mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 65 IPR 44 ; [2008] FCA 605
Outcome: considered
was relied upon behalf of Zacatak so as to question whether Pakula Tackle had even established any standing to bring the alleged copyright infringement claim. For its part, Pakula Tackle sought comfort from a more recent decision, Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 65 IPR 44. In that case, in the course of an interlocutory judgment in respect of an application for the dismissal of a proceeding or alternatively the striking out of a statement of claim, Goldburg J (at page 56, para 59) stated: According to para 24 of the statement of claim, the deed of assignment purports to assign "all part, present and future rights to sue for infringement of the copyright and all other intellectual property rights in the said sample patterns and footwear patterns used to produce footwear under licence from the applicant". This assignment of rights to sue is an assignment not of a bare right of action but the assignment of a right which is incidental to the assignment of intellectual property rights: see Taypar at FCR 491-2; IPR 153. The distinction between an assignment of copyright simpliciter and an assignment of copyright coupled with an assignment of rights to sue for infringement, whether past, present or future, does not appear to have been the subject of consideration in Dixon v Masterton .
Case: Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1981) 149 CLR 191
Outcome: cited
remind myself too that a contravention of s 52 of the Trade Practices Act is not established by the mere manufacture and distribution of a product which, though properly labelled with the distinguishing name and mark of the manufacturer, bears great resemblance and is even intended to bare such resemblance to the product of another manufacturer which has and continues to be marketed and advertised: Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited [1982] HCA 44 ; (1981) 149 CLR 191. Perhaps out of an abundance of caution, Zacatak by its Counsel offered the following undertaking: UNDERTAKING In respect of the first page of the website, www.zacataklures.com.au (attached hereto) the Respondents shall within 30 days hereof: cause the words 'previously Pakula Lures' in the first paragraph to be deleted; cause the words 'which we were manufacturing for ten years prior' in the third paragraph to be deleted; cause the words 'now' and 'more so than before' in the sixth paragraph to be deleted; cause the words 'under the old banner' in the tenth paragraph to be deleted. The Respondents undertake, until the trial of this action or earlier order, to keep full and proper accounts of and relating to the sale of all game fishing lures by the First Respondent. All in all, having regard to its pleaded case and the evidence relied upon in support thereof on the application, there are flaws evident in Pakula Tackle's ability even to prosecute its trade mark and copyright infringement claims. This aside, most of the trade mark infringement claims do not, in my opinion, raise a serious question to be tried. Assuming that questions of standing could be resolved, Pakula Tackle has raised a serious question to be tried in respect of a copyright infringement claim. The pleaded claims for relief relying upon the Trade Practices Act and the Fair Trading Act are not strong. Especially that is so in relation to claims again Mr Mario Zacaropoulos and his wife personally.
Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407
Outcome: considered
applying this test one does not engage in comparing the registered mark and the allegedly infringing mark side by side but instead asks one self whether, drawing upon an imperfect recollection, potential customers might form an impression that the allegedly infringing mark is one in the same as the registered trade mark; see Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 415. That there might possibly be public confusion is not sufficient. Approaching the question in this way and as a matter of general impression, my conclusion at this interlocutory stage is that Pakula Tackle's infringement case is weak in respect of any infringement of such rights as it may enjoy in respect of registered trade mark number 753420. I doubt whether, even drawing on imperfect recollection, a potential customer would be confused as between the two marks. There are obvious differences which one might think would play upon a recollection, the eagle in the case of the Pakula Tackle mark and the Australian Flag in the case of the Zacatak mark. The names themselves are radically different.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Outcome: applied
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595: It is not necessary, in order to find that a trade mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. While a mere possibility of confusion is not enough for there must be a real, tangible danger of its occurring ( Reckitt &amp; Colman (Australia) Ltd v Boden [3], at pp 94, 95; Sym Choon &amp; Co Ltd v Gordon Choons Nuts Ltd . [4], at p 79) it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (iii) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods: Jafferjee v Scarlett [5], at p 120).
