mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Springfield Nominees Pty Limited v Bridgelands Securities Limited (1992) 38 FCR 217
Outcome: cited
In Crest Homes Plc v Marks [1987] AC 829, which followed the decision of the House of Lords in Harman [1983] 1 AC at 280, Lord Oliver allowed that the undertaking could be modified to authorise use of discovered documents in other proceedings where there were "special circumstances". In Holpitt Pty Ltd v Varimu Pty Ltd (1991) 29 FCR 576, Burchett J commented on that test (at 578): As far as the expression "special circumstances" is concerned, it is an expression which is liable to be misunderstood unless care is taken to ask and answer the question, special in relation to what? "Special" is one of those words which derive almost all their meaning from the context ... If all that is required is that, among the great number of cases in the court in which documents have been discovered, this one must evince some special feature which affords a reason for releasing or modifying the undertaking, there will be no difficulty. Circumstances in which there is a legitimate reason why documents discovered in one proceeding should be made available in another will, viewed in this way, be rare. Lockhart J took a like approach in Sweetman v Australian Thoroughbred Pty Ltd [1992] FCA 1059 and both were followed by Wilcox J in Springfield Nominees Pty Limited v Bridgelands Securities Limited (1992) 38 FCR 217 at 223-225. In the latter case Wilcox J said (at 225): For "special circumstances" to exist it is enough that there is a special feature of the case which affords a reason for modifying or releasing the undertaking and is not usually present. The matter then becomes one of the proper exercise of the court's discretion, many factors being relevant. It is neither possible nor desirable to propound an exhaustive list of those factors. But plainly they include the nature of the document, the circumstances under which it came into existence, the attitude of the author of the document and any prejudice the author may sustain, whether the document pre-existed litigation or was created for that purpose and therefore expected to enter the public domain, the nature of the information in the document (in particular whether it contains personal data or commercially sensitive information), the circumstances in which the document came into the hands of the applicant for leave and, perhaps most important of all, the likely contribution of the document to achieving justice in the second proceeding.
Case: Campbells Cash and Carry Pty Ltd v Fostif Pty Ltd [2006] HCA 41 ; (2006) 229 ALR 58
Outcome: cited
IMF is not a legal practitioner. It is in the business of financing litigation for reward. A large international corporation involved in many commercial transactions might well be concerned that the general disclosure of its discovered documents to such an entity could give rise to a risk that information derived from them could be placed on a database and at some time in the future used for other purposes or other proceedings. I do not suggest that this is likely to happen in the present case. However, the generic risk associated with the wider disclosure of the discovered documents is something which the party discovering those documents is entitled to take into account and be concerned about. It is entitled to seek specificity as to the documents to be disclosed and the purpose for which they are to be disclosed. This is particularly so given that the litigation funder, as in this case, does not have an interest in the cause of action nor any right to direct or control the conduct of the proceedings. It has certain rights in relation to their settlement which were referred to in my earlier judgment in relation to the application for a stay. Its limited involvement was a basis upon which its support of these proceedings was found not to be an abuse of process. As Callinan and Heydon JJ said in Campbells Cash and Carry Pty Ltd v Fostif Pty Ltd [2006] HCA 41 ; (2006) 229 ALR 58 at 131 [277] : It is a factor pointing against an abuse of process that the funder of litigation "does not meddle at all" or by its contract is left "very little room to intermeddle". Conversely, the more room to intermeddle, the more likely is it that the litigation is an abuse of process. Their Honours cited the earlier decision in these proceedings: QPSX Ltd v Ericsson Australia Pty Ltd (No 3) (2005) 219 ALR 1 at 16 [61]. The second quotation in the above judgment came from that judgment. To the extent that general disclosure of documents to the funder increases the risk of "intermeddling" by the funder it undermines the basis upon which the proceedings were held not to involve an abuse of process. The rationale for the implied undertaking enunciated in Harman [1983] 1 AC 280, which also informs the "special circumstances" threshold, has relevance in this situation even if, which it is not necessary to decide, special circumstances would not be necessary to justify specific disclosures to the funder.
