mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595
Outcome: cited
The answer to that question requires examination of the purpose and nature of the impugned use, the relevant context, the way the trade mark has been adopted or applied in relation to goods and the use of brochures, catalogues and advertisements ( Johnson &amp; Johnson v Sterling at 347). A part of that contextual analysis involves an assessment of whether use of the trade mark might be illustrative or descriptive of the goods rather than use as a trade mark. In that context, the extent to which a three dimensional shape for the goods or a part of the goods serves function is an important element in the determination of whether use is distinctive of commercial origin or illustrative or descriptive of the embodied shape of the goods. Use of the trade mark must be demonstrated to be use that serves the primary function of a trade mark ( Johnson &amp; Johnson v Sterling at 348 and 349; Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595). A word trade mark that contains a descriptive element may nevertheless still serve as a badge of origin as language does not necessarily convey only one idea ( Johnson &amp; Johnson v Sterling ) although the descriptive element may make it difficult to demonstrate that the words serve the primary function of distinguishing the goods. ( Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 per Bennett J [29]).
Case: Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242
Outcome: cited
The answer to that question requires examination of the purpose and nature of the impugned use, the relevant context, the way the trade mark has been adopted or applied in relation to goods and the use of brochures, catalogues and advertisements ( Johnson &amp; Johnson v Sterling at 347). A part of that contextual analysis involves an assessment of whether use of the trade mark might be illustrative or descriptive of the goods rather than use as a trade mark. In that context, the extent to which a three dimensional shape for the goods or a part of the goods serves function is an important element in the determination of whether use is distinctive of commercial origin or illustrative or descriptive of the embodied shape of the goods. Use of the trade mark must be demonstrated to be use that serves the primary function of a trade mark ( Johnson &amp; Johnson v Sterling at 348 and 349; Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595). A word trade mark that contains a descriptive element may nevertheless still serve as a badge of origin as language does not necessarily convey only one idea ( Johnson &amp; Johnson v Sterling ) although the descriptive element may make it difficult to demonstrate that the words serve the primary function of distinguishing the goods. ( Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 per Bennett J [29]).
Case: Musidor BV v Tansing (1994) 52 FCR 363
Outcome: cited
Similarly, a trade mark that comprises a three-dimensional shape for embodiment in goods or a part of goods where the shape serves in part a functional purpose might be thought to still serve as a badge of origin. Since the goods, or a part of the goods, take the form of the shape serving that functional purpose, it would be difficult to demonstrate that use of the shape of the goods serves the primary function of a badge of origin. Such use is very likely to convey something of the functional attributes of the goods, much akin, by analogy, to the use of the oil drop man to identify the qualities of the Shell Petrol in Shell v Esso (supra). Where the goods embody the shape, a seller of goods bearing the shape, might find it difficult to describe or illustrate the goods without reference to the shape in much the same way that Tansing ( Musidor BV v Tansing (1994) 52 FCR 363) found it necessary in the course of trade in unauthorised recordings of the Rolling Stones to use the trade mark ' Rolling Stones ' to describe the content of the goods being sold. Similarly, how might Disney Enterprises Inc describe an animated cinematic version of ' The Hunchback of Notre Dame ' without using the words ' The Hunchback of Notre Dame ' notwithstanding the registration of that title as a trade mark for entertainment services ( Christodoulou (supra)). Where the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark.
Case: Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42 ; (1967) 116 CLR 628
Outcome: cited
Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42 ; (1967) 116 CLR 628 at 639-640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke Philips Electronics NV &amp; Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 that the 1995 Act's introduction of shape signs (although intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods , and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. [15]. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]: The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is 'extra', added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, 'an existence independently of the mark' which is imposed upon them.
Case: Koninklijke Philips Electronics NV &amp; Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167
Outcome: cited
Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42 ; (1967) 116 CLR 628 at 639-640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke Philips Electronics NV &amp; Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 that the 1995 Act's introduction of shape signs (although intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods , and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. [15]. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]: The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is 'extra', added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, 'an existence independently of the mark' which is imposed upon them.
Case: Attorney-General of the Commonwealth v Foster [1999] FCA 81 ; (1999) 84 FCR 582
Outcome: cited
The submissions made by the applicant are similar to those rejected by this Court in Foster . The offences alleged in that case and stated in the departmental memorandum given to the Minister for the purpose of his decision, were set out in the judgment given in a related appeal, Attorney-General of the Commonwealth v Foster [1999] FCA 81 ; (1999) 84 FCR 582 at [50] , namely: '... one count of conspiracy to use false instruments, two counts of conspiracy to defraud, and three counts of using a false instrument.'