Case: Taypar Pty Ltd v Santic (1989) 21 FCR 485
Outcome: cited
is deposed to is an assignment by Gamefish Central to Pakula Tackle of the right to litigate the infringement of copyright. When this assignment occurred is not evidenced. In Taypar Pty Ltd v Santic (1989) 21 FCR 485 at 491, Spender J stated: Any infringement of the copyright in the drawing 87.404, the "Reflections" plan, or the house at Drayton Terrace, occurred at a time when Taypar was not the owner of the copyright, and in my view, Taypar is not competent to sue in respect of any such infringement. This was relied upon behalf of Zacatak so as to question whether Pakula Tackle had even established any standing to bring the alleged copyright infringement claim. For its part, Pakula Tackle sought comfort from a more recent decision, Global Brand Marketing Inc v Cube Footwear Pty Ltd (2005) 65 IPR 44. In that case, in the course of an interlocutory judgment in respect of an application for the dismissal of a proceeding or alternatively the striking out of a statement of claim, Goldburg J (at page 56, para 59) stated: According to para 24 of the statement of claim, the deed of assignment purports to assign "all part, present and future rights to sue for infringement of the copyright and all other intellectual property rights in the said sample patterns and footwear patterns used to produce footwear under licence from the applicant". This assignment of rights to sue is an assignment not of a bare right of action but the assignment of a right which is incidental to the assignment of intellectual property rights: see Taypar at FCR 491-2; IPR 153. The distinction between an assignment of copyright simpliciter and an assignment of copyright coupled with an assignment of rights to sue for infringement, whether past, present or future, does not appear to have been the subject of consideration in Dixon v Masterton .
Case: Byrne v Australian Airlines Ltd [1995] HCA 24 ; (1995) 185 CLR 410
Outcome: cited
In Byrne v Australian Airlines Ltd [1995] HCA 24 ; (1995) 185 CLR 410 at 422 Brennan CJ, Dawson and Toohey JJ, after referring to the criteria listed in BP Refinery (Westernport) Pty Ltd v Shire of Hastings [1977] HCA 40 ; (1977) 180 CLR 266 at 283, said: "as Deane J has observed [in Hospital Products Ltd v United States Surgical Corporation [1984] HCA 64 ; (1984) 156 CLR 41 at 121], the cases in which the criteria ... have been applied in this Court are cases in which there was a formal contract, complete on its face. He pointed out that a rigid approach should be avoided in cases, such as the present, where there is no formal contract. In those cases the actual terms of the contract must first be inferred before any question of implication arises. That is to say, it is necessary to arrive at some conclusion as to the actual intention of the parties before considering any presumed or imputed intention."
Case: BP Refinery (Westernport) Pty Ltd v Shire of Hastings [1977] HCA 40 ; (1977) 180 CLR 266
Outcome: cited
In Byrne v Australian Airlines Ltd [1995] HCA 24 ; (1995) 185 CLR 410 at 422 Brennan CJ, Dawson and Toohey JJ, after referring to the criteria listed in BP Refinery (Westernport) Pty Ltd v Shire of Hastings [1977] HCA 40 ; (1977) 180 CLR 266 at 283, said: "as Deane J has observed [in Hospital Products Ltd v United States Surgical Corporation [1984] HCA 64 ; (1984) 156 CLR 41 at 121], the cases in which the criteria ... have been applied in this Court are cases in which there was a formal contract, complete on its face. He pointed out that a rigid approach should be avoided in cases, such as the present, where there is no formal contract. In those cases the actual terms of the contract must first be inferred before any question of implication arises. That is to say, it is necessary to arrive at some conclusion as to the actual intention of the parties before considering any presumed or imputed intention."
