mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670
Outcome: referred to
Computers submits that Pioneer KK has failed to establish that use by Pioneer Australia of the Pioneer KK marks for the services which the Australian company did provide in the relevant period was use by the Australian company as the authorised user of the marks and that the benefit of any such use accrued to the Japanese parent. Accepting that Pioneer Australia is a wholly-owned subsidiary of Pioneer KK and a distributor of Pioneer KK's products, Pioneer Computers submits that this does not establish that Pioneer KK exercised any relevant control within the meaning of s 8 of the Act over Pioneer Australia's use of the Pioneer KK marks in the relevant period. There is no evidence of a license ( Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 673). Accordingly, Pioneer Computers submits, Pioneer KK has not established that Pioneer Australia was an authorised user within the meaning of s 8 of the Act of the Pioneer KK marks in respect of the removal services in the relevant period. Pioneer KK relies upon the fact that the products sold under the trade marks were manufactured by or on behalf of Pioneer KK and that the documents, including manuals and test protocols, were created by the Japanese company and supplied to the Australian subsidiary for supply to customers in Australia. Use under the control of the owner of the trade marks is authorised use (ss 8(1) and 8(2) of the Act). As pointed out by Aickin J in Pioneer Kabushiki Kaisha at 683, a slight connection such as selection and quality control, or control by Pioneer KK of Pioneer Australia in the sense in which a parent company controls a subsidiary, may be sufficient.
Case: Schutz-Werke GmbH &amp; Co KG v Forecast &amp; Trading Pty Ltd (1998) 44 IPR 209
Outcome: cited
9.1 provides for the declaration to state that an inquiry has been made and to set out the findings of the inquiry. It does not provide for proof even at a prima facie level of the case to be made. The onus for showing intention and/or use once an application for removal is made shifts to the trade mark owner, who is required to rebut the allegation (s 100 of the Act). There is no requirement that the statutory declaration prove the alleged non-use or satisfy any evidentiary onus. The application and supporting statutory declaration need only ' mirror the statutory provisions ' ( Shanahan at [15.25] citing Schutz-Werke GmbH &amp; Co KG v Forecast &amp; Trading Pty Ltd (1998) 44 IPR 209). Neither the Act nor the Regulations require that within those documents, an applicant for removal must establish sufficient interest in the non-use application or prove its case. Pioneer KK did not raise any issue concerning the validity of the applications or compliance with Regulation 9.1 before the Registrar. Pioneer Computers submits that as a matter of discretion Pioneer KK should not be permitted to rely upon any such defect in this application to the Court which is an appeal from the Registrar's decision. Pioneer KK points out that it is not a question of discretion but of mandatory compliance: s 92(2)(a) provides that an application must be in accordance with the Regulations and this application represents both the initiating process before the Registrar and before the Court.
Case: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402
Outcome: cited
KK emphasises that it only needs to show some use of the removal goods during the relevant period to maintain its registration. The fact that use of the mark may have been discontinued in relation to some goods after that time cannot, it submits, be relevant to the present application. Further, Pioneer KK points out that it does not need to prove significant sales of goods or provision of services during the relevant period. One sale of each type of good would be sufficient, providing that sale or use of the mark is bona fide and not de minimis ( Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 437). The characterisation of the goods sold by Pioneer KK Pioneer Australia is and has been a market leader in optical drives in Australia. Purchasers of its products included consumers, businesses and government organisations. Pioneer Australia has provided end-user support for its optical drive products. It is common ground that Pioneer KK is a manufacturer of audio and audio-visual equipment including radios, televisions, amplifiers and sound recording and reproducing equipment including car stereo head units, speakers, amplifiers and sub-woofers.
