mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: F H Faulding &amp; Co Ltd v Commissioner of Taxation [1994] FCA 1492 ; (1994) 54 FCR 75
Outcome: referred to
J considered the grounds upon which a notice may be held invalid because a reasonable period for production has not been allowed. He referred to Pyneboard Pty Ltd v Trade Practices Commission (1982) 57 FLR 368, a case involving a notice under s 155 of the Trade Practices Act 1974 (Cth), and F H Faulding &amp; Co Ltd v Commissioner of Taxation [1994] FCA 1492 ; (1994) 54 FCR 75 , a case involving a notice under s 264 of the Income Tax Assessment Act 1936 (Cth). He then said (at [65]): "...the specification of an arbitrarily short time for compliance may reflect upon the reasonableness of the exercise of the power or the good faith with which it has been exercised."
Case: Ganke v Deputy Commissioner of Taxation of the Commonwealth of Australia (1975) 25 FLR 98
Outcome: referred to
applicant referred to the decision in Ganke v Deputy Commissioner of Taxation of the Commonwealth of Australia (1975) 25 FLR 98 and submitted that the examiner was bound under the ACC Act to allow a reasonable time for the production of the documents and things and that the respondent bore the onus of establishing that "forthwith" was a reasonable time. After the hearing, the applicant wrote to my chambers and referred me to the decision of Flick J in A. B. Pty Limited v Australian Crime Commission [2009] FCA 119. In that case, his Honour referred to a number of factors which are to be considered in determining objectively whether the period of time allowed for production in a notice under s 29 is reasonable. He said (at [61]): "The objective surrounding circumstances would include the breadth of each particular notice and (perhaps) the need for a recipient to construe the terms of a notice; the classes of documents required to be produced; the apparent ability of the recipient to collate and thereafter produce the documents; the time of the year at which a notice is served and intervening disruption to business activities by reason of public or religious holidays; whether there has been a prior attempt to require the production of the same or similar documents; and the time in fact allowed. Some consideration could also be given to the amount of time an examiner thought appropriate; although that consideration would not be decisive."
Case: George v Rockett [1990] HCA 26 ; (1990) 170 CLR 104
Outcome: discussed
summons issued under s 28 and a notice to produce issued under s 29 interfere with the rights of the citizen and, generally speaking, the courts will insist on strict compliance with conditions governing their issue. In the context of a search warrant, the High Court said in George v Rockett [1990] HCA 26 ; (1990) 170 CLR 104 (at 110-111): "Nevertheless, in construing and applying such statutes, it needs to be kept in mind that they authorize the invasion of interests which the common law has always valued highly and which, through the writ of trespass, it went to great lengths to protect. Against that background, the enactment of conditions which must be fulfilled before a search warrant can be lawfully issued and executed is to be seen as a reflection of the legislature's concern to give a measure of protection to these interests. To insist on strict compliance with the statutory conditions governing the issue of search warrants is simply to give effect to the purpose of the legislation." (See also Ousley v The Queen [1997] HCA 49 ; (1997) 192 CLR 69 at 95 per Gaudron J at 105 per McHugh J, at 141 per Kirby J.) The summons
Case: Oke v Commissioner of the Australian Federal Police [2007] FCA 27 ; (2007) 168 A Crim R 503
Outcome: discussed
Oke v Commissioner of the Australian Federal Police [2007] FCA 27 ; (2007) 168 A Crim R 503 , Mansfield J said (at 519 [71]): "A preliminary observation, however, is that it would not have been intended that any omission from the copy of a warrant made available under s 3H(1) to the occupier of premises being searched would invalidate the execution of the search warrant. A photocopying error may have led to an insignificant corner of a page, or the numbering of a page, being left out. The process of photocopying may have blurred a small section of the text, but a section which did not in the circumstances have any particular significance. There may be other illustrations."