Case: Hawkins v Clayton [1988] HCA 15 ; (1988) 164 CLR 539
Outcome: applied
Their Honours then quoted the observations of Deane J in Hawkins v Clayton [1988] HCA 15 ; (1988) 164 CLR 539 at 573 as to the test to be applied in cases where the parties have not spelt out the full terms of their contract: "a court should imply a term by reference to the imputed intention of the parties if, but only if, it can be seen that the implication of the particular term is necessary for the reasonable or effective operation of a contract of that nature in the circumstances of the case." 114 Given what was agreed between the parties (as to which see [105]), the term in par 3(f) cannot be implied. Harold and Saul are entitled to use the name as long as they operate the City restaurant. It is accordingly not necessary for the reasonable or effective operation of the contract that they have ownership rights in the name. For them to have such rights would be inconsistent with the agreement that was in fact made. I note that in the applicants' written submissions the implication of this term is predicated on "the express agreement" of the parties upon the terms pleaded in par 3(a) to (e) of the statement of claim. Of course essential parts of that agreement have not been upheld. 115 It is clear from alleged terms 3(f) and (g) that the latter is dependent on the former. That is to say, it is because the parties are joint owners of the intellectual property that none of them can use the name Squires Loft without the consent of all of them. Even if sub-par (g) were independent of (f), I do not consider that it is to be implied. In determining whether it is necessary for the reasonable or effective operation of the contract to imply such a term, it is appropriate to take into account that the draft licence prepared in June 1997, given by Lionel to Saul for his consideration, contained in clause 3.32, to which Lionel's marginal notes drew Saul's attention, a provision that the licensee was not entitled to prevent the use of the name Squires Loft by any other licensee. Saul expressed no concern about this provision, though another provision in that clause did not accord with the arrangements between the parties and was to be corrected. Further, the whole tenor of Harold and Saul's case is that there would be other licensees or franchisees who would be entitled to use the name. In these circumstances I am not satisfied that it is necessary to imply the term in par 3(g). I note that in their written submissions the applicants did not seek to support the implication of this term.
Case: Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153
Outcome: cited
Traditionally, contract formation is analysed in terms of offer and acceptance. However, as Heydon JA recognised in Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153 at 179, offer and acceptance are neither necessary nor sufficient to explain every case. While it is an error to assume that because something has been done, there must be a contract pursuant to which it has been done, a contract may nevertheless be inferred from the acts and conduct of the parties: Integrated Computer Services Pty Ltd v Digital Equipment Corp (Aust) Pty Ltd (1988) 5 BPR 11,110 at 11,117 per McHugh JA (Hope and Mahoney JJA concurring); Vroon BV v Foster's Brewing Group Ltd [1994] 2 VR 32 at 80 83; Geebung Investments Pty Ltd v Varga Group Investments No 8 Pty Ltd (1995) 7 BPR 14,551 at 14,569; (1995) Aust Contract Reps |P90-059 at 90,322. The relevant conduct of the parties must be capable of proving all the essential elements of the alleged contract, so that if the conduct is too ambiguous or vague to establish a contract with legal certainty, no contract will be inferred.
Case: Vroon BV v Foster's Brewing Group Ltd [1994] 2 VR 32
Outcome: cited
Traditionally, contract formation is analysed in terms of offer and acceptance. However, as Heydon JA recognised in Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153 at 179, offer and acceptance are neither necessary nor sufficient to explain every case. While it is an error to assume that because something has been done, there must be a contract pursuant to which it has been done, a contract may nevertheless be inferred from the acts and conduct of the parties: Integrated Computer Services Pty Ltd v Digital Equipment Corp (Aust) Pty Ltd (1988) 5 BPR 11,110 at 11,117 per McHugh JA (Hope and Mahoney JJA concurring); Vroon BV v Foster's Brewing Group Ltd [1994] 2 VR 32 at 80 83; Geebung Investments Pty Ltd v Varga Group Investments No 8 Pty Ltd (1995) 7 BPR 14,551 at 14,569; (1995) Aust Contract Reps |P90-059 at 90,322. The relevant conduct of the parties must be capable of proving all the essential elements of the alleged contract, so that if the conduct is too ambiguous or vague to establish a contract with legal certainty, no contract will be inferred.
