mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Pepsico Australia Pty Ltd &amp; Anor (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192
Outcome: referred to
The starting point in determining whether the words GO WACKO are a trade mark is the definition of "trade mark" in s 17 of the Act. That section defines "trade mark" as a sign used to distinguish goods or services dealt with or provided in the course of trade by a person from the goods or services of another. Whether a "sign" (which is defined broadly in s 6) is used in this way is to be assessed objectively, having regard to the context in which the sign is used. Many of the relevant authorities were discussed by Sackville J in Pepsico Australia Pty Ltd &amp; Anor (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 (" Pepsico ") at 209-214. 8 WACKO is defined in the Macquarie Dictionary (third edition) as a noun: "a person who is insane in some way; an eccentric", and as an adjective: "crazy; weird; eccentric". An alternative spelling is also given, namely WHACKO. The latter spelling has an additional meaning as an interjection constituting "an expression denoting pleasure, delight etc". Potentially, therefore, the word (spelt WACKO or WHACKO) has a double meaning. 9 I am not satisfied that use of the words GO WACKO on the back of the packaging amounts to use as a trade mark. In the images of the packaging in evidence (which appear to be colour photocopies) the packaging is predominantly red. The words GO WACKO are white and the background colour of the voice balloon is blue. The text containing the instructions appears to be black, against a bright yellow background. The words GO WACKO are quite prominent on the packaging. 12 The next use of the words GO WACKO relied upon as use as a trade mark, is in the expression DOGS GO WACKO FOR SCHMACKOS which appears on the front of Effem's packaging. It is possible for a word or words forming only part of a composite expression to be used as a trade mark. Examples are found in Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1 (" Kolotex ") and Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242. There are also cases in which a word (which is a registered trade mark) appears in an expression used by an alleged infringer where it has been held that such use does not constitute infringement. Pepsico was such a case. Before discussing the two authorities where words within an expression were used as trade marks, it is desirable to refer to the judgment of the High Court in Mark Foy's Ltd v Davies Coop and Company Ltd [1956] HCA 41 ; (1956) 95 CLR 190.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592
Outcome: applied
This leads to a consideration of whether Wandella's registered mark, WHACKOS, is substantially identical with or deceptively similar to Effem's two registered marks, for the purposes of s 44 as well as s 60. The deceptive similarity issue (but not substantial identicality) was raised in relation to both grounds and is essentially the same. The proper approach to considering deceptive similarity is well settled. It involves a comparison between Wandella's registered mark and an imperfect recollection of Effem's marks and whether there is a real and tangible danger of consumers being led to believe that Wandella's goods came from the same source as Effem's goods: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1954) 91 CLR 592 at 595. 29 Firstly, I consider whether Wandella's mark is deceptively similar to the SCHMACKOS mark. The type of products which Wandella proposes to sell using the mark WHACKOS closely correspond with the type of products sold by Effem. They are "similar goods" as required by s 44(1)(a)(i) and defined in s 14(1). It can be anticipated that Wandella would use the mark selling products in the same way as Effem presently sells its SCHMACKOS products, namely, in supermarkets and pet shops where the consumer selects the products from a shelf. Other methods of sale may be deployed by Wandella. 30 Wandella's mark WHACKOS would probably be viewed by the consumer as a made up word, as would clearly be the case with Effem's mark, SCHMACKOS. I accept that there are similarities both visual and aural between the two marks, WHACKOS and SCHMACKOS. Effem's submission was that Wandella's mark naturally broke into two components. The first was WH, which was a soft consonant "breathed" when spoken and visually registered in the mind as soft and subservient, more a breath than a sound. The second element was the ACKO, which could be treated as having two syllables (separated by a hard consonant) or a single syllable. Both words involved a distinctive sounding combination, with short vowel sounds at the beginning and end separated by the hard consonants. The ACKO completely dominated the total mark aurally. The final S of SCHMACKOS was not significant as it was clearly a plural form. It was accepted, however, that the first component SCHM was more significant visually than the shorter WH.
