postal service as submitted by the first respondent, it is useful to test the first respondent's hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was "incidental" to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).
Case: Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137
Outcome: cited
Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.
Case: Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414
Outcome: cited
In order to substantiate a claim in passing off the applicant must show: 1) A misrepresentation. 2) Made by a trader in the course of trade. 3) To prospective customers of his or ultimate consumers of goods or services supplied by him. 4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and 5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742; cf Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414 at 443-444 and Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)