Case: Director of Public Prosecutions of the Commonwealth v Kainhofer [1995] HCA 35 ; (1995) 185 CLR 528
Outcome: referred to
The issue remains, however, whether the information contained in the advice put before the Minister was sufficient to allow him to give proper consideration to the request made for the extradition of the applicant. The fact that, if the notice is issued, the matter goes to a magistrate for consideration according to the same criteria as are considered by the Minister (s 19(2)(c) of the Act), does not in any way relieve the Minister from his obligation to give those criteria independent consideration; Director of Public Prosecutions of the Commonwealth v Kainhofer [1995] HCA 35 ; (1995) 185 CLR 528 at 538.
Case: Foster v Attorney-General of the Commonwealth of Australia (1997) 97 A Crim R 560
Outcome: applied
Although this Court does not have jurisdiction to consider the merits of the Minister's decision, there is a reviewable error if the only material on which the Minister's decision is based does not provide a factual basis for, and prevents the reasonable formation of, the requisite opinion. Such a decision would be perverse in the Wednesbury sense; Associated Provincial Picture Houses Ltd v Wednesbury Corporation [1947] EWCA Civ 1 ; [1948] 1 KB 223 at 230. The point was made by Cooper J in Foster v Attorney-General of the Commonwealth of Australia (1997) 97 A Crim R 560 at 573-4 where his Honour, in expressing the view that the Act did not, either expressly or by implication, exclude the rules of natural justice or the requirement of procedural fairness in relation to the exercise of the power under s 16, said: 'The nature of the decision under s 16 does not of itself indicate an intention to exclude the rules. The decision to issue a notice under s 16 is not reviewable by a magistrate under s 19, and, subject to the limited avenues available for control by the courts, is final ... The decision operates as a necessary precondition to allow the next stage of the extradition process to occur. Although the extradition process involves a number of steps or stages before a final decision to surrender the person for extradition is made, each step is self-contained. The decision at each stage takes effect to either terminate the process or constitute the condition precedent required for the next stage to occur. Further, the issues at each stage are not the same, although there may be some overlap, eg, the existence or possible existence of extradition objections.'
Case: Holt v Hogan (No 2) (1993) 46 FCR 145
Outcome: followed
I do not accept that the circumstances in Foster were relevantly different from those before me. It is inevitable that in many cases where extradition is sought there will be no precise equivalent between the offence as specified in the request for extradition and offences in Australia however the Act does not require this. It is sufficient if there is dual criminality in substance; Harris at 411; Holt v Hogan (No 2) (1993) 46 FCR 145 at 149-151. The dual criminality requirement is that the 'conduct or the equivalent conduct' to that in respect of which extradition is sought should be an 'extradition offence' in relation to Australia.
Case: Minister for Aboriginal Affairs v Peko-Wallsend Limited [1986] HCA 40 ; (1985) 162 CLR 24
Outcome: referred to
Further, the respondents referred to two passages from Minister for Aboriginal Affairs v Peko-Wallsend Limited [1986] HCA 40 ; (1985) 162 CLR 24 in support of its contention that the first respondent was entitled to rely on the advice prepared for him by departmental staff. Although in a different context, these extracts bear repeating. At 30 Gibbs CJ stated: 'Of course the Minister cannot be expected to read for himself all the relevant papers that relate to the matter. It would not be unreasonable for him to rely on a summary of the relevant facts furnished by the officers of his Department.' 27 In the same case Brennan J said at 65-6: 'The department does not have to draw the Minister's attention to every communication it receives and to every fact its officers know. Part of a department's function is to undertake an analysis, evaluation and pr&eacute;cis of material to which the Minister is bound to have regard or to which the Minister may wish to have regard in making decisions. The press of ministerial business necessitates efficient performance of that departmental function... Reliance on the departmental appreciation is not tantamount to an impermissible delegation of the ministerial function. A Minister may retain his power to make a decision while relying on his Department to draw his attention to the salient facts.' 28 The applicant attempted to distinguish Foster on the basis that the descriptions of the offences in Foster were instantly recognisable as bearing dual criminality, whereas in the present case it was not possible on the basis of the descriptions given in the advice to form a reasonable opinion as to dual criminality. As noted above at [7], the charges made against the applicant are 'wilful attempt to evade Federal income tax' in each of 1999, 2000 and 2001. Counsel for the applicant submitted that there is no such offence in Australia. Further, counsel submitted that such an offence could encompass conduct that was not criminal in Australia, including the failure to lodge an income tax return. In comparison, counsel for the applicant referred to the departmental submission in Foster , which stated: 'The Commonwealth DPP has advised that Foster's alleged conduct would amount to the offences of conspiracy to defraud contrary to section 430(1) of the Criminal Code (Qld); fraudulent inducement of a person to give credit to a company... uttering false document... obtaining goods or credit by false pretence... and falsifying books or accounts by an officer of a corporation.'