Case: QPSX Ltd v Ericsson Australia Pty Ltd (No 3) (2005) 219 ALR 1
Outcome: cited
IMF is not a legal practitioner. It is in the business of financing litigation for reward. A large international corporation involved in many commercial transactions might well be concerned that the general disclosure of its discovered documents to such an entity could give rise to a risk that information derived from them could be placed on a database and at some time in the future used for other purposes or other proceedings. I do not suggest that this is likely to happen in the present case. However, the generic risk associated with the wider disclosure of the discovered documents is something which the party discovering those documents is entitled to take into account and be concerned about. It is entitled to seek specificity as to the documents to be disclosed and the purpose for which they are to be disclosed. This is particularly so given that the litigation funder, as in this case, does not have an interest in the cause of action nor any right to direct or control the conduct of the proceedings. It has certain rights in relation to their settlement which were referred to in my earlier judgment in relation to the application for a stay. Its limited involvement was a basis upon which its support of these proceedings was found not to be an abuse of process. As Callinan and Heydon JJ said in Campbells Cash and Carry Pty Ltd v Fostif Pty Ltd [2006] HCA 41 ; (2006) 229 ALR 58 at 131 [277] : It is a factor pointing against an abuse of process that the funder of litigation "does not meddle at all" or by its contract is left "very little room to intermeddle". Conversely, the more room to intermeddle, the more likely is it that the litigation is an abuse of process. Their Honours cited the earlier decision in these proceedings: QPSX Ltd v Ericsson Australia Pty Ltd (No 3) (2005) 219 ALR 1 at 16 [61]. The second quotation in the above judgment came from that judgment. To the extent that general disclosure of documents to the funder increases the risk of "intermeddling" by the funder it undermines the basis upon which the proceedings were held not to involve an abuse of process. The rationale for the implied undertaking enunciated in Harman [1983] 1 AC 280, which also informs the "special circumstances" threshold, has relevance in this situation even if, which it is not necessary to decide, special circumstances would not be necessary to justify specific disclosures to the funder.
Case: NABE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) [2004] FCAFC 263 ; (2004) 144 FCR 1
Outcome: referred to
Referring to NABE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) [2004] FCAFC 263 ; (2004) 144 FCR 1, the applicant submitted that although it is not the duty of the decision maker to make out a case for the applicant, the Tribunal is obliged to correctly apply the law to the issues raised by the evidence and consider the claims expressly made, such as the claim in relation to superior orders. The applicant submitted that the failure by the applicant to raise the issue of the defence of superior orders based on the law existing prior to the coming in to force of the convention could have in no way prejudiced the respondent. The applicant also submitted that, as in Kuswardana , the consequences of not correcting the error of the Tribunal would be exceptionally serious to the applicant. 39 The respondent submitted that this was not a matter of retrospective application of criminal laws. Criminal responsibility was not being created pursuant to the Rome Statute. The respondent submitted that non-retroactivity ratione personae (Art 24 of the Rome Statute) is properly a matter that relates to the exercise of jurisdiction of the International Criminal Court. The respondent submitted that the issue was the appropriate source of the definition of the crimes listed in Art 1F(a) of the Refugees Convention and noted that the Full Court had held that the Rome Statute was one of the international instruments from which crimes mentioned in Art 1F(a) could be characterised. 40 The respondent submitted that the availability or otherwise of any conceivable defence was not an "essential statutory precondition" for the application of Art 7 or Art 8 so as to invoke the Kuswardana principle. Further, the Full Court held that what was required under Art 1F(a) included the availability of a defence under the Rome Statute only if it was relied on by the person (at [127]). The respondent submitted that there was no obligation on the Tribunal to consider a defence that was not relied upon by the applicant and that this situation was a fortiori in relation to defences said to exist not under the Rome Statute. The respondent submitted, relying on NABE (No 2) that a determination that the Tribunal has failed to consider a claim not expressly advanced is not to be lightly made.
