mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: S &amp; I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354
Outcome: considered
In S &amp; I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361-363 the Full Court restated a number of applicable principles where conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation as follows: There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: .... Conduct will be misleading and deceptive if it leads into error: .... Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deceiving regardless of whether it is less or more than 50%: .... Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct: .... In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products: .... Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive: .... Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive: .... It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies. In many cases it will be necessary to consider the class of persons to whom the representation was directed: .... There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive: .... The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the Court to determine. It is ultimately a question of fact.
Case: Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407
Outcome: considered
The relevant test was articulated by Kitto J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (the " Shell Co case"). It is helpful to understand the context in which his Honour articulated the test. Esso Standard Oil was the proprietor of registered trade marks for a caricature of a man described as a "humanised oil drop". It alleged that the Shell Company had infringed its registered trade marks in two advertising television films which included an animated oil-drop character. An issue for determination on the appeal was whether the Shell Company's use of the oil-drop character constituted a use of the characters as a trade mark. At 425 Kitto J said: ... the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown onto the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade? 59 Kitto J concluded that the oil-drop character had not been used by the Shell Company "as a trade mark". His Honour noted that the connection in the films between the oil-drop man and the petrol he symbolised was a connection "limited by the purpose of the occasion". He observed that the only purpose in the appearance of the oil-drop man was to unite a quickly moving series of pictures which conveyed a message about the qualities of Shell petrol. Kitto J considered it "quite certain" that no viewer would pick out any scene including the oil-drop man and say: "There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs."
Case: Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459
Outcome: cited
In determining whether the respondent's logo is deceptively similar to the Trade Mark I have accorded particular weight to the following factors. First, the respondent's logo adopts the whole of the word element of the Trade Mark. The pronunciation of that element will sound identical in each case. A comparison based on sound is of particular relevance in this case because restaurant custom is commonly based on word of mouth recommendation. Secondly, the word element of the Trade Mark is a prominent feature of the respondent's logo. Although it is appropriate to have regard to the impression produced by the respective marks in their entirety, some features of a mark can be more striking and memorable than others ( Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459 at [22]). To a customer or potential customer literate only, or principally, in English, the English word element of each mark will be of dominant significance. The additional English word in the respondent's mark (ie "Chatswood") is apt to be understood as a geographic indicator. For this reason it is likely to create in a potential customer's mind the impression of connection with the Trade Mark rather than serve as a distinguishing feature; that is, it is likely to be understood as suggesting that this is the Chatswood outlet or branch of the owner of the Trade Mark. This aspect of the respondent's sign assumes particular significance because of the reputation of the registered mark which is discussed below ( Starr Partners Pty Ltd v Dev Prem Pty Ltd at [24]). 71 I accept the applicants' submission that the use of different fonts and, in the one case, upper case lettering, does not avoid the likelihood of deception. The differences are not marked and the words convey the same message. That message is not to be determined by giving separate consideration to "BBQ" and "King" but rather by giving consideration to them as a composite phrase. 72 I conclude that the respondent's logo is deceptively similar to the Trade Mark. It necessarily follows that the sign on the "polo" style shirt is deceptively similar to the Trade Mark.
Case: Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Outcome: cited
I accept that the likelihood of Chinese speaking customers being misled into believing that there is a business relationship between the BBQ King restaurant and the Chatswood BBQ King restaurant is significantly less high than in the case of English speaking customers. However, I do not accept that the relevant section of the public by reference to which the question of whether the respondent's conduct is misleading or deceptive falls to be tested is Chinese speaking residents of Chatswood, or indeed, Sydney (see Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202-203). The relevant section of the public in this case is potential customers of the goods and services of the two restaurants and includes in each case significant numbers of English speaking customers. The evidence concerning the actual customers of the BBQ King restaurant is that they are predominantly English speaking. The evidence concerning the actual customers of the respondent's restaurant is that there are "more" Chinese than English speakers. I did not gain the impression from this evidence that English speaking customers do not form an appreciable part of the clientele of the respondent's restaurant. 104 In my view the evidence supports a finding that there is a real chance or possibility of customers being misled or deceived by the name of the respondent's restaurant. Indeed, as noted above, I consider it more likely than not that the name of the respondent's restaurant was selected because Mr Liang appreciated the possibility that customers might be led to believe that the restaurant was associated with the BBQ King restaurant.
