mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Nokia Corporation v Mai (2003) 59 IPR 413
Outcome: followed
With respect to each of the allegedly counterfeit products, Mr Taylor explained why he believed they were not licensed by Nokia. Mr Taylor stated that he knew that the Nokia branded neck straps were counterfeit because "[t]he Applicant does not manufacture mobile phone neck straps bearing the NOKIA trade mark, or authorise the use by any third party of the trade mark NOKIA on mobile phone neck straps, for sale to the public". With respect to other products, Mr Taylor referred to the packaging, workmanship and the appearance of the Nokia brand together with other features as evidence that the products were counterfeit. I interpolate here that I accept that Mr Taylor's evidence is admissible pursuant to s 79 of the Evidence Act 1995 (Cth), alternatively, s 78 of that Act : see Nokia Corporation v Truong [2005] FCA 1141 at [35] per Crennan J and Nokia Corporation v Mai (2003) 59 IPR 413 at [11] per Kenny J. His evidence established that the Nokia Trade Marks had been applied to counterfeit goods.
Case: Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62
Outcome: cited
Prior to the enactment of s 31A of the Federal Court Act , the standard to be satisfied before summary judgment would be granted was settled law. The authorities made it clear that the jurisdiction to give summary judgment should be exercised with great care and only where the Court was satisfied that the respondent had no arguable defence to the claim made by the applicant: see, e.g., Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 at 129-130; Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 (" Fancourt ") at 99; and Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598 (" Webster "). As the applicant conceded, s 31A of the Federal Court Act does not apply to this proceeding. Accordingly, the Court should apply the authorities cited above.
Case: General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125
Outcome: cited
Prior to the enactment of s 31A of the Federal Court Act , the standard to be satisfied before summary judgment would be granted was settled law. The authorities made it clear that the jurisdiction to give summary judgment should be exercised with great care and only where the Court was satisfied that the respondent had no arguable defence to the claim made by the applicant: see, e.g., Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 at 129-130; Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 (" Fancourt ") at 99; and Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598 (" Webster "). As the applicant conceded, s 31A of the Federal Court Act does not apply to this proceeding. Accordingly, the Court should apply the authorities cited above.
Case: Geoffrey Inc v Luik (1997) 38 IPR 555
Outcome: cited
Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87
Outcome: cited
Prior to the enactment of s 31A of the Federal Court Act , the standard to be satisfied before summary judgment would be granted was settled law. The authorities made it clear that the jurisdiction to give summary judgment should be exercised with great care and only where the Court was satisfied that the respondent had no arguable defence to the claim made by the applicant: see, e.g., Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 at 129-130; Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 (" Fancourt ") at 99; and Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598 (" Webster "). As the applicant conceded, s 31A of the Federal Court Act does not apply to this proceeding. Accordingly, the Court should apply the authorities cited above. 46 Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598
Outcome: cited
Prior to the enactment of s 31A of the Federal Court Act , the standard to be satisfied before summary judgment would be granted was settled law. The authorities made it clear that the jurisdiction to give summary judgment should be exercised with great care and only where the Court was satisfied that the respondent had no arguable defence to the claim made by the applicant: see, e.g., Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62 at 91; General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 at 129-130; Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87 (" Fancourt ") at 99; and Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598 (" Webster "). As the applicant conceded, s 31A of the Federal Court Act does not apply to this proceeding. Accordingly, the Court should apply the authorities cited above. 46 Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8
Outcome: cited
Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379
Outcome: cited
Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Wallingford v The Mutual Society (1880) 5 AC 685
Outcome: cited
Whether or not the Court is satisfied that that there is no real question to be tried (see Fancourt at 99) will depend entirely on the circumstances of the case. By its affidavits, Nokia is required to make out such facts as are necessary for its cause of action: see Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8 at 11 and Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379 at 382. Once Nokia has filed the requisite affidavits, the respondents must place evidence before the Court that deals specifically with the Nokia's claim, and state clearly what their defence is and what facts are relied on to support that defence. A mere general denial is usually not sufficient to avoid summary judgment: see Wallingford v The Mutual Society (1880) 5 AC 685 at 704; also O 11 r 13 of the Rules. Where the outcome of a case depends on the resolution of disputed facts, the Court should be especially cautious to order summary judgment: see Webster at 603 per Mason CJ, Deane and Dawson JJ. The Court should approach an application for summary judgment on the basis that the respondent's evidence, if not inherently credible, will be accepted at trial, and on the basis that the Court should consider the material to determine whether it discloses either an arguable defence or material that might give rise to an arguable defence: see Webster at 603 and Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 per RD Nicholson J. The Court retains discretion to refuse summary judgment, although that discretion must be exercised judicially.
Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1963) 109 CLR 407
Outcome: referred to
By its statement of claim the applicant alleged that the respondents have contravened s 120 of the Act . Under this provision a trade mark will be infringed where a mark which is "substantially identical with, or deceptively similar to" a registered trade mark is used in relation to the same goods as the registered goods. The use complained of must be "use by the alleged infringer as a trade mark" and this requires consideration of the "purpose and nature of the impugned use": see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1963) 109 CLR 407 at 426 per Kitto J as cited in Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347 per Gummow J. It is clear that the respondents' use of the allegedly infringing marks is use for the purposes of trade. 48 The third and fourth respondents have, in essence, admitted that they have infringed the Nokia Trade Marks. Nokia's evidence of the trap purchases from them and Mr Taylor's evidence that the goods were counterfeit made out Nokia's case of trade mark infringement against them. The third respondent has not attempted to file any defence in this proceeding and, in oral evidence, admitted that he had sold counterfeit Nokia products. In his "Defence" of 24 February 2006, the fourth respondent effectively admitted trade mark infringement. Accordingly, Nokia is entitled to summary judgment against the third and fourth respondents (Mr Akyildiz and Mr Kim). 49 In contrast to the third and fourth respondents, the first and second respondents have denied trade make infringement. As counsel for Nokia noted, the affidavit and statements filed on their behalf did not include any firm denials stating that the alleged trap purchases had not taken place. Further, this material admitted that the first respondent had sold "off market" products and did not specifically deny that such products included unauthorised Nokia branded products. On their own, these vague and seemingly ambiguous denials would have no prospects of success at a trial.
Case: Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241
Outcome: referred to
There remains the question of whether leave should be given to the second respondent to represent the first respondent on the hearing of this motion. The general rule is that a company is not permitted to act by an officer but is required to act through a solicitor to defend proceedings against it: see O 9 r 1(3) of the Rules, which permits the Court to grant leave for someone other than a solicitor to defend the proceedings on the company's behalf. In Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 , French J considered the operation of this rule. His Honour noted, at [12], that, unlike the equivalent rule in other jurisdictions, there was no threshold requirement in O 9 r 1(3) of special or exceptional circumstances. The discretion conferred by the Rules of this Court is to be exercised by reference to all the relevant circumstances. However, as French J said at [13]: "Nevertheless the policy of the rule is clear that ordinarily a corporation will be required to be represented by a solicitor. Relevant factors for dispensing with that requirement include the financial capacity or lack of capacity of the corporation and those standing behind it, the effect of diverting company resources to paying legal expenses, the nature of the company's undertaking, its financial structure, its ability to retain and pay its staff and the identity and spread of its shareholders. The factual complexities of the case and the capacity of the proposed representative to conduct it effectively are also relevant ... ." As his Honour observed those who carry on business through corporate structures have advantages that those who carry on business on their own account do not enjoy, but they also acquire disabilities and obligations: compare Clout (Trustee) v Anscor Pty Ltd [2001] FCA 604 at [23] per Drummond J and Melaleuca of Australia &amp; New Zealand Pty Ltd v Duck [2005] FCA 1481 at [14] - [15] per Bennett J.