Case: Australian Securities and Investments Commission v Edensor Nominees Pty Ltd [2001] HCA 1 ; (2001) 204 CLR 559
Outcome: referred to
In this context, the notion of "jurisdiction" is the authority to hear and decide to adjudicate: Australian Securities and Investments Commission v Edensor Nominees Pty Ltd [2001] HCA 1 ; (2001) 204 CLR 559 at 570 [2] . One needs, of course, to recognise that within, and bound up with, that notion of authority to adjudicate there is the authority to adjudicate the kind of controversy involved (what might be said to be the subject matter of any proceeding) and also the authority to deal with the particular respondent involved. The second aspect of the question may depend on presence within the jurisdiction (the word "jurisdiction" being used here in a territorial or locality sense) or whether relevant local law entitles the service of process outside the jurisdiction: see the comments of Branson J in Bray v F Hoffman-La Roche Ltd [2003] FCAFC 153 ; (2003) 130 FCR 317 at 349 [149] . In Edensor Gleeson CJ, Gaudron J and Gummow J said at 570 [2]: It is convenient to begin with the word "jurisdiction". This is a "generic term" generally signifying authority to adjudicate. It is used in various senses. The jurisdiction of a court to hear and determine a personal action and to grant relief may depend upon no more than effective service of that court's process upon the defendant within the territorial bounds of its competence or pursuant to the exercise of a "long-arm" jurisdiction; or it may depend also upon the proceeding being with respect to a particular subject matter. [footnotes omitted]
Case: Baltic Shipping Co Ltd v Pegasus Lines SA [1996] 3 NZLR 641
Outcome: referred to
As the High Court said in The 'Shin Kobe Maru' the question is whether a claim made bears a certain legal character. The High Court in that case also said (at 422) that the word "claim": ...would ordinarily be construed as the assertion of a right or interest recognized by the law and carrying an entitlement to relief. This analysis must be undertaken "by reference to the nature of the plaintiff's case as put forward, without reference to ... whether it is likely to succeed or not": The 'Moschanthy' [1971] 1 Lloyd's Rep 37 at 42. See also Baltic Shipping Co Ltd v Pegasus Lines SA [1996] 3 NZLR 641 at 647-48. Statements in some of the cases of the necessity to show some strength in the case before the jurisdiction of the court is attracted (that is before the court is legitimately seized of authority to adjudicate) appear impermissibly to combine the attraction of jurisdiction with its exercise: cf The 'Bass Reefer' (1992) 37 FCR 375. See generally, Toh, KS Admiralty Law and Practice (Butterworths Asia, 1998) p 40 and the cases there discussed.
Case: Blunden v Commonwealth [2003] HCA 73 ; (2003) 218 CLR 330
Outcome: referred to
The recognition of this international character of the jurisdiction (and so the law which the judges ascertain and declare in the exercise of such jurisdiction) does not elevate the resolution of such controversies (or the applicable law governing their resolution) above the municipal context or above municipal law: American and Ocean Insurance Co v 356 Bales of Cotton 26 US 511 (1828) at 545-46, The 'Lottawanna' 88 US 558 (1875) at 573-75, The 'Western Maid' 257 US 419 (1922) at 432, Moragne v States Marine Lines Inc 398 US 375 (1970) at 386-88, The 'Tojo Maru' [1972] AC 242 at 290-91 and Blunden v Commonwealth [2003] HCA 73 ; (2003) 218 CLR 330 at 337-78 [13] ; but it does illuminate the broad source and scope of the jurisdiction. Further, of course, the fundamental place of ss 79 and 80 of the Judiciary Act 1903 (Cth) in the resolution of controversies in the exercise of federal jurisdiction is to be recognised: see the discussion by Gummow J in this respect in The 'Shin Kobe Maru' (FC) at 87. 52 For present purposes, it is unnecessary to explore the boundaries of s 76(iii). It is sufficient to recognise that the ALRC, in recommending, as it did, a defined list of maritime claims in s 4 of the draft legislation (which became s 4 of the Act), was not intending to exhaust the field of the jurisdiction encompassed within s 76(iii): see ALRC Report at [193]-[195]. There is, therefore, jurisdiction encompassed within the reach of s 76(iii) which Parliament has not conferred on federal courts and invested in State courts as federal jurisdiction under the Act. This is important to recognise in the operation of the Act, in particular in respect of the associated jurisdiction contemplated by s 12, to which I will come. The Act and its interpretation 53 The Act deals with "jurisdiction" in Part II (ss 9 to 13). The conferral and investiture of jurisdiction effected by ss 9 and 10 is by reference to actions in personam and actions in rem . Sections 9 and 10 are in the following terms: s 9 (1) Jurisdiction is conferred on the Federal Court, the Federal Magistrates Court and on the courts of the Territories, and the courts of the States are invested with federal jurisdiction, in respect of proceedings commenced as actions in personam : (a) on a maritime claim; or (b) on a claim for damage done to a ship. (2) Subsection (1) does not confer on a court other than the Federal Court or a Supreme Court of a Territory, or invest a court of a State other than the Supreme Court of a State with, jurisdiction in respect of limitation proceedings. s 10 Jurisdiction is conferred on the Federal Court and on the Supreme Courts of the Territories, and the Supreme Courts of the States are invested with federal jurisdiction, in respect of proceedings that may, under this Act, be commenced as actions in rem .