Case: Dey v Victorian Railways Commissioners [1949] HCA 1 ; (1949) 78 CLR 62
Outcome: referred to
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; Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 (" Luik "); 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. Accordingly, the Court should apply these authorities in the disposition of this motion.
Case: General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125
Outcome: referred to
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; Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 (" Luik "); 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. Accordingly, the Court should apply these authorities in the disposition of this motion.
Case: Geoffrey Inc v Luik (1997) 38 IPR 555
Outcome: referred to
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; Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 (" Luik "); 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. Accordingly, the Court should apply these authorities in the disposition of this motion.
Case: Fancourt v Mercantile Credits Ltd [1983] HCA 25 ; (1983) 154 CLR 87
Outcome: referred to
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; Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 (" Luik "); 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. Accordingly, the Court should apply these authorities in the disposition of this motion. 11 Under O 20 r 1 the applicants are required to adduce evidence of such facts as are necessary for their 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. By their Defence the respondents in fact admitted that the applicants were the owners of Gap's registered marks. There was no issue as to the applicants' or the second respondent's incorporation. Further, the respondents admitted that, at all material times, the fourth respondent was the sole director of the second respondent, acting as its servant or agent, and in effective control of the business of the second respondent. In an affidavit sworn by Mr Jordan on 16 November 2005, he deposed to an arrangement between the first applicant and United Garment (Vietnam) Co Ltd ("UGV"), pursuant to which UGV was authorized to manufacture garments and apply Gap's registered marks only to the garments ordered. Mr Jordan's affidavit contained evidence that UGV had supplied garments bearing Gap's registered marks to the second respondent without the applicants' authority. Further, there was evidence in another affidavit of Mr Jordan sworn on 25 November 2005 that the respondents had imported the garments. Since it is manifestly clear that the respondents have no arguable defence, I accept that the applicants have satisfied the requirement in O 20 r 1 to adduce evidence of the facts necessary for their infringement claim. Ultimately, as the High Court said in Fancourt at 99, whether or not the Court is satisfied that that there is no real question to be tried will depend entirely on the circumstances of the case.
Case: Webster v Lampard [1993] HCA 57 ; (1993) 177 CLR 598
Outcome: referred to
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; Geoffrey Inc v Luik (1997) 38 IPR 555 at 557 (" Luik "); 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. Accordingly, the Court should apply these authorities in the disposition of this motion.
Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 40
Outcome: referred to
By its statement of claim the applicants alleged, amongst other things, that the respondents have contravened s 120 of the Trade Mark Act 1995 (Cth). 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 from pleadings and affidavits previously filed in the proceeding that the respondents' use of the allegedly infringing marks has been for the purposes of trade.
Case: Johnson &amp; Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Outcome: cited
By its statement of claim the applicants alleged, amongst other things, that the respondents have contravened s 120 of the Trade Mark Act 1995 (Cth). 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 from pleadings and affidavits previously filed in the proceeding that the respondents' use of the allegedly infringing marks has been for the purposes of trade.
Case: Rourke v Victorian Finance Guarantee and Share Co Ltd (1894) 20 VLR 8
Outcome: referred to
Under O 20 r 1 the applicants are required to adduce evidence of such facts as are necessary for their 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. By their Defence the respondents in fact admitted that the applicants were the owners of Gap's registered marks. There was no issue as to the applicants' or the second respondent's incorporation. Further, the respondents admitted that, at all material times, the fourth respondent was the sole director of the second respondent, acting as its servant or agent, and in effective control of the business of the second respondent. In an affidavit sworn by Mr Jordan on 16 November 2005, he deposed to an arrangement between the first applicant and United Garment (Vietnam) Co Ltd ("UGV"), pursuant to which UGV was authorized to manufacture garments and apply Gap's registered marks only to the garments ordered. Mr Jordan's affidavit contained evidence that UGV had supplied garments bearing Gap's registered marks to the second respondent without the applicants' authority. Further, there was evidence in another affidavit of Mr Jordan sworn on 25 November 2005 that the respondents had imported the garments. Since it is manifestly clear that the respondents have no arguable defence, I accept that the applicants have satisfied the requirement in O 20 r 1 to adduce evidence of the facts necessary for their infringement claim. Ultimately, as the High Court said in Fancourt at 99, whether or not the Court is satisfied that that there is no real question to be tried will depend entirely on the circumstances of the case.
