mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1
Outcome: applied
of a domain name may constitute conduct falling within s 52: e.g. CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 , 128 FCR 408 ; Macquarie Bank Ltd v Seagle [2008] FCA 1417 , 79 IPR 72. Indeed, as in the present proceeding, in intellectual property cases it is not uncommon for a plaintiff to contend that the conduct of a respondent in using a domain name or a business name constitutes not only a contravention of ss 52 and 53 of the Trade Practices Act and the tort of passing off, but also a contravention of the Trade Marks Act : Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760 , 79 IPR 454; SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1. In SAP Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1 , French, Heerey and Lindgren JJ thus observed (citations omitted): [51] ... it was rightly observed that misleading or deceptive conduct in trade or commerce is not limited to conduct which induces or is likely to induce entry into a transaction. So to propose would be to limit s 52 of the TP Act in a way not justified by its terms. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded ... In reaching these conclusions, one of the decisions relied upon by their Honours was the earlier decision of Beaumont J in TEC &amp; Tomas (Australia) Pty Ltd v Matsumiya Computer Company Pty Ltd (1984) 1 FCR 28 at 37 to 38. His Honour there recognised as follows that misleading conduct at the outset may be a " door opener ": The fact that "Seiko" is a household name, at least in respect of watches, confirmed by the experience of the respondents that the name "Seiko" has been a "door opener" in marketing terms, indicates that a potential purchaser of computers may well commence to deal with the respondents in circumstances where he would not have done so if the respondents had made no mention of "Seiko" in its trade or business name and in advertising. In my view, to induce the introduction of such a dealing is conduct which contravenes s 52, even if, ultimately, the consumer becomes aware that the equipment he is purchasing is not that of the Hattori Seiko group, the deception having occurred at an earlier stage: what is relevantly induced is the dealing or the negotiations, as distinct from the subsequent purchase itself. As Taco's case held, there is no reason why s 52 cannot apply to the earlier inducement, even if, as Puxu's case held, the conduct in respect of the purchase itself does not offend s 52 because, by then, the consumer knows or ought to have known that he is purchasing a product other than that of the Hattori Seiko group.
Case: Select Personnel Pty Ltd v Morgan &amp; Banks Pty Ltd (1998) 12 IPR 167
Outcome: cited
need not be any deliberate fraud or any intention on the part of a defendant to deceive: ConAgra (1992) 33 FCR at 344 per Lockhart J; Select Personnel Pty Ltd v Morgan &amp; Banks Pty Ltd (1998) 12 IPR 167 at 170 to 171 per McLelland J. There is no requirement that a respondent has been fraudulent, malicious or negligent: R &amp; C Products (1993) 42 FCR at 192 per Davies J. But the presence or lack of any conscious intent can be relevant as a matter of evidence in establishing whether there has been any unlawful passing off: Pacific Publications [2005] FCA 625 at [88] , [2005] FCA 625 ; 222 ALR 127 at 148 per Tamberlin J.
Case: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Outcome: cited
the absence of any statutory definition of the phrase " substantially identical ", the meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is " in substance " the same or " essentially " the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] [1999] FCAFC 1020 ; , 93 FCR 365 at 387 per Branson J. Whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed (some citations omitted): 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 R.P.C. 103 , at p. 106]. Whether there is substantial identity is a question of fact ... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co [1999] FCA 1721 at [38], 96 FCR at 121 per Black CJ, Sundberg and Finkelstein JJ. See also: E &amp; J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Outcome: applied
assessing whether the marks are deceptively similar, it is relevant to consider the context in which customers are likely to form their impressions of the marks: Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 per Kitto J; Anheuser-Busch Inc [2002] FCA 390 at [153] , [2002] FCA 390 ; 56 IPR 182 at 218 per Allsop J.
Case: Star Industrial Company Ltd v Yap Kwee Kor [1976] FSR 256
Outcome: applied
off is a remedy for the invasion of a right of property in the business or goodwill likely to be injured by misrepresentations made by the passing off of one person's goods as those of another: Star Industrial Company Ltd v Yap Kwee Kor [1976] FSR 256 at 269; Pacific Publications Pty Ltd v Next Publishing Pty Ltd [2005] FCA 625 at [25] , [2005] FCA 625 ; 222 ALR 127 at 135 per Tamberlin J. It is not a remedy for the invasion of a right of property in a mark, name or get-up which has been improperly used. Nor is it, unlike s 52 of the Trade Practices Act , designed to protect consumers.