Case: Braverus Maritime Inc v Port Kembla Coal Terminal Ltd [2005] FCAFC 256 ; (2005) 148 FCR 68
Outcome: referred to
As to pilotage, the claim is one which complains of the faulty undertaking of the pilot. Global Peace was under compulsory pilotage. The owner of Global Peace was thereby answerable for any loss or damage caused by the ship, or by a fault of the navigation of the ship in the same manner as the owner would be if pilotage were not compulsory: s 410B(2) of the Navigation Act 1912 (Cth) and/or the Queensland equivalent provision, s 102 of the Transport Operations (Maritime Safety) Act 1994 (Qld). In this regard, see Braverus Maritime Inc v Port Kembla Coal Terminal Ltd [2005] FCAFC 256 ; (2005) 148 FCR 68. Using plain language, to the extent (as it does) that the claim against the defendant is based on assertions that the pilot was at fault, it is a claim in respect of the pilotage that was carried out by the pilot. The claim can be directed at the ship because it is a claim against the relevant person who is asserted to be responsible by law for the pilot's default. The direction of the claim against the defendant does not make the claim any less in respect of the pilotage of the ship that was undertaken, than it would have been if made against the pilot personally. 95 As to towage, subject to the concept of towage extending to the activities of the tug here, all the above would support the conclusion that this is a claim in respect of the towage of Global Peace .
Case: Bray v F Hoffman-La Roche Ltd [2003] FCAFC 153 ; (2003) 130 FCR 317
Outcome: referred to
In this context, the notion of "jurisdiction" is the authority to hear and decide to adjudicate: Australian Securities and Investments Commission v Edensor Nominees Pty Ltd [2001] HCA 1 ; (2001) 204 CLR 559 at 570 [2] . One needs, of course, to recognise that within, and bound up with, that notion of authority to adjudicate there is the authority to adjudicate the kind of controversy involved (what might be said to be the subject matter of any proceeding) and also the authority to deal with the particular respondent involved. The second aspect of the question may depend on presence within the jurisdiction (the word "jurisdiction" being used here in a territorial or locality sense) or whether relevant local law entitles the service of process outside the jurisdiction: see the comments of Branson J in Bray v F Hoffman-La Roche Ltd [2003] FCAFC 153 ; (2003) 130 FCR 317 at 349 [149] . In Edensor Gleeson CJ, Gaudron J and Gummow J said at 570 [2]: It is convenient to begin with the word "jurisdiction". This is a "generic term" generally signifying authority to adjudicate. It is used in various senses. The jurisdiction of a court to hear and determine a personal action and to grant relief may depend upon no more than effective service of that court's process upon the defendant within the territorial bounds of its competence or pursuant to the exercise of a "long-arm" jurisdiction; or it may depend also upon the proceeding being with respect to a particular subject matter. [footnotes omitted]
Case: Burrard Towing Co v Reed Stenhouse Ltd (1996) 19 BCLR (3d) 391
Outcome: referred to
Towage is not merely (though it includes) the assistance given to one vessel (the tow) by another (the tug) to move through the water by pulling on a rope or hawser linking tug and tow. It can be seen also to include any operation in connection with the holding, pushing, pulling, moving, escorting or guiding of or standing by a vessel: Burrard Towing Co v Reed Stenhouse Ltd (1996) 19 BCLR (3d) 391 referring to the United Kingdom Standard Conditions for Towage.