Case: Geebung Investments Pty Ltd v Varga Group Investments No 8 Pty Ltd (1995) 7 BPR 14,551; (1995) Aust Contract Reps |P90-059
Outcome: cited
Traditionally, contract formation is analysed in terms of offer and acceptance. However, as Heydon JA recognised in Brambles Holdings Ltd v Bathurst City Council [2001] NSWCA 61 ; (2001) 53 NSWLR 153 at 179, offer and acceptance are neither necessary nor sufficient to explain every case. While it is an error to assume that because something has been done, there must be a contract pursuant to which it has been done, a contract may nevertheless be inferred from the acts and conduct of the parties: Integrated Computer Services Pty Ltd v Digital Equipment Corp (Aust) Pty Ltd (1988) 5 BPR 11,110 at 11,117 per McHugh JA (Hope and Mahoney JJA concurring); Vroon BV v Foster's Brewing Group Ltd [1994] 2 VR 32 at 80 83; Geebung Investments Pty Ltd v Varga Group Investments No 8 Pty Ltd (1995) 7 BPR 14,551 at 14,569; (1995) Aust Contract Reps |P90-059 at 90,322. The relevant conduct of the parties must be capable of proving all the essential elements of the alleged contract, so that if the conduct is too ambiguous or vague to establish a contract with legal certainty, no contract will be inferred.
Case: James Miller &amp; Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583
Outcome: cited
It has generally been accepted since the House of Lords decision in James Miller &amp; Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583 that while evidence of subsequent conduct is admissible to determine the existence of a contract, it is not admissible to determine the terms of a contract: see D W McLauchlan, "Contract Formation, Contract Interpretation, and Subsequent Conduct" (2006) 25 University of Queensland Law Journal 77. This rule must be understood in its context. Subsequent conduct is not admissible to resolve ambiguities in a contract the existence of which is not disputed. But such a rule would be nonsensical in the case of contracts the existence of which is only ascertained or confirmed by subsequent conduct. In such cases, the subsequent conduct does not resolve ambiguities but rather discloses whether the parties reached agreement and the content of such agreement. Without evidence of subsequent conduct relevant to the terms of the contract, all that could be said is that the parties reached agreement; it could not be said about what. I therefore agree with the following passage from the judgment of Nettle JA (with which Chernov and Ashley JJA concurred) in Husain v O &amp; S Holdings (Vic) Pty Ltd [2005] VSCA 269 at [51] : "a manifestation of mutual assent may be made even though neither offer or acceptance can be identified and even though the moment of formation cannot be determined. In point of principle I see no reason why that sort of analysis should not apply as much to an aspect or term of a contractual relationship as to the existence of the relationship itself." I was not taken to any detailed judicial analysis of this question and nor was it addressed at any length by the parties. It is therefore not appropriate to say anything more other than that there are many unresolved questions in this area. There is a world of grey between the two clear extremes of a written contract and a contract "drifted into" by subsequent conduct. This case is not the vehicle in which to determine the extent to which subsequent conduct is relevant to ascertaining the terms of these grey area contracts.