Case: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352
Outcome: considered
I am persuaded that it is appropriate for an order to be made restraining the respondent from using the name "Chatswood BBQ King" as the name of, or otherwise in connection with, the respondent's restaurant. However, I am not persuaded that the restraint should extend to the use of the individual words and phrases "BBQ King", "BBQ Kings", "BBQ", "King" and "Kings". Rather, in my view, the appropriate approach is that exemplified by the injunction ultimately made in Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 which was discussed in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 575. In Turner v General Motors (Australia) Pty Ltd the defendants were restrained "from using the words 'General Motor', or 'General Motors' in connection with any business then or thereafter carried on by them or any of them without clearly distinguishing such business from the business carried on by General Motors (Australia) Pty Ltd and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendants was or were identical or connected with the business of the plaintiff and also from representing or holding out to the like effect". As to the appropriate form generally of an injunction, including an injunction in an intellectual property case, see Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110 at [42] - [49] .
Case: Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110
Outcome: cited
I am persuaded that it is appropriate for an order to be made restraining the respondent from using the name "Chatswood BBQ King" as the name of, or otherwise in connection with, the respondent's restaurant. However, I am not persuaded that the restraint should extend to the use of the individual words and phrases "BBQ King", "BBQ Kings", "BBQ", "King" and "Kings". Rather, in my view, the appropriate approach is that exemplified by the injunction ultimately made in Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 which was discussed in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 575. In Turner v General Motors (Australia) Pty Ltd the defendants were restrained "from using the words 'General Motor', or 'General Motors' in connection with any business then or thereafter carried on by them or any of them without clearly distinguishing such business from the business carried on by General Motors (Australia) Pty Ltd and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendants was or were identical or connected with the business of the plaintiff and also from representing or holding out to the like effect". As to the appropriate form generally of an injunction, including an injunction in an intellectual property case, see Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110 at [42] - [49] .
Case: Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242
Outcome: considered
The first issue for determination under s 122(1)(b) is therefore whether the respondent used its mark or sign in good faith. In Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 at [43] Bennett J explained: ... The requirement for the use to be in good faith imports an absence of intention to make use of the goodwill which has been acquired by another trader. The resemblance between the registered trade mark, of which the first respondent was aware and the name of the first respondent does not prevent the use being bona fide provided that there was an honest belief that no confusion would arise and if there were no intention of wrongfully diverting business .... Evidence of such an honest belief is necessary to establish "bona fide use"... (citations omitted) 78 I accept that the name of the respondent's restaurant was suggested by Yu Xi Liang, a director and shareholder of the respondent. Mr Liang gave affidavit evidence that he suggested the name "Chatswood BBQ King" for the following reasons: (a) Chatswood BBQ Kitchen has previously operated at the site of the respondent's restaurant; (b) the location was therefore already known as an outlet for Cantonese roast meats; (c) the word "King" described the superior and top quality of the respondent's BBQ and in Chinese the character for "King" can also be used to convey "excellence", "top quality" or "the best"; and (d) the word "Chatswood" identified the location of the business. 79 The credibility of Mr Liang's above evidence was seriously undermined by his cross-examination. Under cross-examination Mr Liang eventually accepted that he had chosen the name of the respondent's restaurant before identifying the Chatswood site as the location of the restaurant. Although he initially claimed that he had chosen the English name of the restaurant "as per request from the council", when challenged he conceded that he had chosen the respondent's name before he spoke with the council. I consider it appropriate to approach Mr Liang's assertion that "[f]or us this English name is very casual" with scepticism.