Case: City of Charleroy v Bittern (1923) 14 LlL Rep 302
Outcome: referred to
"Navigation" is a word capable of wide meaning. It is used, sometimes in the phrase "navigation or management", in a number of maritime contexts, including article IV of the Hague Rules and Hague-Visby Rules dealing with the distinction between care of cargo and navigation or management of the ship. It has been said that a ship need not be in a state of motion to be in a state of navigation: Hayn v Culliford (1878) 3 CPD 410 at 417. One definition is the science or art of conducting a ship from place to place through the water: The 'Warkworth' (1884) 9 PD 145 at 148. However the word is apt to encompass, if the context permits, the controlled movement of a ship to berth with the assistance of tugs: see generally The 'Lord' v Newsum Sons &amp; Co [1920] 1 KB 846 at 849; Cyber Sea Technologies Inc v Underwater Harvester Remotely Operated Vehicle Serial (2000) 1 FC 569 at [6] and [7]; Good v The London Steamship Owners' Mutual Protecting Association (1871) LR 6 CP 563 at 569; Whistler International Limited v Kawasaki Kisen Kaisha Ltd [2001] 1 AC 638 at 643-44; The 'Glenochil' [1896] P 10 at 15-16; City of Charleroy v Bittern (1923) 14 Ll L Rep 302; The 'Mac' (1882) 7 PD 126 at 130; The 'Harlow' [1922] P 175 at 181; and The 'Champion' [1932] P1 at 10 and 15-16. Some cases require the planned or ordered movement from one place to another: see Polpen Shipping Co v Commercial Union Assurance Co Ltd [1943] 1 KB 161 at 167 and Steedman v Scofield [1992] 2 Lloyd's Rep 163 .
Case: Currie v McKnight [1897] AC 97
Outcome: discussed
The early cases such as The 'Vera Cruz' (No 2) (1884) 9 PD 96 and Currie v McKnight [1897] AC 97 appear on their own facts to require a close and direct connection between the damage and the ship as an instrument. Lord Diplock approved these cases in The 'Eschersheim' , but factually applied the phrase more broadly than perhaps was done in those cases. A similarly somewhat broader approach can also be found in The 'Industrie' (1871) LR 3 A &amp; E 303, The 'Chr Knudsen' [1932] P 153 and the The 'Minerva' [1933] P 224. 87 The need in the cases for the direct connection and for the ship to be somehow the instrument of the damage can be seen in Currie v McKnight where damage was caused to a ship by the crew of another ship cutting the mooring lines linking two ships in order to allow their ship to depart. The first ship, after the mooring lines were cut, was unable to get a head of steam up in time and was driven ashore. The court said that the damage to that ship was caused by the human acts of the crew of the other ship alone and not by the ship on which they were aboard when they cut the lines. This was so, even though what they did was in connection with the operation of taking that other ship to sea. One can see both closer notions of causation than perhaps are current today and the echo of the personification theory in the need for the ship itself to be the active or noxious instrument to be operative considerations see for instance Lord Halsbury LC in Currie v McKnight at 101: The phrase that it must be the fault of the ship itself is not a mere figurative expression, but it imports, in my opinion, that the ship against which a maritime lien for damages is claimed is the instrument of mischief, and that in order to establish the liability of the ship itself to the maritime lien claimed some act of navigation of the ship itself should either mediately or immediately be the cause of the damage. [footnotes omitted] In this respect, see Toh, K S op cit at 18.