Case: Evans Deakin &amp; Co Pty Ltd v Kaiser Engineers and Constructors Inc [1968] Qd R 379
Outcome: referred to
Under O 20 r 1 the applicants are required to adduce evidence of such facts as are necessary for their 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. By their Defence the respondents in fact admitted that the applicants were the owners of Gap's registered marks. There was no issue as to the applicants' or the second respondent's incorporation. Further, the respondents admitted that, at all material times, the fourth respondent was the sole director of the second respondent, acting as its servant or agent, and in effective control of the business of the second respondent. In an affidavit sworn by Mr Jordan on 16 November 2005, he deposed to an arrangement between the first applicant and United Garment (Vietnam) Co Ltd ("UGV"), pursuant to which UGV was authorized to manufacture garments and apply Gap's registered marks only to the garments ordered. Mr Jordan's affidavit contained evidence that UGV had supplied garments bearing Gap's registered marks to the second respondent without the applicants' authority. Further, there was evidence in another affidavit of Mr Jordan sworn on 25 November 2005 that the respondents had imported the garments. Since it is manifestly clear that the respondents have no arguable defence, I accept that the applicants have satisfied the requirement in O 20 r 1 to adduce evidence of the facts necessary for their infringement claim. Ultimately, as the High Court said in Fancourt at 99, whether or not the Court is satisfied that that there is no real question to be tried will depend entirely on the circumstances of the case.
Case: Commonwealth of Australia v Verwayen [1990] HCA 39 ; (1990) 170 CLR 394
Outcome: referred to
The respondents have not filed any affidavits in opposition or at all in this proceeding. It was common ground at the hearing on 27 January 2006, when the respondents appeared by their solicitor, that they had entered into the settlement agreement (referred to earlier) with the applicants. Their solicitor gave the undertakings (referred to above) on their behalf pursuant to that agreement. By virtue of this agreement, the respondents are estopped from raising their defences to the applicants' infringement claim; alternatively they have waived such rights as they had to rely on those defences: see Commonwealth of Australia v Verwayen [1990] HCA 39 ; (1990) 170 CLR 394 at 407, 410 per Mason CJ, 459 per Dawson J and Kammins Ballrooms Co Ltd v Zenith Investments (Torquay) Ltd [1971] AC 850 at 883 per Lord Diplock. Accordingly, it is appropriate that the applicants should have summary judgment.
Case: Kammins Ballrooms Co Ltd v Zenith Investments (Torquay) Ltd [1971] AC 850
Outcome: referred to
The respondents have not filed any affidavits in opposition or at all in this proceeding. It was common ground at the hearing on 27 January 2006, when the respondents appeared by their solicitor, that they had entered into the settlement agreement (referred to earlier) with the applicants. Their solicitor gave the undertakings (referred to above) on their behalf pursuant to that agreement. By virtue of this agreement, the respondents are estopped from raising their defences to the applicants' infringement claim; alternatively they have waived such rights as they had to rely on those defences: see Commonwealth of Australia v Verwayen [1990] HCA 39 ; (1990) 170 CLR 394 at 407, 410 per Mason CJ, 459 per Dawson J and Kammins Ballrooms Co Ltd v Zenith Investments (Torquay) Ltd [1971] AC 850 at 883 per Lord Diplock. Accordingly, it is appropriate that the applicants should have summary judgment.