Case: State Bank of NSW Ltd v Commissioner of Taxation [1995] FCA 1652 ; (1995) 62 FCR 371
Outcome: cited
51A(1), it will be noted, provides ( inter alia ) that there is to be included in the sum for which judgment is given an order for interest " unless good cause is shown to the contrary ". The provision, introduced by way of amendment in 1984, " is a facultative provision intended to confer power on the Court to do justice between parties in relation to pre-judgment interest; a matter of some importance in these days of high interest rates and extensive delays in finalising litigation ": State Bank of NSW Ltd v Commissioner of Taxation [1995] FCA 1652 ; (1995) 62 FCR 371 at 385 per Wilcox J. The primary purpose of an award of pre-judgment interest is to compensate a successful applicant for the loss or detriment which has been suffered by reason of being kept out of money: Whitaker v Commissioner of Taxation (1998) 82 FCR 261 at 269 per Lockhart J.
Case: TEC &amp; Tomas (Australia) Pty Ltd v Matsumiya Computer Company Pty Ltd (1984) 1 FCR 28
Outcome: applied
SAP Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1 , French, Heerey and Lindgren JJ thus observed (citations omitted): [51] ... it was rightly observed that misleading or deceptive conduct in trade or commerce is not limited to conduct which induces or is likely to induce entry into a transaction. So to propose would be to limit s 52 of the TP Act in a way not justified by its terms. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded ... In reaching these conclusions, one of the decisions relied upon by their Honours was the earlier decision of Beaumont J in TEC &amp; Tomas (Australia) Pty Ltd v Matsumiya Computer Company Pty Ltd (1984) 1 FCR 28 at 37 to 38. His Honour there recognised as follows that misleading conduct at the outset may be a " door opener ": The fact that "Seiko" is a household name, at least in respect of watches, confirmed by the experience of the respondents that the name "Seiko" has been a "door opener" in marketing terms, indicates that a potential purchaser of computers may well commence to deal with the respondents in circumstances where he would not have done so if the respondents had made no mention of "Seiko" in its trade or business name and in advertising. In my view, to induce the introduction of such a dealing is conduct which contravenes s 52, even if, ultimately, the consumer becomes aware that the equipment he is purchasing is not that of the Hattori Seiko group, the deception having occurred at an earlier stage: what is relevantly induced is the dealing or the negotiations, as distinct from the subsequent purchase itself. As Taco's case held, there is no reason why s 52 cannot apply to the earlier inducement, even if, as Puxu's case held, the conduct in respect of the purchase itself does not offend s 52 because, by then, the consumer knows or ought to have known that he is purchasing a product other than that of the Hattori Seiko group.
Case: Thomson Australian Holdings Pty Ltd v The Trade Practices Commission [1981] HCA 48 ; (1981) 148 CLR 150
Outcome: distinguished
Applicants' written Outline of Submissions states in part: 206. The language is clear and unambiguous and there were no reservations in relation to the orders sought or included in the consent orders. 207. The effect of those orders is that the respondents agreed to permanent injunctions, and thus foreclose any argument before the Court now that liability is denied. In support of their submission, the Applicants relied upon the following observations of Gibbs CJ, Stephen, Mason and Wilson JJ in Thomson Australian Holdings Pty Ltd v The Trade Practices Commission [1981] HCA 48 ; (1981) 148 CLR 150 at 164: In deciding whether consent orders sought are in conformity with legal principle the Court is entitled to treat the defendants' consent as involving an admission of all facts necessary or appropriate to the granting of the relief sought. The orders there in issue were orders giving effect to terms of settlement. They were final orders. The difficulty confronting the Applicants, however, is that notwithstanding that all Respondents consented to the orders made in December 2007 granting injunctive relief, those orders were made " until further order ". The order as then made was not a " permanent injunction " as contended by the Applicants. There may well be reasons why a respondent may not wish to oppose interlocutory relief at the outset of a proceeding but may seek to preserve an entitlement to defend the proceeding at a final hearing. Consent to the grant of interlocutory relief cannot be construed as an admission of all facts necessary to establish liability at a final hearing. To contend otherwise would be a submission without substance. It was for that reason that no reliance was ultimately placed by the Applicants upon the grant of the injunctive relief. This way in which the Applicants sought to advance their submission is thus rejected. The 2007 orders do not have the conclusive effect they assert. " Reservation " is expressed on the face of those orders in that the orders are not " permanent injunctions ". The interlocutory nature of the relief, it is thus considered, does not preclude any of the Respondents from now denying liability.
