mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: The Turakina (1998) 154 ALR 666
Outcome: distinguished
second question, whether termination was effected, gives rise to several difficult issues. The first is whether a notice of termination will bring the charter to an end or whether the charter remains on foot until the vessel is repossessed. Unfortunately this is still a controversial topic. In The Turakina (1998) 154 ALR 666, Tamberlin J held that a demise charter, under which possession and control of the ship had been given to the charterer, could not be terminated by notice alone. He said termination would only occur when the owner retook possession of the ship. In The Rangiora [2000] 1 Lloyd's Rep 36, the New Zealand High Court followed that decision, stating that the principle was a rule of the common law. Nonetheless, there is a view that the rule established in The Turakina may be avoided by careful drafting. In CMC (Australia) Pty Ltd v Ship 'Socofl Stream' [1999] FCA 1419 ; (1999) 95 FCR 403 it was held that the question whether a demise charter could be terminated without repossession depended upon the terms of the charterparty. The judge, Moore J, said (at 419): "[I]t is necessary to ascertain from the terms of the charterparty whether the continuing physical possession of a vessel by the charterer (pending the taking of physical possession by the owner either by redelivery or some other means) is co-extensive with continuing possession and absolute control of the vessel of the type characteristic of a demise charter." He went on to say (at 520) that it: "... is difficult to avoid a conclusion that if a charterparty expressly provided for its termination and the power to terminate was exercised, then the charterer ceased to be a demise charterer from the time of termination at least in the absence of provisions in the charterparty that suggested some other result."
Case: Kimberley Mineral Holdings Pty Ltd (In Liq) v McEwan [1980] 1 NSWLR 210
Outcome: cited
The requirement of necessity in O 15 r 15 may well find its place in the understanding of what is "disproportionate" for the purposes of the Civil Procedure Rules. In Kimberley Mineral Holdings Pty Ltd (In Liq) v McEwan [1980] 1 NSWLR 210 the Court of Appeal of New South Wales considered the operation of Pt 23 r 10(1) of the Supreme Court Rules (NSW). That conferred upon the Supreme Court a discretion to order the production of documents set out in the list of documents filed by a party save for those privileged from production. In the joint judgment of Hope and Glass JJA their Honours said that (at 215): '... there are grounds of objection in relation to the production of documents for inspection which may properly be taken other than grounds based on privilege. Without suggesting that that is the only purpose for the use of the word "may" in r 10, it would, nonetheless seem to provide one basis for that use.' Moffitt P agreed with the joint judgment and emphasised the court's discretion to adapt its orders to the exigencies of the case particularly where large quantities of documents are concerned (213). 17 Davies J in Holmes v Deputy Federal Commissioner of Taxation [1988] 2 ATC 4010 referred to O 15 r 15 as a rule which (at 4018): '... emphasises the principle which was clearly stated in Kimberley Mineral Holdings Ltd (In Liq) v McEwan [1980] 1 NSWLR 210, that a court's powers with respect to discovery and inspection are discretionary and ought to be exercised to prevent abuse of its process.'
Case: Holmes v Deputy Federal Commission of Taxation [1988] 2 ATC 4010
Outcome: cited
Davies J in Holmes v Deputy Federal Commissioner of Taxation [1988] 2 ATC 4010 referred to O 15 r 15 as a rule which (at 4018): '... emphasises the principle which was clearly stated in Kimberley Mineral Holdings Ltd (In Liq) v McEwan [1980] 1 NSWLR 210, that a court's powers with respect to discovery and inspection are discretionary and ought to be exercised to prevent abuse of its process.'
