mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Munday v Carey (1905) 22 RPC 273
Outcome: cited
In this case the applicant has not established any damage by way of loss of sales, loss of reputation or, indeed, any impact whatsoever adverse or otherwise on the value of its trade mark or otherwise, from the conduct of the first respondent. I have already observed several times throughout this judgment that the activities and customer base of each of the applicant and the first respondent are completely removed from the other. There is scant evidence as to the reputation of the applicant, including in relation to its registered trade mark, and no evidence that its reputation has been affected. Any confusion between the services offered by the applicant and the first respondent was demonstrated to be short-lived and immediately resolved on inquiry. I consider this to be a case where the applicant has shown wrongful conduct by the respondents, but not substantiated any damage arising from that conduct. Accordingly, there is no evidence to warrant compensatory damages or even nominal damages in the absence of quantification of damages (cf The Sanitas Company Ltd v Condy (1887) 4 RPC 530 ; Munday v Carey (1905) 22 RPC 273 ; Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 302).
Case: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26
Outcome: cited
Further, it is clear that: &#8226; The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. &#8226; A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. &#8226; Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson &amp; Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. &#8226; Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.
Case: Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661
Outcome: distinguished
In relation to the order sought by the applicant in para 5 of the Amended Application, namely that the first respondent transfer the registration of the domain name www.bing.com , I make the following observations: &#8226; The first respondent, apparently in good faith, acquired the domain name from the United States for the not inconsiderable sum of $US25,000. An order in the nature of that sought by the applicant, which would deprive the first respondent of that asset, is not lightly entertained by the Court. &#8226; While it may be commonplace for companies in Australia to use a ".com" or ".com.au" domain name, the first respondent's domain name is registered in the United States. An order that the first respondent transfer an international domain name to remedy infringement of an Australian trade mark which trade mark is territorial in its operation would in my view require extraordinary circumstances. &#8226; The applicant has relied on a number of cases in support of its application for an order that the first respondent be ordered to transfer the domain name, namely the English Court of Appeal case British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289 and the High Court of New Zealand case Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661. Further, Hill J ordered transfer of a domain name in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408. However each of those cases involved cybersquatting, defined by The Australian Concise Oxford Dictionary as "the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit", and which practice is, as Hill J noted in CSR Ltd [2003] FCA 279 ; 128 FCR 408 , conduct somewhat suggestive of criminality and fraud. The facts in each of those cases were very different from those in the case before me.
Case: Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293
Outcome: followed
In this case the applicant has not established any damage by way of loss of sales, loss of reputation or, indeed, any impact whatsoever adverse or otherwise on the value of its trade mark or otherwise, from the conduct of the first respondent. I have already observed several times throughout this judgment that the activities and customer base of each of the applicant and the first respondent are completely removed from the other. There is scant evidence as to the reputation of the applicant, including in relation to its registered trade mark, and no evidence that its reputation has been affected. Any confusion between the services offered by the applicant and the first respondent was demonstrated to be short-lived and immediately resolved on inquiry. I consider this to be a case where the applicant has shown wrongful conduct by the respondents, but not substantiated any damage arising from that conduct. Accordingly, there is no evidence to warrant compensatory damages or even nominal damages in the absence of quantification of damages (cf The Sanitas Company Ltd v Condy (1887) 4 RPC 530 ; Munday v Carey (1905) 22 RPC 273 ; Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 302).
Case: Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: cited
In order to substantiate a claim in passing off the applicant must show: 1) A misrepresentation. 2) Made by a trader in the course of trade. 3) To prospective customers of his or ultimate consumers of goods or services supplied by him. 4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and 5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742; cf Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414 at 443-444 and Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.) 86 The applicant is not required to establish proof of an intention to deceive as a necessary ingredient in the cause of action: Conagra [1992] FCA 159 ; 33 FCR 302 at 308. 87 Applying principles relevant to the tort of passing off to the facts of this case, for the following reasons I do not consider that the applicant has substantiated its claim in respect of passing off. 88 First, I have already found that the first respondent's use of the word "bing" did not constitute conduct in breach of ss 52 and 53 TPA. Similarly I do not consider that the first respondent's conduct amounted to a misrepresentation in terms of the applicant's claim for passing off. 89 Second, I do not consider that the evidence has established a sufficient reputation in the applicant in relation to the mark "BING!" such that a substantial number of persons would recognise relevant products or services under that mark as emanating from a single source rather I consider that evidence is scant as to the applicant's reputation in commerce including in relation to the Bing Trade Mark. 90 Third, in light of my finding as to the applicant's reputation, and the complete divergence between the businesses of the parties and their prospective customers, I do not consider that the applicant has established a likelihood of injury to its business from the use of "bing" by the first respondent.