Case: Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605
Outcome: cited
tort includes "... circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others ... ": Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J. The tort is not confined to cases where loss consists in the diversion of trade: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 at 368 per Dixon J. The tort extends to those cases where a plaintiff and defendant are not engaged in a " common field of activity " and where a defendant is not in direct competition with a plaintiff: Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605 at 608 to 609 per Smith J; 10 th Cantanae (1987) 79 ALR at 324 per Gummow J.
Case: TS &amp; B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151 , 158 FCR 444
Outcome: applied
must be a " joint purpose " in engaging in unlawful conduct if there is to be liability as joint tortfeasors: TS &amp; B Retail Systems Pty Ltd v 3Fold Resources Pty Ltd (No 3) [2007] FCA 151 , 158 FCR 444. Finkelstein J there thus summarised the position as follows: Joint tortfeasors [177] The common law rule is that one tort may be committed by two or more persons: they are usually referred to as joint tortfeasors. Although the term is commonly used, the concept is not well defined. To be joint tortfeasors it is not sufficient that the independent wrongful acts of two persons have caused the same damage. Those persons are several tortfeasors. In Sir John Heydon's Case (1612) 7 ER 1150 at 1151 joint tortfeasors were described as "all coming to do an unlawful act, and of one party, the act of one is the act of all of the same party being present". The rule goes back to when an action in trespass was principally criminal ( Sir Charles Stanley's Case [1708] EngR 26 ; (1663) 84 ER 1094) but has been extended. There are three classes of joint tort: where a party is vicariously responsible for the acts of another &#8212; as in master and servant, principal and agent and partnership; when there is a breach of a joint duty, be it a statutory or common law duty; and concerted action. [178] As regards the third class (concerted action) to be joint tortfeasors the unlawful act must be for a "joint purpose" ( Clark v Newsam [1847] EngR 531 ; (1847) 154 ER 55) or "concerted action ... towards a common end" ( The Koursk [1924] P 140 at 152). In Thompson v Australian Capital Television Pty Ltd [1996] HCA 38 ; (1996) 186 CLR 574 the High Court accepted as a correct description of joint tortfeasors that given by Sargeant LJ in the The Koursk [1924] P at 159-160, namely that "there must be a concurrence in the act or acts causing damage not merely a coincidence of separate acts which by their conjoined effect cause damage". So, employing the language of criminal lawyers, all persons who aid or counsel direct or join in the commission of a tort are joint tortfeasors : Pratt v British Medical Association [1919] 1 KB 244 at 254 citing Petrie v Lamont [1841] EngR 66 ; (1841) 174 ER 424 at 426. Intent, of course, is not an ingredient of the tort for we are dealing with the civil law, not criminal conduct.
Case: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352
Outcome: cited
tort includes "... circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others ... ": Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J. The tort is not confined to cases where loss consists in the diversion of trade: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 at 368 per Dixon J. The tort extends to those cases where a plaintiff and defendant are not engaged in a " common field of activity " and where a defendant is not in direct competition with a plaintiff: Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605 at 608 to 609 per Smith J; 10 th Cantanae (1987) 79 ALR at 324 per Gummow J.
Case: Wardley Australia Ltd v The State of Western Australia [1992] HCA 55 ; (1992) 175 CLR 514
Outcome: cited
entitlement to loss or damages springs from s 82(1) of the Trade Practices Act , which provides as follows: ... a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of Part ... V ... may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention. In order to obtain relief under s 82 , a person must have suffered loss or damage " by " conduct in contravention of (relevantly) Part V: Wardley Australia Ltd v The State of Western Australia [1992] HCA 55 ; (1992) 175 CLR 514. Mason CJ, Dawson, Gaudron and McHugh JJ there observed at 525: By virtue of s. 82(2) of the Act, the period of limitation begins to run at the time when the cause of action under s. 82(1) accrues. As loss or damage is the gist of the statutory cause of action for which s. 82(1) provides [ Elna Australia Pty. Ltd. v. International Computers (Australia) Pty. Ltd. [No. 2] [1987] FCA 230 ; (1987), 16 F.C.R. 410 , at p. 418], the cause of action does not accrue until actual loss or damage is sustained. The statutory cause of action arises when the plaintiff suffers loss or damage "by" contravening conduct of another person. "By" is a curious word to use. One might have expected "by means of", "by reason of", "in consequence of" or "as a result of". But the word clearly expresses the notion of causation without defining or elucidating it. In this situation, s. 82(1) should be understood as taking up the common law practical or common-sense concept of causation recently discussed by this Court in March v. Stramare (E. &amp; M. H.) Pty. Ltd. [(1991) [1991] HCA 12 ; 171 CLR 506] , except in so far as that concept is modified or supplemented expressly or impliedly by the provisions of the Act. Had Parliament intended to say something else, it would have been natural and easy to have said so.