Case: Husain v O &amp; S Holdings (Vic) Pty Ltd [2005] VSCA 269
Outcome: approved
It has generally been accepted since the House of Lords decision in James Miller &amp; Partners Ltd v Whitworth Street Estates (Manchester) Ltd [1970] AC 583 that while evidence of subsequent conduct is admissible to determine the existence of a contract, it is not admissible to determine the terms of a contract: see D W McLauchlan, "Contract Formation, Contract Interpretation, and Subsequent Conduct" (2006) 25 University of Queensland Law Journal 77. This rule must be understood in its context. Subsequent conduct is not admissible to resolve ambiguities in a contract the existence of which is not disputed. But such a rule would be nonsensical in the case of contracts the existence of which is only ascertained or confirmed by subsequent conduct. In such cases, the subsequent conduct does not resolve ambiguities but rather discloses whether the parties reached agreement and the content of such agreement. Without evidence of subsequent conduct relevant to the terms of the contract, all that could be said is that the parties reached agreement; it could not be said about what. I therefore agree with the following passage from the judgment of Nettle JA (with which Chernov and Ashley JJA concurred) in Husain v O &amp; S Holdings (Vic) Pty Ltd [2005] VSCA 269 at [51] : "a manifestation of mutual assent may be made even though neither offer or acceptance can be identified and even though the moment of formation cannot be determined. In point of principle I see no reason why that sort of analysis should not apply as much to an aspect or term of a contractual relationship as to the existence of the relationship itself." I was not taken to any detailed judicial analysis of this question and nor was it addressed at any length by the parties. It is therefore not appropriate to say anything more other than that there are many unresolved questions in this area. There is a world of grey between the two clear extremes of a written contract and a contract "drifted into" by subsequent conduct. This case is not the vehicle in which to determine the extent to which subsequent conduct is relevant to ascertaining the terms of these grey area contracts.
Case: The Aramis [1989] 1 Lloyd's Rep 213
Outcome: cited
A court will not lightly infer a contract from the conduct of the parties. In The Aramis [1989] 1 Lloyd's Rep 213, Bingham LJ said the relevant questions in that case were whether the conduct of each party would be reasonably understood by the other as being either an offer or the acceptance of that offer, on the terms contended for. His Lordship said, at [1989] 1 Lloyd's Rep 224: "I do not think it is enough for the party seeking the implication of a contract to obtain 'it might' as an answer to these questions, for it would, in my view, be contrary to principle to countenance the implication of a contract from conduct if the conduct relied upon is no more consistent with an intention to contract than with an intention not to contract. It must, surely, be necessary to identify conduct referable to the contract contended for or, at the very least, conduct inconsistent with there being no contract made between the parties to the effect contended for. Put another way, I think it must be fatal to the implication of a contract if the parties would or might have acted exactly as they did in the absence of a contract." Similarly in Pacific Brands Sports and Leisure Pty Ltd v Underworks Pty Ltd [2005] FCA 288 at [47] , Finkelstein J said: "If the conduct in question is consistent with an intention not to contract, for example, if the conduct is referable to some other obligation, a contract by conduct will not arise."
Case: Pacific Brands Sports and Leisure Pty Ltd v Underworks Pty Ltd [2005] FCA 288
Outcome: cited
A court will not lightly infer a contract from the conduct of the parties. In The Aramis [1989] 1 Lloyd's Rep 213, Bingham LJ said the relevant questions in that case were whether the conduct of each party would be reasonably understood by the other as being either an offer or the acceptance of that offer, on the terms contended for. His Lordship said, at [1989] 1 Lloyd's Rep 224: "I do not think it is enough for the party seeking the implication of a contract to obtain 'it might' as an answer to these questions, for it would, in my view, be contrary to principle to countenance the implication of a contract from conduct if the conduct relied upon is no more consistent with an intention to contract than with an intention not to contract. It must, surely, be necessary to identify conduct referable to the contract contended for or, at the very least, conduct inconsistent with there being no contract made between the parties to the effect contended for. Put another way, I think it must be fatal to the implication of a contract if the parties would or might have acted exactly as they did in the absence of a contract." Similarly in Pacific Brands Sports and Leisure Pty Ltd v Underworks Pty Ltd [2005] FCA 288 at [47] , Finkelstein J said: "If the conduct in question is consistent with an intention not to contract, for example, if the conduct is referable to some other obligation, a contract by conduct will not arise."