Case: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365
Outcome: cited
Further, it is clear that: &#8226; The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. &#8226; A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. &#8226; Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson &amp; Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. &#8226; Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.
Case: Re Spillers Ltd's Trade Mark Application (1953) 70 RPC 51
Outcome: cited
The inquiry in s 120(1) as to whether use of a trade mark concerns goods or services in respect of which a trade mark is registered is simple, involving a comparison between the registered mark used notionally, fairly and normally in respect of any goods and services, with the alleged infringer's actual use. Resolution of the inquiry is a question of fact: Re Spillers Ltd's Trade Mark Application (1953) 70 RPC 51; cf Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529
Outcome: cited
Further, it is clear that: &#8226; The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. &#8226; A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. &#8226; Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson &amp; Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. &#8226; Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.
Case: Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42
Outcome: cited
These principles are well settled and have been applied on numerous occasions by the Full Court of the Federal Court (for example, Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 ; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 ; (2004) 209 ALR 1).
Case: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354
Outcome: cited
To the extent that the applicant contends that Mr Cranitch is jointly liable with the first respondent for passing off, I would not consider the claim of the applicant substantiated by the evidence even had I considered the activities of the first respondent constituted passing off. Although it was clear from the evidence that Mr Cranitch was significantly involved in the activities of the first respondent and the development of the first respondent's trade mark, all activities of the first respondent in connection with its trade mark were carried out by the first respondent. I can identify no basis for asserting that Mr Cranitch himself passed off the first respondent's services as being those of the applicant or as being in any other way associated with the applicant. Involvement by Mr Cranitch in relation to management of the first respondent, and Mr Cranitch's involvement in decision-making in relation to development of the first respondent's "bing" trade mark, do not, in my view, amount to passing off (cf observations of the Full Court in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 399).
Case: The Sanitas Company Ltd v Condy (1887) 4 RPC 530
Outcome: cited
In this case the applicant has not established any damage by way of loss of sales, loss of reputation or, indeed, any impact whatsoever adverse or otherwise on the value of its trade mark or otherwise, from the conduct of the first respondent. I have already observed several times throughout this judgment that the activities and customer base of each of the applicant and the first respondent are completely removed from the other. There is scant evidence as to the reputation of the applicant, including in relation to its registered trade mark, and no evidence that its reputation has been affected. Any confusion between the services offered by the applicant and the first respondent was demonstrated to be short-lived and immediately resolved on inquiry. I consider this to be a case where the applicant has shown wrongful conduct by the respondents, but not substantiated any damage arising from that conduct. Accordingly, there is no evidence to warrant compensatory damages or even nominal damages in the absence of quantification of damages (cf The Sanitas Company Ltd v Condy (1887) 4 RPC 530 ; Munday v Carey (1905) 22 RPC 273 ; Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 302).
Case: Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596
Outcome: cited
The inquiry in s 120(1) as to whether use of a trade mark concerns goods or services in respect of which a trade mark is registered is simple, involving a comparison between the registered mark used notionally, fairly and normally in respect of any goods and services, with the alleged infringer's actual use. Resolution of the inquiry is a question of fact: Re Spillers Ltd's Trade Mark Application (1953) 70 RPC 51; cf Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596.
Case: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 121 ALR 191
Outcome: cited
In considering the Bing Trade Mark and the respondents' varied uses of "bing" side by side, an obvious similarity is that the trade marks of both the applicant and the first respondent include the word "bing". It is also not in dispute that both parties pronounce the word "bing" in the same way, which is relevant in considering the similarity or otherwise of the marks (Gummow J in Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 121 ALR 191 at 229).
Case: Winkle &amp; Co Ltd v Gent &amp; Son (1914) 31 RPC 473
Outcome: cited
It is not in dispute that the undertaking given by the first respondent in Court through its Counsel is enforceable by order of the Court: O 35 r 11 Federal Court Rules . Indeed courts have, on occasion, declined to grant injunctions in circumstances where an undertaking given by one of the parties is adequate to protect the rights of the other (for example Simos J in Community First Credit Union Ltd v Khan (unreported, Supreme Court of New South Wales, 30 August 1995)). However it is also recognised that, in a proper case, a party may insist upon an injunction notwithstanding an undertaking which has been given (cf Phillimore and Pickford LJJ in Winkle &amp; Co Ltd v Gent &amp; Son (1914) 31 RPC 473 at 479, 480).