Case: WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274
Outcome: cited
test to be applied before a director or other officer of a corporation is exposed to liability by reason of his involvement in the conduct of a corporation remains uncertain. The starting point, however, is the following observations of Gummow J in WEA International Inc v Hanimex Corporation Ltd (1987) 17 FCR 274 at 283 (citations omitted): Where the infringer is a corporation questions frequently arise as to the degree of involvement on the part of directors necessary for them to be rendered personally liable. Those questions are not immediately answered by principles dealing with "authorisation" or joint tortfeasance. Rather, recourse is to be had to the body of authority which explains the circumstances in which an officer of a corporation is personally liable for the torts of the corporation ...
Case: Whitaker v Commissioner of Taxation (1998) 82 FCR 261
Outcome: cited
51A(1), it will be noted, provides ( inter alia ) that there is to be included in the sum for which judgment is given an order for interest " unless good cause is shown to the contrary ". The provision, introduced by way of amendment in 1984, " is a facultative provision intended to confer power on the Court to do justice between parties in relation to pre-judgment interest; a matter of some importance in these days of high interest rates and extensive delays in finalising litigation ": State Bank of NSW Ltd v Commissioner of Taxation [1995] FCA 1652 ; (1995) 62 FCR 371 at 385 per Wilcox J. The primary purpose of an award of pre-judgment interest is to compensate a successful applicant for the loss or detriment which has been suffered by reason of being kept out of money: Whitaker v Commissioner of Taxation (1998) 82 FCR 261 at 269 per Lockhart J.
Case: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 49 FCR 89
Outcome: cited
the purposes of a passing off action, it should also be noted at the outset that the comparison involved is different to the comparison undertaken for the purposes of resolving whether the use of a mark is " deceptively similar " for the purposes of s 120 of the Trade Marks Act : Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 49 FCR 89. Gummow J there observed at 128: Where the comparison of the marks is necessary to determine whether that of the defendant is deceptively similar to the registered mark of the plaintiff, who sues for infringement, the primary comparison must be between the registered mark on the one hand and the mark as used by the defendant on the other. The comparison differs from that in a passing off action where the plaintiff points to the goodwill built up around the mark by reason of prior use and then points to the conduct of the defendant as leading to deception (or perhaps merely confusion) and consequent damage to that goodwill of the plaintiff. No relief is sought as against the First or Second Respondents. Liability is, however, sought to be established as against the Third, Fourth and Fifth Respondents. That liability is said by the Applicants to arise by reason of either: s 75B of the Trade Practices Act , in the event that there is a contravention of ss 52 or 53 of that Act; or the liability ascribed to directors and others for corporate wrongdoing, in the case of an infringement of the trade mark or passing off. The liability of the Third, Fourth and Fifth Respondents arose on the Applicants' case in respect to conduct occurring as between May 2006 and January 2008.
Case: Schweppes Ltd v Archer (1934) 34 SR (NSW) 178 at 183
Outcome: distinguished
Alternatively, Mr Tree submitted that review by the Court was constrained in the same way as courts are upon a review of a taxation of costs. In such a case it is said that the Court will only interfere on an error of principle or, on a matter of discretion, "where the taxing officer's discretion appears not to have been exercised at all, or to have been exercised in a manner which is manifestly wrong; and where the question is one of amount only, will do so only in an extreme case": Schweppes' Ltd v Archer (1934) 34 SR (NSW) 178 at 183. 28 Neither submission should be accepted. The power of the District Registrar to determine or review (or "confirm, increase or reduce") the Liquidator's remuneration and expenses comes from the Court's powers under s 473(3) and (5) of the Corporations Act . A power of the Court may be delegated to a Registrar by Rules of Court: Federal Court of Australia Act 1974 (Cth) s 35A(1)(h). The powers in question were delegated by r 16.1(1) of the Federal Court (Corporations) Rules 2000 (Cth), see sch 2, Pt 1 , item 54. The exercise of a power so delegated may be reviewed by the Court or a Judge: r 16(2). For constitutional reasons (see Harris v Caladine [1991] HCA 9 ; (1991) 172 CLR 84), the review of a Registrar's decision must be a hearing de novo : Mazukov v University of Tasmania [2004] FCAFC 159 at [21] - [24] (Kiefel, Weinberg and Stone JJ). For that reason, reviews of taxation of costs in this Court are not limited as in the Schweppes' rule: Cachia v Westpac Financial Services Limited [2003] FCA 817 at [18] - [24] (Hely J).