Case: Ousley v The Queen [1997] HCA 49 ; (1997) 192 CLR 69
Outcome: referred to
summons issued under s 28 and a notice to produce issued under s 29 interfere with the rights of the citizen and, generally speaking, the courts will insist on strict compliance with conditions governing their issue. In the context of a search warrant, the High Court said in George v Rockett [1990] HCA 26 ; (1990) 170 CLR 104 (at 110-111): "Nevertheless, in construing and applying such statutes, it needs to be kept in mind that they authorize the invasion of interests which the common law has always valued highly and which, through the writ of trespass, it went to great lengths to protect. Against that background, the enactment of conditions which must be fulfilled before a search warrant can be lawfully issued and executed is to be seen as a reflection of the legislature's concern to give a measure of protection to these interests. To insist on strict compliance with the statutory conditions governing the issue of search warrants is simply to give effect to the purpose of the legislation." (See also Ousley v The Queen [1997] HCA 49 ; (1997) 192 CLR 69 at 95 per Gaudron J at 105 per McHugh J, at 141 per Kirby J.) The summons
Case: Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355
Outcome: discussed
issues raised by the applicant are essentially issues of statutory construction. It will be necessary for me to address the proper construction of various sections in the ACC Act. A breach of a statutory provision does not necessarily lead to invalidity. Whether a breach leads to invalidity is a question to be determined by the application of the principles laid down by the High Court in Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355: "An act done in breach of a condition regulating the exercise of a statutory power is not necessarily invalid and of no effect. Whether it is depends upon whether there can be discerned a legislative purpose to invalidate any act that fails to comply with the condition. The existence of the purpose is ascertained by reference to the language of the statute, its subject matter and objects, and the consequences for the parties of holding void every act done in breach of the condition. Unfortunately, a finding of purpose or no purpose in this context often reflects a contestable judgment. The cases show various factors that have proved decisive in various contexts, but they do no more than provide guidance in analogous circumstances. There is no decisive rule that can be applied; there is not even a ranking of relevant factors or categories to give guidance on the issue." (Citations omitted.) (McHugh, Gummow, Kirby and Hayne JJ at 388-389 [91]).
Case: Pyneboard Pty Ltd v Trade Practices Commission (1982) 57 FLR 368
Outcome: referred to
J considered the grounds upon which a notice may be held invalid because a reasonable period for production has not been allowed. He referred to Pyneboard Pty Ltd v Trade Practices Commission (1982) 57 FLR 368, a case involving a notice under s 155 of the Trade Practices Act 1974 (Cth), and F H Faulding &amp; Co Ltd v Commissioner of Taxation [1994] FCA 1492 ; (1994) 54 FCR 75 , a case involving a notice under s 264 of the Income Tax Assessment Act 1936 (Cth). He then said (at [65]): "...the specification of an arbitrarily short time for compliance may reflect upon the reasonableness of the exercise of the power or the good faith with which it has been exercised."
Case: Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399; (2004) 63 IPR 476; (2005) AIPC 92-055
Outcome: followed
24 October 2003 ICI appealed against that decision to the Court and the matter came on before Crennan J. Du Pont sought leave to appear before Crennan J as amicus curiae and submitted that it was an abuse of process for ICI to reargue before Crennan J a matter decided by Branson J. Leave was refused ( Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399; (2004) 63 IPR 476; (2004) AIPC 92 055 at [36]). The matter proceeded in the absence of Du Pont. On 16 December 2004 it was ordered that the appeal be allowed, that the decision of the delegate be set aside and that the matter be remitted to the delegate to reconsider the application and amendments proposed by the applicant in accordance with the Court's reasons for judgment (see Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 319; (2004) 63 IPR 476; (2004) AIPC 92 055 at [87]).
Case: Kuligowski v Metrobus [2004] HCA 34 ; (2004) 220 CLR 363
Outcome: followed
there is no identity between any issue found by Branson J, confirmed by the Full Court, on the one hand, and any issue for determination in the present application, on the other, there can be no issue estoppel ( Kuligowski v Metrobus [2004] HCA 34 ; (2004) 220 CLR 363 at [21] , [40] [54]). I cannot see that the questions raised by Du Pont as to the propriety of the filing of the Divisional Application by ICI have any relevance to establishing the issue estoppels pleaded. The proceeding should be dismissed. The applicant is to pay the costs of the respondents. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles. Associate: Dated: 31 October 2006 Counsel for the Applicant: Mr IM Jackman SC, Mr PW Flynn Solicitor for the Applicant: Addisons Counsel for the First Respondent: Mr DK Catterns QC, Mr C Dimitriadis Solicitor for the First Respondent: Phillips Ormonde &amp; Fitzpatrick Counsel for the Second Respondent: Ms KJ Howard SC Solicitor for the Second Respondent: Australian Government Solicitor Dates of Hearing: 16 and 17 October 2006 Date of Judgment: 31 October 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1402.html
Case: Re Application by Imperial Chemical Industries PLC (2003) 60 IPR 610
Outcome: discussed
2 April 2003 ICI proposed amendments to the specification which had the effect that claim 1 of the Divisional Application would be as follows: '1. A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: [formula follows]' That claim is similar in scope (although not in form) to claim 4 of the Parent Application and is similar to claim 10 of Application 654176. A delegate of the Commissioner refused the Divisional Application on the basis it lacked novelty and refused an opportunity to propose further amendments. One ground of that decision was that there was an issue estoppel created by the judgment of Branson J but for the fact that the parties were not the same. ( Re Application by Imperial Chemical Industries PLC (2003) 60 IPR 610).