Case: Vasiljkovic v Commonwealth [2006] HCA 40 ; (2006) 228 ALR 447
Outcome: referred to
The steps involved in the extradition process under Part II of the Act were considered by the Full Federal Court in Harris v Attorney-General of the Commonwealth (1994) 52 FCR 386 at 389. The Full Court described four stages in the extradition process: commencement, remand, determination by a magistrate of eligibility for surrender and executive determination that the person is to be surrendered; see also Vasiljkovic v Commonwealth [2006] HCA 40 ; (2006) 228 ALR 447 at [55] . The issue of a notice under s 16(1) of the Act formally commences the process and, as noted above, is a condition precedent to a magistrate considering the person's eligibility for surrender. The Minister's decision to issue a s 16 notice may be subjected to judicial review; von Arnim v Ellison [2006] FCAFC 49 ; (2006) 150 FCR 282 at 298, Harris at 400-401.
Case: D&eacute;cor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385
Outcome: cited
In D&eacute;cor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, Sheppard J distilled ten rules of construction from the authorities: (1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly. (2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. (3) Nevertheless, in approaching the task of construction, one must read the specification as a whole. (4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification. (5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim. (6) A patent specification should be given a purposive construction rather than a purely literal one. (7) In construing the specification, the court is not construing a written instrument operating inter partes , but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood. (8) The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensive to, and does not mislead, a skilled reader, the language used is seldom of importance. (9) Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right. (10) If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.
Case: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1
Outcome: followed
The High Court recently confirmed in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 ; (2001) 207 CLR 1 that the specification and claims must not be read in the abstract. Rather, the specification and claims must be construed in light of the common general knowledge and the art before the priority date. Chief Justice Gleeson, McHugh, Gummow, Hayne and Callinan JJ said at [24]: ...[the complete specification] is to be construed in the light of the common general knowledge and the art before...the priority date; the court is to place itself "in the position of some person acquainted with the surrounding circumstances as to the state of [the] art and manufacture at the time. 143 Nufarm, quoting Kimberly-Clark Australia 207 CLR at 16 [24], agrees that the specification and claims must be 'construed in the light of the common general knowledge and the art before ... the priority date'. It is also not disputed that the Merck patent (obtained in the US in 1983) predates the Nufarm priority date of 4 June 1999. 144 Jurox contended that the 'Merck [p]atent and the micellar solutions described in it, including IVOMEC&reg; [the commercial embodiment of the patent], were common general knowledge at the priority date. The references in the [Nufarm] patent to "emulsions" should be understood against that background, i.e. they do not encompass micellar solutions'. 145 Jurox argues that the evidence supports their view. In this regard they cite the testimony of their expert, Mr Shepherd. Moreover, they note that Nufarm's expert Dr Lichti conceded on cross-examination that Merck patents generally are considered sources of knowledge for skilled addressees in the field.
Case: Populin v HB Nominees Pty Ltd (1982) 41 ALR 471
Outcome: followed
In determining the meaning to be given to the words of a patent claim the court must make a 'common sense assessment of what the words used convey' in the context of the knowledge prevailing in the relevant art at the priority date. In Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 the Full Court stated at 476: The complete specification must not be read in the abstract but in the light of common knowledge in the art before the priority date, bearing in mind that what is being construed is a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood (see generally Welch Perrin &amp; Co Pty Ltd v Worrel [1960] HCA 91 ; (1961) 106 CLR 588 at 610). The essential features of the product or process for which it claims a monopoly are to be determined not as a matter of abstract uninformed construction but by a common sense assessment of what the words used convey in the context of then-existing published knowledge.
Case: Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225
Outcome: cited
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225 at 241-242 Finkelstein J stated: Generally speaking the skilled addressee is the person who works in the art or science with which the invention is connected. In Plimpton v Malcolmson (1876) 3 ChD 531 Jessel MR said (at 556): What is meant is that if [the invention] is a manufacture connected with a particular trade, the people in the trade shall know something about it; if it is a thing connected with a chemical invention, people conversant with chemistry shall know something about it. In Catnic Lord Diplock said (at 242) that skilled addressees are "those likely to have a practical interest in the subject matter of [the] invention". A variety of people may have that interest. There are those who might wish to make or construct the invention, those who may wish to compound the invention and those who may wish to use the invention. The skilled addressee seems to me to be a relative expression which does not identify any specific person. Because the patent is directed to a person interested in making, constructing, compounding or using the invention (see for example s 27(3)(b) of the Patent Act 1993 (Canada); International Standard Electric Corporation v Ooms 157 F2d 73 (1946)), this hypothetical person, the patent lawyer's "reasonable man", may be required to be skilled in more than one art. Such a person might be thought of as the composite being, mentioned by Buckley LJ in Tetra Molectric at 583. It may be preferable not to search for a composite addressee but a team whose combined skills are to be employed. 50 The relevant skilled addressee for the purposes of this proceeding is a person skilled in chemistry, and particularly physical chemistry.