Case: The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27 ; (1949) 78 CLR 601
Outcome: referred to
Explanatory Memorandum does not really assist. Section 101(4) makes it clear that it has been inserted without any attempt to limit or qualify the discretion provided for in s 101(3). The Explanatory Memorandum itself speaks of "clarification". This can either recognise that s 101(4) expands the discretion or that it simply makes it clear which factors could already be taken into account under s 101(3). In my view, use of a trade mark on closely related goods or services could already be taken into account in exercising the discretion under s 101(3) in the unamended section. As I read s 101(3) , the discretion to be exercised is not limited. For the purposes of s 101(3) , account may be taken of use of the trade mark on closely related goods or services, even in cases commencing prior to the introduction of s 101(4). This has particular relevance in the case of goods that are at the forefront of technological change. Justice Dixon (as he then was) said in The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27 ; (1949) 78 CLR 601 at 627 that the basis of a claim to proprietorship in a trade mark so far unused is found in the combined effect of authorship of the mark, the intention to use it on or in connection with the goods and the application for registration. In Magnavox , the Assistant Registrar considered a mark which had not been used across the scope of the goods claimed. In coming to a conclusion as to use across a class of goods, I agree with the Assistant Registrar (at 2078) that ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The relevant date for the exercise of the discretion
Case: Totev v Sfar [2008] FCAFC 35 ; (2008) 167 FCR 193
Outcome: cited
appeal from a decision of the Registrar of Trade Marks is in the Court's original jurisdiction. None of the powers of the Court under s 197 of the Act affect the s 92 application, which goes to the jurisdiction of the Court to hear and determine an application for removal of a trade mark. The hearing is a "hearing de novo" where the judge reviewing the decision of the Registrar begins afresh and exercises any discretion exercised by the Registrar. The parties may adduce evidence as provided for in s 197 of the Act which evidence may include evidence not before the Registrar (see discussion in Totev v Sfar [2008] FCAFC 35 ; (2008) 167 FCR 193 by Emmett J at [12] and [13]; Blount at 59).
Case: Unilever Australia Ltd v Karounos (2001) 113 FCR 322
Outcome: followed
in the demand, Pioneer KK sought generally to prevent Pioneer Computers from any use of the mark PIONEER and demanded a complete cessation of the use by Pioneer Computers of any mark which is substantially identical with or deceptively similar to "the Pioneer Trade Mark". The allegation of infringement of Pioneer KK's registered marks was general and not restricted to the removal goods and the removal services. A general allegation was sufficient in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company (1989) 14 IPR 75 for Gummow J (at 77) and in Unilever Australia Ltd v Karounos (2001) 113 FCR 322 for Hill J (at [35]) to find that the recipient of the allegation was a person aggrieved in respect of all of the goods/classes for which the relevant trade marks were registered.
Case: Amcor Ltd v Construction, Forestry, Mining and Energy Union [2005] HCA 10 ; (2005) 214 ALR 56
Outcome: cited
Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: Amcor Ltd v Construction, Forestry, Mining and Energy Union [2003] FCAFC 57
Outcome: cited
Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Ardmona Foods Ltd [2006] FCA 1039
Outcome: cited
Thirdly, REX's submission ignores the express terms of the statutory instrument the Certified Agreement which contains a specified " Dispute Resolution Procedure " (cl 34) not dissimilar to that invoked in Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Ardmona Foods Ltd [2006] FCA 1039 at [44] . The existence of the specified " Dispute Resolution Procedure " runs directly counter to the contention that Mr Clarke was limited to commencing proceedings by way of counterclaim and limited to relief under Pt VIII of the Workplace Relations Act. 44 Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Nestle Australia Limited (2005) 146 IR 379
Outcome: referred to
The issue for her Honour to determine was whether at the time the proceeding was instituted it had " no real prospects of success, or was doomed to failure ". That is required to be determined as a matter of objective fact: Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Nestle Australia Limited (2005) 146 IR 379 at [4] citing Spotless Services Australia Ltd v Marsh SDP [2004] FCAFC 155 at [13] .