Case: Yeatman v L Homberger &amp; Co (1912) 29 RPC 645
Outcome: cited
The first respondent's undertaking obviously does not address any past conduct which may have infringed the applicant's trade mark. However, other than continuing to call itself "bing" in relation to provision of internet postal services where the mark "bing" does not appear on any software or in any documentary references to software, and which in my view constitutes neither infringement of the applicant's trade mark nor misrepresentation in terms of the TPA or passing off, the applicant has not demonstrated conduct of the first respondent having an on-going effect for which the undertaking provided is not an answer in terms of the applicant's contentions regarding use of the trade mark and software (contrast, for example, Yeatman v L Homberger &amp; Co (1912) 29 RPC 645). I consider that the terms of the undertaking provided by the first respondent are adequate to protect any rights of the applicant has in relation to this matter.
Case: Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661
Outcome: followed
Section 75B reflects the intention of Parliament to bring to account natural persons whose conduct brings about the contravention of the law by a corporation: Fencott v Miller [1983] HCA 12 ; (1983) 152 CLR 570 at 583; Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) FCA 1228 at [75] . However because s 75B imports the requirements of the criminal law ( Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661) , in order to establish accessorial liability pursuant to s 75B the applicant must establish the following: &#8226; in circumstances where the applicant contends that a person has aided and abetted the applicant must demonstrate that the relevant person was aware or ought to have been aware of the facts which gave rise to the contravention of the TPA, and intentionally participated in the contravention ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661) ; and &#8226; in circumstances where the applicant contends that a person was knowingly concerned in a contravention the applicant must demonstrate that the relevant person had actual knowledge of the essential elements of the contravention and intentional participation in it ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661).
Case: 10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299
Outcome: cited
In order for the applicant to substantiate its case under s 53 , the applicant needs to establish that, by the use of the confusingly or deceptively similar name and mark ("bing"), the first respondent has represented that it has the necessary connection with the applicant such that a substantial number of members of the public will believe that the first respondent or its services has the sponsorship or approval of the applicant ( 10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299 at 301-302; Mark Foys Pty Ltd v TVSN (Pacific) [2000] FCA 1626 ; (2000) 104 FCR 61 at 77-78).
Case: Jennings v Credit Corp Australia Pty Ltd [2000] NSWSC 210 ; (2000) 48 NSWLR 709
Outcome: cited
I also note that in Jennings v Credit Corp Australia Pty Ltd [2000] NSWSC 210 ; (2000) 48 NSWLR 709, an assignment of the legal ownership of a debt was made after the expiry of the limitation period. The Court permitted the substitution of the new legal owner. 49 The question is whether Errol Nominees, if it were the trustee, is added or substituted as a party. It is not uncommon for trustees to be changed. In ordinary circumstances it should not follow that questions of limitation thereby arise. If in such a case, the new trustee were added rather than substituted, the beneficiaries would lose their rights to bring proceedings. Consistent with the provisions of the Trustee Act and the authorities I have cited, I am of the view that the amendment sought is best characterised as a substitution. 50 The fact, however, is that the condition that gives rise to amendment under O 6 r 10(2) has not occurred as there has not yet been a passing of interest by assignment or otherwise. The occasion has not arisen to make the order for substitution sought.
Case: Vintage Developments Pty Limited v GHD Pty Limited [2006] FCA 531
Outcome: cited
As set out in Vintage Developments Pty Limited v GHD Pty Limited [2006] FCA 531 at [10] (' Vintage (No 1)' ), the further amended statement of claim was filed with the leave of the Court, which leave, obtained in November 2005 and prior to the expiry of the limitation period, did not extend to joining Mr Johnston. I gave leave for that joinder on 11 May 2006 and no further order was sought from the applicants as to leave to file a second further amended application and statement of claim. 30 The submission now is that, despite the decision in Vintage (No 1) , this is the first amendment to the application and statement of claim to effect that joinder, so that the proposed second further amended statement of claim discloses a new (and statute barred) cause of action as against Mr Johnston. 31 In Vintage (No 1) , I granted leave to join Mr Johnston to the proceedings. That is, he was joined to the proceedings as pleaded in the pleadings filed on 2 December 2005. Those pleadings constitute the original claim against him. The circumstances, put shortly, were that an amended application and further amended statement of claim were filed within the limitation period naming Mr Johnston as a respondent. Leave that had been given to file the amended documents did not extend to leave to include Mr Johnston as a respondent, nor to include allegations or orders against him. Many of the arguments put by Ms Richards were canvassed in Vintage (No 1) . It is the case, as I noted at [24] and [27], that leave was not sought further to amend the amended statement of claim to permit the pleading against Mr Johnston, as pleaded in the further amended statement of claim. However, as I discussed at [33], the further amended statement of claim filed within time may be considered as a fresh pleading as against Mr Johnston. It was put in Vintage (No 1) that Mr Johnston should not be joined because it was a futility as the limitation period would apply because the proceedings had not commenced on 2 December 2005 but would only commence on the date of joinder. I rejected that submission.