Case: Clout (Trustee) v Anscor Pty Ltd [2001] FCA 604
Outcome: referred to
There remains the question of whether leave should be given to the second respondent to represent the first respondent on the hearing of this motion. The general rule is that a company is not permitted to act by an officer but is required to act through a solicitor to defend proceedings against it: see O 9 r 1(3) of the Rules, which permits the Court to grant leave for someone other than a solicitor to defend the proceedings on the company's behalf. In Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 , French J considered the operation of this rule. His Honour noted, at [12], that, unlike the equivalent rule in other jurisdictions, there was no threshold requirement in O 9 r 1(3) of special or exceptional circumstances. The discretion conferred by the Rules of this Court is to be exercised by reference to all the relevant circumstances. However, as French J said at [13]: "Nevertheless the policy of the rule is clear that ordinarily a corporation will be required to be represented by a solicitor. Relevant factors for dispensing with that requirement include the financial capacity or lack of capacity of the corporation and those standing behind it, the effect of diverting company resources to paying legal expenses, the nature of the company's undertaking, its financial structure, its ability to retain and pay its staff and the identity and spread of its shareholders. The factual complexities of the case and the capacity of the proposed representative to conduct it effectively are also relevant ... ." As his Honour observed those who carry on business through corporate structures have advantages that those who carry on business on their own account do not enjoy, but they also acquire disabilities and obligations: compare Clout (Trustee) v Anscor Pty Ltd [2001] FCA 604 at [23] per Drummond J and Melaleuca of Australia &amp; New Zealand Pty Ltd v Duck [2005] FCA 1481 at [14] - [15] per Bennett J.
Case: Melaleuca of Australia &amp; New Zealand Pty Ltd v Duck [2005] FCA 1481
Outcome: referred to
There remains the question of whether leave should be given to the second respondent to represent the first respondent on the hearing of this motion. The general rule is that a company is not permitted to act by an officer but is required to act through a solicitor to defend proceedings against it: see O 9 r 1(3) of the Rules, which permits the Court to grant leave for someone other than a solicitor to defend the proceedings on the company's behalf. In Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 , French J considered the operation of this rule. His Honour noted, at [12], that, unlike the equivalent rule in other jurisdictions, there was no threshold requirement in O 9 r 1(3) of special or exceptional circumstances. The discretion conferred by the Rules of this Court is to be exercised by reference to all the relevant circumstances. However, as French J said at [13]: "Nevertheless the policy of the rule is clear that ordinarily a corporation will be required to be represented by a solicitor. Relevant factors for dispensing with that requirement include the financial capacity or lack of capacity of the corporation and those standing behind it, the effect of diverting company resources to paying legal expenses, the nature of the company's undertaking, its financial structure, its ability to retain and pay its staff and the identity and spread of its shareholders. The factual complexities of the case and the capacity of the proposed representative to conduct it effectively are also relevant ... ." As his Honour observed those who carry on business through corporate structures have advantages that those who carry on business on their own account do not enjoy, but they also acquire disabilities and obligations: compare Clout (Trustee) v Anscor Pty Ltd [2001] FCA 604 at [23] per Drummond J and Melaleuca of Australia &amp; New Zealand Pty Ltd v Duck [2005] FCA 1481 at [14] - [15] per Bennett J.
Case: Deputy Commissioner of Taxation v Fairchild Development Pty Ltd (in liq) [2006] FCA 714
Outcome: cited
have been referred to the decision of Hodgson J in George Ward Steel Pty Ltd v Kizkot Pty Ltd (1989) 15 ACLR 464; (1989) 7 ACLC 838, an authority I have myself applied in other cases, including Deputy Commissioner of Taxation v Fairchild Development Pty Ltd (in liq) [2006] FCA 714. Hodgson J's points are not, of course, a statutory formula but they are a useful checklist of things to at least take into account. Because of the very short time involved here, the indication of solvency is a fairly low threshold that is well met by the evidence which has been put before me.