Case: ACTEW Corporation Ltd v Pangallo [2002] FCAFC 325 ; (2002) 127 FCR 1
Outcome: referred to
Secondly, the decisions of Josephson v Walker [1914] HCA 68 ; (1914) 18 CLR 691; Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437 and ACTEW Corporation Ltd v Pangallo [2002] FCAFC 325 ; (2002) 127 FCR 1 relied upon by REX do not support the submission that Mr Clarke was limited to relief under Pt VIII of the Workplace Relations Act and, in particular, was required to commence any proceedings by way of counterclaim. Each of the decisions is authority for the proposition that the remedy provided by the Workplace Relations Act for breach of a statutory instrument (including a certified agreement) (s 178) is exclusive: Josephson at 701; Gordonstone at 441 and ACTEW at 18. That proposition is irrelevant to the disposition of this appeal. Neither the Magistrates' Court nor this Court was required to, or asked to, consider a breach of the Certified Agreement or to make a declaration of right in relation to it.
Case: Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410
Outcome: cited
Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: Commonwealth Bank of Australia v Finance Sector Union of Australia (2007) 157 FCR 329
Outcome: referred to
As I have noted earlier, Div 7 of Pt VIB provides that a certified agreement can only be varied by one of the means specified in s 170MD(7). One of these methods is in writing by agreement between the employer and the AFAP: s 170MD(1). However, even then, any variation has no effect unless the Commission approves it (s 170MD(2)) and the Commission can not approve the variation unless it is satisfied that the variation passes the no-disadvantage test: s 170MD(3)(b); see also Commonwealth Bank of Australia v Finance Sector Union of Australia (2007) 157 FCR 329 at [172]-[174] and [228].
Case: Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437
Outcome: referred to
Secondly, the decisions of Josephson v Walker [1914] HCA 68 ; (1914) 18 CLR 691; Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437 and ACTEW Corporation Ltd v Pangallo [2002] FCAFC 325 ; (2002) 127 FCR 1 relied upon by REX do not support the submission that Mr Clarke was limited to relief under Pt VIII of the Workplace Relations Act and, in particular, was required to commence any proceedings by way of counterclaim. Each of the decisions is authority for the proposition that the remedy provided by the Workplace Relations Act for breach of a statutory instrument (including a certified agreement) (s 178) is exclusive: Josephson at 701; Gordonstone at 441 and ACTEW at 18. That proposition is irrelevant to the disposition of this appeal. Neither the Magistrates' Court nor this Court was required to, or asked to, consider a breach of the Certified Agreement or to make a declaration of right in relation to it.
Case: Council of Kangan Batman Institute of Technology and Further Education v Australian Industrial Relations Commission [2006] FCAFC 199 ; (2006) 156 FCR 275
Outcome: applied
The principles relevant to the application of this section were summarised by the Full Court in Council of Kangan Batman Institute of Technology and Further Education v Australian Industrial Relations Commission [2006] FCAFC 199 ; (2006) 156 FCR 275 at [60] in the following terms: "The question therefore arises whether, as contended by counsel for Ms Hart, the plaintiff instituted the proceeding vexatiously or without reasonable cause. A party does not institute proceedings without reasonable cause merely because that party fails in the argument put to the Court: R v Moore; Ex parte Federated Miscellaneous Workers' Union of Australia [1978] HCA 51 ; (1978) 140 CLR 470 per Gibbs J at 473. The section reflects a policy of protecting a party instituting proceedings from liability for costs, but that protection may be lost. Although costs will rarely be awarded under the section and exceptional circumstances are required to justify the making of such an order (see Heidt v Chrysler Australia Ltd (1976) 26 FLR 257; 13 ALR 365 per Northrop J), a proceeding will be instituted without reasonable cause if it has no real prospects of success, or was doomed to failure: see Kanan v Australian Postal and Telecommunications Union (1992) 43 IR 257 per Wilcox J; see also Bostik (Australia) Pty Ltd v Gorgevski (No 2) (1992) 36 FCR 439; and Nilsen v Loyal Orange Trust (1997) 76 IR 180." 63 As the Full Court said in Kangan " at [63] " [i]t is a matter of judgment, sometimes of fine judgment, in all the circumstances of a particular case whether a proceeding is brought without reasonable cause . The phrase " vexatiously or without reasonable cause " was described by von Doussa J in Hatchett v Bowater Tutt Industries Pty Ltd (No.2) (1999) 28 FCR 324 at 327 as " similar to the one applied by a court on an application for the exercise of summary power to stay or strike out proceedings ".