Case: Johnstone v HIH Limited [2004] FCA 190
Outcome: considered
It is not contentious that the Court has power under the Federal Court Act (see ss 23, 33J, 33K and 33X) to make orders, where appropriate, to protect the integrity of the opt out process. I referred to the relevant principles in Johnstone v HIH Limited [2004] FCA 190 , where I said at [105]: 'The Court has an important and continuing role in managing representative proceedings in the public interest to rectify any potentially misleading communications to class members or potential class members, in order to ensure that there is no misunderstanding engendered by such communications, particularly when they emanate from legal advisers, as to rights and obligations and procedures to be followed by recipients of such communications.'
Case: Williams v FAI Home Security Pty Ltd (No 3) [2000] FCA 1438
Outcome: considered
The principle was also expressed by Goldberg J in Williams v FAI Home Security Pty Ltd (No 3) [2000] FCA 1438 at [24] in the following way: 'The nature of class actions brought pursuant to provisions of Pt IVA of the Act are such that it is imperative that any communications made to group members, in whatever form, be accurate especially in relation to the rights which they have in relation to class actions of which they are a group member and the rights which they have to opt out of such proceedings.' 11 Evident from both the above comments is the necessity of protecting the integrity of the opt out process by ensuring the accuracy of public representations made during the period of that process. 12 The Visy parties refer to the Further Amended Statement of Claim and say that the statements of Mr Slade are inaccurate and misleading because they incorrectly attributed to the ACCC a comment that the alleged cartel activity of the Visy parties and the Amcor parties resulted in an overcharge of between 8 and 23 per cent. In particular, the Visy parties say that the references by Mr Slade to damages in the amount of hundreds of million, or even a billion, dollars could not be reasonably supported and should not have been attributed to the ACCC. The Visy parties also emphasise that Mr Slade's comments that Maurice Blackburn wanted people to know what possible benefits they might obtain as a result of their decision to remain in the group or to opt out of it indicates that Mr Slade was conscious of the importance and potential effect of his statements vis-&agrave;-vis the opt out process.
Case: Brookfield Communications Inc v West Coast Entertainment Corporation [1999] USCA9 74 ; 174 F3d 1036 (1999)
Outcome: cited
Although there is no precise finding to this effect the Federal Magistrate appears to accept that the words "insurance" and "news" and "Australia" were words which are "descriptive" rather than "distinctive". It would be surprising if any other result ensued because they are self-evidently descriptive words. Although more than one descriptive word is combined, each component retains its descriptive significance in relation to the services at issue; the combination results in a composite that is itself descriptive: see Brookfield Communications Inc v West Coast Entertainment Corporation [1999] USCA9 74 ; 174 F3d 1036 (1999); Finance Express v Nowcom Corporation 564 FSupp2d 1160 (2008).
Case: connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348
Outcome: followed
Moreover, the Federal Magistrate's comparison of the two domain names by substituting "company" for "com" and "Australia" for "au" is misplaced. The ".com" top-level domain signifies the sites' commercial nature, and the ".au" signifies where the domain is registered: see connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348 ; Prime Publishers Inc v American-Republican Inc 160 FSupp2d 266 (2001). The Federal Magistrate's commentary about the similarity in capitalisation of the website names is also not significant as web addresses are not capital-sensitive. 17 In connect.com.au Pty Ltd, Emmett J observed at [57] that for a descriptive name to become distinctive, "a very substantial amount of use in the relevant market would be necessary for it to acquire any secondary meaning". At [58] his Honour said: ...where a descriptive trade name is used there will always be the possibility of confusion...[and] where a descriptive trade name is used it will be difficult for that name to become distinctive of a particular business. Application to like businesses would not ordinarily mislead the public: see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216. 18 At [60] Emmett J earlier said: "There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind. Its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public." See also the discussion at [61] regarding possible confusion by the public where "descriptive words are used by two traders as part of their respective trade names", even where the trade names include differentiating words. 20 At 228 - 229 in the Hornsby Building case, Stephen J (with whom Jacobs J agreed) referred to the use of descriptive words in a business name as not entitling a claim for a monopoly in these words. At 229, his Honour referred to the concept stressed by Emmett J in connect.com.au Pty Ltd that "(t)here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name". See also Barwick CJ at 221 (with whom Aickin J agreed).
