mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84
Outcome: followed
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: Richards v Butcher [1891] 2 Ch 522
Outcome: cited
The answer must be considered from the perspective of the public, or that section of the public that would purchase these kinds of goods. Would a person in this class understand that the word "Colorado" is being used as a trade mark; that is, as a statement concerning the origin of the goods? I am in no doubt that the answer to this question is in the affirmative. In my opinion a consumer looking at the swing tag would form the view that the goods are being distinguished by two marks, the combination mark and the word "Colorado". This conclusion is in accordance with Richards v Butcher [1891] 2 Ch 522. 21 The position reached to this point then is as follows. Edgarlodge was the first to use the word "Colorado" in relation to handbags. Edgarlodge's use of the word "Colorado" in respect of purses and wallets also predates Colorado Group's use of the word in respect of these goods. 22 I turn now to s 120(2). That section provides that a person will infringe a registered trade mark if he or she uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to: (a) goods of the same description as that of the registered goods; (b) services that are closely related to the registered goods; (c) services of the same description as that of services in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. There is a qualification. A person is not taken to have infringed the trade mark if the person establishes that the relevant use is not likely to deceive or cause confusion.
Case: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd (2000) 50 IPR 321
Outcome: cited
I do not think it can be said that handbags, purses and wallets are of the same description as backpacks. Backpacks, especially those in respect of which Colorado Group or its predecessor applied the mark (being school backpacks), are not put to the same use as handbags, wallets or purses. The nature of the products is, to my mind, quite different. Backpacks are highly functional and directed toward comfort, weight-bearing, support and durability while wallets and purses have a predominant fashion purpose. While perhaps not decisive, a person wishing to buy a backpack would not find a handbag, wallet or purse to be an acceptable substitute or alternative: see San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd (2000) 50 IPR 321, 330; Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401, 410-411. In any event, a consumer is not likely to think that these goods originate from the same source. That is, I do not accept that either the trade or the public would regard the goods as similar.
Case: Spencer's Trade Mark, Re (1886) 54 LT NS 659
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143
Outcome: cited
The final question is whether the service of bringing together handbags, wallets and purses for sale is a service "closely related" to backpacks or whether it is "of the same description" as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is "closely related" to backpacks. There is no relationship between the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627, 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service "of the same description" as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods "closely related" to that service.
Case: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627
Outcome: cited
The final question is whether the service of bringing together handbags, wallets and purses for sale is a service "closely related" to backpacks or whether it is "of the same description" as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is "closely related" to backpacks. There is no relationship between the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627, 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service "of the same description" as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods "closely related" to that service.
Case: NAKX v Minister of Immigration &amp; Multicultural &amp; Indigenous Affairs [2003] FCA 1559
Outcome: applied
In my view, the appropriate course in the circumstances of this case is to dismiss the appeal. The medical certificate, to adopt the words of Lindgren J in NAKX v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2003] FCA 1559 , is 'quite unsatisfactory'. It does not address the question why the condition referred to would prevent the appellant from travelling to the Court and participating effectively in a hearing. 14 In addition, it is difficult to see the status of the certificate where no circumstances are set for the receipt by the Court of the certificate, and the basis upon which it is to be tendered before the Court. All that has happened is that it has been left with the Court for the Court's information and this is, in my view, unsatisfactory. I will accept for the moment that implicit in the delivery of the certificate is an application for an adjournment. However, in my view, no proper basis has been made for the adjournment by the mere giving to the Court of a certificate without any further explanation. 