Case: World Firefighters Games Brisbane, 2002 v World Firefighters Games Western Australia Inc [2001] QSC 164
Outcome: referred to
This application is made under s 1337H of the Corporations Act . It is not suggested that there is a residual common law discretion to stay proceedings brought in defiance of the exclusive jurisdiction clause and that concession by Hood is, in my opinion, correct: see World Firefighters Games Brisbane, 2002 v World Firefighters Games Western Australia Inc [2001] QSC 164. The existence of an exclusive jurisdiction clause is a relevant consideration in terms of the discretion to transfer, and in some cases is a very weighty matter: see Slater &amp; Gordon Pty Ltd v Porteous [2005] VSC 398.
Case: Slater &amp; Gordon Pty Ltd v Porteous [2005] VSC 398
Outcome: referred to
This application is made under s 1337H of the Corporations Act . It is not suggested that there is a residual common law discretion to stay proceedings brought in defiance of the exclusive jurisdiction clause and that concession by Hood is, in my opinion, correct: see World Firefighters Games Brisbane, 2002 v World Firefighters Games Western Australia Inc [2001] QSC 164. The existence of an exclusive jurisdiction clause is a relevant consideration in terms of the discretion to transfer, and in some cases is a very weighty matter: see Slater &amp; Gordon Pty Ltd v Porteous [2005] VSC 398.
Case: Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527
Outcome: referred to
There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood &amp; Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency. 6 In Crosbie , a judge of this court decided that the Court could not be satisfied that a transaction is voidable under s 588FE simply by reason of a consent judgment in which the admissions are made, because the requirement of "satisfaction" in the section is a condition precedent to the exercise of power. His Honour considered that New South Wales Supreme Court decisions in Cadima Express and S J P Formwork were patently wrong, and that it was essential to prove to the court's satisfaction the "jurisdictional fact" which underpinned the exercise of power. It is important to note that at [4], His Honour pointed out that the plaintiffs in that case did not have the consent of the Commissioner for Taxation, and that in my view is an important and different circumstance to those of the present case.
Case: Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286
Outcome: cited
There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood &amp; Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency.
Case: Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985
Outcome: cited
There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood &amp; Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency.
Case: Howarth v Adey [1996] 2 VR 535
Outcome: distinguished
This case bears no resemblance to the circumstances of State of Queensland &amp; Anor v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146, where an amendment was refused by the trial judge six months prior to the hearing. The High Court considered in that case the refusal was an error because it gave undue weight to the principles of case management, as opposed to the overriding importance of ensuring justice is done as between the parties. Nor do the present circumstances bear any comparison with those in Howarth v Adey [1996] 2 VR 535 where an amendment was sought in a medical negligence case involving a jury after seventeen days of hearing. That case involved a wrongful exercise of discretion because an irrelevant concession, namely the availability of a right of appeal, was wrongly taken into account in the view of the Full Court of the Supreme Court of Victoria.
Case: State of Queensland &amp; Anor v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146
Outcome: distinguished
This case bears no resemblance to the circumstances of State of Queensland &amp; Anor v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146, where an amendment was refused by the trial judge six months prior to the hearing. The High Court considered in that case the refusal was an error because it gave undue weight to the principles of case management, as opposed to the overriding importance of ensuring justice is done as between the parties. Nor do the present circumstances bear any comparison with those in Howarth v Adey [1996] 2 VR 535 where an amendment was sought in a medical negligence case involving a jury after seventeen days of hearing. That case involved a wrongful exercise of discretion because an irrelevant concession, namely the availability of a right of appeal, was wrongly taken into account in the view of the Full Court of the Supreme Court of Victoria.
Case: S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604
Outcome: referred to
There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood &amp; Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency. 6 In Crosbie , a judge of this court decided that the Court could not be satisfied that a transaction is voidable under s 588FE simply by reason of a consent judgment in which the admissions are made, because the requirement of "satisfaction" in the section is a condition precedent to the exercise of power. His Honour considered that New South Wales Supreme Court decisions in Cadima Express and S J P Formwork were patently wrong, and that it was essential to prove to the court's satisfaction the "jurisdictional fact" which underpinned the exercise of power. It is important to note that at [4], His Honour pointed out that the plaintiffs in that case did not have the consent of the Commissioner for Taxation, and that in my view is an important and different circumstance to those of the present case.