Case: Cyber Sea Technologies Inc v Underwater Harvester Remotely Operated Vehicle Serial (2000) 1 FC 569
Outcome: referred to
"Navigation" is a word capable of wide meaning. It is used, sometimes in the phrase "navigation or management", in a number of maritime contexts, including article IV of the Hague Rules and Hague-Visby Rules dealing with the distinction between care of cargo and navigation or management of the ship. It has been said that a ship need not be in a state of motion to be in a state of navigation: Hayn v Culliford (1878) 3 CPD 410 at 417. One definition is the science or art of conducting a ship from place to place through the water: The 'Warkworth' (1884) 9 PD 145 at 148. However the word is apt to encompass, if the context permits, the controlled movement of a ship to berth with the assistance of tugs: see generally The 'Lord' v Newsum Sons &amp; Co [1920] 1 KB 846 at 849; Cyber Sea Technologies Inc v Underwater Harvester Remotely Operated Vehicle Serial (2000) 1 FC 569 at [6] and [7]; Good v The London Steamship Owners' Mutual Protecting Association (1871) LR 6 CP 563 at 569; Whistler International Limited v Kawasaki Kisen Kaisha Ltd [2001] 1 AC 638 at 643-44; The 'Glenochil' [1896] P 10 at 15-16; City of Charleroy v Bittern (1923) 14 Ll L Rep 302; The 'Mac' (1882) 7 PD 126 at 130; The 'Harlow' [1922] P 175 at 181; and The 'Champion' [1932] P1 at 10 and 15-16. Some cases require the planned or ordered movement from one place to another: see Polpen Shipping Co v Commercial Union Assurance Co Ltd [1943] 1 KB 161 at 167 and Steedman v Scofield [1992] 2 Lloyd's Rep 163 .
Case: Fournier v The Ship 'Margaret Z' [1999] 3 NZLR 111
Outcome: referred to
For the reasons that I have identified, it is unnecessary to decide either of these questions. Given the restrictive approach to maritime liens in Anglo-Australian law, there are significant obstacles in the way of the first question, being an argument that a new class of maritime lien should be recognised: see for example, The 'Acrux' , The 'Halcyon Isle' [1981] AC 221; and Fournier v The Ship 'Margaret Z' [1999] 3 NZLR 111 [22]-[23].
Case: Good v The London Steamship Owners' Mutual Protecting Association (1871) LR 6 CP 563
Outcome: referred to
The plaintiff says that the claim is one arising out of the act or omission of a person (being the person in charge of the tug) for whose wrongful acts or omissions the owner of Global Peace is liable. This way of putting the claim invokes s 4(3)(d)(iii). The plaintiff also says that the claim is one arising out of an act or omission of the owner (through the asserted default of the master), thereby invoking s 4(3)(d)(i). This much can be accepted. However, more is required. The act or omission must be in the navigation or management of the ship . 103 In the present context, the general maritime claim must concern the ship for the purposes of s 17. The ship for s 17 is the same ship as for s 4(3)(d). However, whilst it is undoubted that the act or omission (as asserted) of the tugmaster was an act or omission in the navigation or management of the tug, that does not mean that it was not also in the navigation or management of the tow, Global Peace. If the events (as asserted) occurred in the towage operation, it can be said that the acts or omissions took place in the navigation or management of Global Peace as well as of Tom Tough. This arises out of the nature of the towage operation: the tug is in the course of navigation and its operation is effecting or is part of the navigation or management of Global Peace. 104 "Navigation" is a word capable of wide meaning. It is used, sometimes in the phrase "navigation or management", in a number of maritime contexts, including article IV of the Hague Rules and Hague-Visby Rules dealing with the distinction between care of cargo and navigation or management of the ship. It has been said that a ship need not be in a state of motion to be in a state of navigation: Hayn v Culliford (1878) 3 CPD 410 at 417. One definition is the science or art of conducting a ship from place to place through the water: The 'Warkworth' (1884) 9 PD 145 at 148. However the word is apt to encompass, if the context permits, the controlled movement of a ship to berth with the assistance of tugs: see generally The 'Lord' v Newsum Sons &amp; Co [1920] 1 KB 846 at 849; Cyber Sea Technologies Inc v Underwater Harvester Remotely Operated Vehicle Serial (2000) 1 FC 569 at [6] and [7]; Good v The London Steamship Owners' Mutual Protecting Association (1871) LR 6 CP 563 at 569; Whistler International Limited v Kawasaki Kisen Kaisha Ltd [2001] 1 AC 638 at 643-44; The 'Glenochil' [1896] P 10 at 15-16; City of Charleroy v Bittern (1923) 14 Ll L Rep 302; The 'Mac' (1882) 7 PD 126 at 130; The 'Harlow' [1922] P 175 at 181; and The 'Champion' [1932] P1 at 10 and 15-16. Some cases require the planned or ordered movement from one place to another: see Polpen Shipping Co v Commercial Union Assurance Co Ltd [1943] 1 KB 161 at 167 and Steedman v Scofield [1992] 2 Lloyd's Rep 163 .