15 Therefore, pursuant to section 25(2B)(bb)(ii) , for failure of the appellant to attend a hearing relating to the appeal, I will make an order that the appeal be dismissed. I should indicate, however, that because this is a dismissal in the absence of the appellant, the appellant may, if so advised and on the proper material, seek to have the order set aside upon application. I say nothing as to whether such an application will be likely to succeed in the circumstances of this case, and this will be a matter which will need to be determined if and when application is made. Accordingly, I will dismiss the appeal with costs. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate: Dated: 24 November 2006 Counsel for the Appellant: No appearance by the Appellant. Counsel for the Respondent: R Knowles Solicitor for the Respondent: Phillips Fox Date of Hearing: 21 November 2006 Date of Judgment: 21 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1624.html
Case: Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57
Outcome: cited
this case, I am satisfied having regard to the affidavit of Ms Kelly Gardner and the matters deposed to by Mr Grigson, that a prima facie case or serious question to be tried is made out on the substantive question for the purposes of Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57 (particularly at [65] to [72]). Having regard to that matter, I am satisfied that an injunction order ought to be made directed to the first respondent. The affidavit of Ms Gardner also deposes to a conversation she had with the first respondent in which the first respondent confirmed his address for receipt of particular material and said that he had signed and would return straightaway a form effecting a forfeiture of the particular articles. That did not occur. The conversation suggests plainly an inference that the respondent accepts that the goods are counterfeit goods. The notice in question is a Notice of Consent to Forfeit Goods under Part 13 the Trade Marks Act . Being satisfied of those matters and particularly having regard to the paragraphs of Ms Gardner's affidavit, namely, paragraphs 30 to 33, taken in conjunction with paragraph 3, I am satisfied that although only two of the articles are the subject of the counterfeit analysis by her, an inference arises that if two of the articles, depicted in the material, are established as counterfeit articles, then the remaining eight articles making up the bundle of 10 articles the subject of the notice, would also be likely to be counterfeit articles. Being satisfied of those matters, it is appropriate to make an order restraining the first respondent in terms of the proposed interlocutory injunction. Since the articles are demonstrated on the material, at least at the standard of a serious question to be tried or prima facie case, to be counterfeit articles, it seems to me that the status quo ought to be preserved by making an order directed to the Customs CEO not to release the counterfeit articles into the hands of the designated owner. I am satisfied that in light of the serious question to be tried, an order ought to be made under s 137(5) , both having regard to its intersection with s 136(1) and its context within Part 13 more generally and the circumstances to be determined in the proceedings.
Case: Shackley v Australian Croatian Club Ltd (1996) 141 ALR 736
Outcome: followed
As AMOU's submissions point out, the expression ' proceeding in a matter ' in s 824(1) extends to an application made by motion in the course of the principal action: Shackley v Australian Croatian Club Ltd (1996) 141 ALR 736 , at 744 (IRC), per Wilcox CJ (with whom von Doussa J agreed); Paras v Public Service Body Head of the Department of Infrastructure (No 3) [2006] FCA 745 ; (2006) 152 FCR 534 , at 539 [19]. There is no dispute that s 824(1) applies to an application for interlocutory relief, just as it does to a motion seeking interlocutory orders. Section 824(1) therefore applies both to the costs of SFC's application for interlocutory relief and of the successful motion brought by AMOU and the second respondents for an anti-suit injunction.
Case: Standish v University of Tasmania (1989) 28 IR 129
Outcome: cited
An application is not commenced ' without reasonable cause ' simply because the applicant's arguments are rejected by the Court: The Queen v Moore; Ex parte Federated Miscellaneous Workers' Union of Australia [1978] HCA 51 ; (1978) 140 CLR 470 , at 473, per Gibbs J. However, if the application is ' misconceived ' the position is very likely to be different: Standish v University of Tasmania (1989) 28 IR 129, at 139, per Lockhart J.
Case: Sydney Ferries Corporation v Australian Maritime Officers Union [2008] FCA 817
Outcome: referred to
On 29 May 2008, the second respondents filed a motion seeking an anti-suit injunction against SFC. AMOU filed a similar motion on 30 May 2008. On 30 May 2008, I made orders restraining SFC, pending final determination of the proceedings in this Court, from taking further action in the Australian Industrial Relations Commission (' AIRC ') to obtain orders against AMOU and the second respondents under s 496 of the WR Act : Sydney Ferries Corporation v Australian Maritime Officers Union [2008] FCA 817.