Case: Hatchett v Bowater Tutt Industries Pty Ltd (No.2) (1999) 28 FCR 324
Outcome: applied
As the Full Court said in Kangan " at [63] " [i]t is a matter of judgment, sometimes of fine judgment, in all the circumstances of a particular case whether a proceeding is brought without reasonable cause . The phrase " vexatiously or without reasonable cause " was described by von Doussa J in Hatchett v Bowater Tutt Industries Pty Ltd (No.2) (1999) 28 FCR 324 at 327 as " similar to the one applied by a court on an application for the exercise of summary power to stay or strike out proceedings ". 64 In the present case, I have not been provided with the material (if any) provided to her Honour in support of the application for costs or with her Honour's reasons for decision. In any event the question remains whether, objectively determined, when the proceeding was instituted it had no real prospects of success or was doomed to failure. In other words, was the claim by REX for recovery of the Training Bond " so obviously untenable that it [could] not possibly succeed", or "manifestly groundless" or "bad beyond argument ": Hatchett at 327.
Case: Kidd v Savage River Mines (1984) 6 FCR 398
Outcome: cited
Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: R v Spicer; Ex parte Truth and Sportsman Ltd [1957] HCA 38 ; (1957) 98 CLR 48
Outcome: cited
The phrase " matter arising under this Act " is not to be given a narrow meaning and, in this context, extends to include whether or not the Certified Agreement rendered the Training Bond unenforceable so as to prevent REX recovering the $7,500: see Transport Workers' Union of Australia v Graham Meyrick Lee [1998] FCA 756 citing Dixon CJ in R v Spicer; Ex parte Truth and Sportsman Ltd [1957] HCA 38 ; (1957) 98 CLR 48 at 53. The view that the phrase " matter arising under this Act " extends to include the issues in this appeal is reinforced by other provisions of the Workplace Relations Act including, but not limited to, s 413A in Division 1 of Part XIV that the Court may give an interpretation of a certified agreement on application by the Minister, an organisation or person bound by the certified agreement or a person whose employment is subject to the certified agreement.
Case: Spotless Services Australia Limited v Marsh SDP [2004] FCAFC 155
Outcome: cited
The issue for her Honour to determine was whether at the time the proceeding was instituted it had " no real prospects of success, or was doomed to failure ". That is required to be determined as a matter of objective fact: Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Nestle Australia Limited (2005) 146 IR 379 at [4] citing Spotless Services Australia Ltd v Marsh SDP [2004] FCAFC 155 at [13] .
Case: Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250
Outcome: cited
Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.
Case: Transport Workers' Union of Australia v Graham Meyrick Lee [1998] FCA 756
Outcome: referred to
The phrase " matter arising under this Act " is not to be given a narrow meaning and, in this context, extends to include whether or not the Certified Agreement rendered the Training Bond unenforceable so as to prevent REX recovering the $7,500: see Transport Workers' Union of Australia v Graham Meyrick Lee [1998] FCA 756 citing Dixon CJ in R v Spicer; Ex parte Truth and Sportsman Ltd [1957] HCA 38 ; (1957) 98 CLR 48 at 53. The view that the phrase " matter arising under this Act " extends to include the issues in this appeal is reinforced by other provisions of the Workplace Relations Act including, but not limited to, s 413A in Division 1 of Part XIV that the Court may give an interpretation of a certified agreement on application by the Minister, an organisation or person bound by the certified agreement or a person whose employment is subject to the certified agreement.
Case: United Firefighters' Union of Australia v Country Fire Authority [2007] FCA 853
Outcome: distinguished
In this context, REX's reliance upon two further decisions was misplaced. In United Firefighters' Union of Australia v Country Fire Authority [2007] FCA 853 esp at [32], the Court considered the effect of an act done in breach of particular clauses of the relevant award and the relevant certified agreement. As I have said, this appeal was not concerned with an act done in breach of the Certified Agreement. The issue considered by Gray J did not arise in these proceedings.