Case: Dodds Family Investments Pty Ltd &amp; Anor v Lane Industries Pty Ltd &amp; Ors (2003) 26 IPR 261
Outcome: referred to
Similar observations have been made by Stephen J at 228 in the Hornsby Building case and by a Full Court of this Court in Dodds Family Investments Pty Ltd &amp; Anor v Lane Industries Pty Ltd &amp; Ors (2003) 26 IPR 261. 20 At 228 - 229 in the Hornsby Building case, Stephen J (with whom Jacobs J agreed) referred to the use of descriptive words in a business name as not entitling a claim for a monopoly in these words. At 229, his Honour referred to the concept stressed by Emmett J in connect.com.au Pty Ltd that "(t)here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name". See also Barwick CJ at 221 (with whom Aickin J agreed). 21 I also note that in Dodds Family Investments at 269, the Full Court said: The causative connection is reputation, an association in the minds of consumers between the originator's designation and its goods or services. Merely descriptive words will not ordinarily effect such an association: per Gummow, French, Hill JJ.
Case: Finance Express v Nowcom Corporation 564 FSupp2d 1160 (2008)
Outcome: cited
Although there is no precise finding to this effect the Federal Magistrate appears to accept that the words "insurance" and "news" and "Australia" were words which are "descriptive" rather than "distinctive". It would be surprising if any other result ensued because they are self-evidently descriptive words. Although more than one descriptive word is combined, each component retains its descriptive significance in relation to the services at issue; the combination results in a composite that is itself descriptive: see Brookfield Communications Inc v West Coast Entertainment Corporation [1999] USCA9 74 ; 174 F3d 1036 (1999); Finance Express v Nowcom Corporation 564 FSupp2d 1160 (2008).
Case: Hornsby Building Information Centre Pty Ltd v Sydney Building Information (1978) 140 CLR 216
Outcome: applied
At [17], by reference to the High Court's judgment in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (1978) 140 CLR 216 , his Honour noted, correctly, that "...a party is not able to obtain a monopoly over a name which is not distinctive but rather descriptive." 11 At [63], his Honour referred to the names of the websites as using "common words". At [64] he referred to "the descriptive nature of the words". 17 In connect.com.au Pty Ltd, Emmett J observed at [57] that for a descriptive name to become distinctive, "a very substantial amount of use in the relevant market would be necessary for it to acquire any secondary meaning". At [58] his Honour said: ...where a descriptive trade name is used there will always be the possibility of confusion...[and] where a descriptive trade name is used it will be difficult for that name to become distinctive of a particular business. Application to like businesses would not ordinarily mislead the public: see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216.
Case: Prime Publishers Inc v American-Republican Inc 160 FSupp2d 266 (2001)
Outcome: cited
Moreover, the Federal Magistrate's comparison of the two domain names by substituting "company" for "com" and "Australia" for "au" is misplaced. The ".com" top-level domain signifies the sites' commercial nature, and the ".au" signifies where the domain is registered: see connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348 ; Prime Publishers Inc v American-Republican Inc 160 FSupp2d 266 (2001). The Federal Magistrate's commentary about the similarity in capitalisation of the website names is also not significant as web addresses are not capital-sensitive.
Case: Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181
Outcome: cited
Although the Federal Magistrate, at [65], considered the names of the two websites and the get-up of those sites in combination provided the requisite confusion, this finding is at odds with his Honour's earlier observation at [11] that the two sites are not strikingly similar. So much is evident, at least, when it is remembered that one site is a free service and another a subscriber based service thereby lessening possible confusion. As described by the Federal Magistrate the appearance of the two websites is not sufficiently similar to give rise to confusion on the basis of appearance alone or in combination with the names. The fact that some interested people may be confused between the two sites is an insufficient basis to establish a reasonable likelihood of an appreciable or relevant confusion. That is especially so where there is no finding as to whether the number of possible confused people was significant or otherwise. See Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181. 23 Having regard to the foregoing it is apparent that JEM's claim under the Act should not have succeeded. The lack of a finding about whether the words insurance, news and Australia - had acquired a distinctive meaning through extensive use is fatal to JEM's ability to maintain the orders it secured below. His Honour did not deal with the claim made by JEM under the tort of "passing off". Rather, his Honour found it unnecessary due to his finding that the respondents succeeded under the TPA. It may be likely that no such claim could be established. In any event, the parties consider, and I agree, that no different result would ensue concerning the passing off claim. The appeal should be allowed, the operative orders below set aside and the appellants should have their costs of the appeal and of the proceeding below. I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Marshall. Associate: Dated: 19 December 2008 Solicitor for the Appellants: Mahoneys Solicitors Counsel for the Appellants: Mr G McGowan SC with Mr P Ehrlich Solicitor for the Respondent: Davis Lawyers Counsel for the Respondent: Ms S Gatford Date of Hearing: 17 December 2008 Date of Judgment: 19 December 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1966.html