Case: Trade Practices Commission v CC (New South Wales) Pty Ltd (1995) 58 FCR 426
Outcome: cited
In Trade Practices Commission v CC (New South Wales) Pty Ltd (1995) 58 FCR 426 Lindgren J said that O 15 r 15 requires that the Court to be satisfied that an order of the kind referred to in that rule is, at the time when the order is made, necessary "in the interests of a fair trial". He cited Percy v General Motors-Holden's Pty Ltd [1975] 1 NSWLR 289 at 292. He also referred to Boyle v Downes [1979] 1 NSWLR 192 dealing with a similarly expressed constraint in the Supreme Court Rules 1970 (NSW) relating to interrogatories. The criterion adopted in the latter case was whether the order sought was "reasonably necessary for the disposing fairly of the cause or matter". Lindgren J said (at 437): 'The notion of the "interests of a fair trial" and of the "fair disposition of a case" encompasses, in my view, the opening up of a train of inquiry of the kind referred to above which is part of the proper function of discovery. ' His Honour was referring to discovery rather than the production of discovered documents. Nevertheless, O 15 r 15 applies the same criterion to orders for production of documents. It was so applied by Branson J in Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1045 in which her Honour said (at [9]): '... it is clear that the power of the Court to order that a discovered document be produced for inspection by another party is a discretionary power (see O 15 r 11).' And added (at [9]): 'What is "necessary" within the meaning of O 15 r 15 is that which is reasonably necessary in the interests of a fair trial and of the fair disposition of the case...' She cited Lindgren J in Trade Practices Commission v CC (New South Wales) Pty Ltd.
Case: Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1045
Outcome: cited
In Trade Practices Commission v CC (New South Wales) Pty Ltd (1995) 58 FCR 426 Lindgren J said that O 15 r 15 requires that the Court to be satisfied that an order of the kind referred to in that rule is, at the time when the order is made, necessary "in the interests of a fair trial". He cited Percy v General Motors-Holden's Pty Ltd [1975] 1 NSWLR 289 at 292. He also referred to Boyle v Downes [1979] 1 NSWLR 192 dealing with a similarly expressed constraint in the Supreme Court Rules 1970 (NSW) relating to interrogatories. The criterion adopted in the latter case was whether the order sought was "reasonably necessary for the disposing fairly of the cause or matter". Lindgren J said (at 437): 'The notion of the "interests of a fair trial" and of the "fair disposition of a case" encompasses, in my view, the opening up of a train of inquiry of the kind referred to above which is part of the proper function of discovery. ' His Honour was referring to discovery rather than the production of discovered documents. Nevertheless, O 15 r 15 applies the same criterion to orders for production of documents. It was so applied by Branson J in Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1045 in which her Honour said (at [9]): '... it is clear that the power of the Court to order that a discovered document be produced for inspection by another party is a discretionary power (see O 15 r 11).' And added (at [9]): 'What is "necessary" within the meaning of O 15 r 15 is that which is reasonably necessary in the interests of a fair trial and of the fair disposition of the case...' She cited Lindgren J in Trade Practices Commission v CC (New South Wales) Pty Ltd.
Case: Australian Consulting and Training Pty Ltd v Tiltform Pty Ltd [2001] FCA 1072
Outcome: referred to
Counsel for Racing and Wagering submitted that, because the asserted breach of the licence agreement is at its heart referable to copying, that the language in the letters to which I have referred and in particular the passage from the letter of 12 September 2006, which I have set out above, can arguably, reasonably be read as embracing a threat for the purposes of s 202 of the Act . Racing and Wagering referred to the judgment of Mansfield J in Australian Consulting and Training Pty Ltd v Tiltform Pty Ltd [2001] FCA 1072. His Honour was there considering amongst other things and relevantly for the purposes of the motion before me, the question of whether a pleading was capable of making out threats of infringement within the meaning of s 128(1) of the Patents Act 1990 (Cth) (' Patents Act ' ).
Case: Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517
Outcome: cited
In relation to the claim of the applicant in para 4 of the Amended Application although it is open to the Court to order a change of corporate name in appropriate circumstances (as, for example, was ordered by the Court in Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517) I do not consider these appropriate circumstances. As I have already explained, in my view the undertaking of the first respondent and the order I propose to make adequately address issues raised by the applicant.
Case: Angove's Pty Ltd v Johnson and Eclar Investments Pty Ltd (1981) 55 FLR 1
Outcome: cited
Further, it is clear that in considering whether the competing marks are substantially identical within s 120(1) of the Act a comparison must be undertaken of the registered trade mark and the whole of the respondent's mark, and not merely part of it: Angove's Pty Ltd v Johnson and Eclar Investments Pty Ltd (1981) 55 FLR 1 at 8. 32 As I noted earlier in this judgment, the applicant's registered trade mark is as follows: 33 The respondents use "bing" in a number of ways, including the following: and and and Bing and
Case: Angove's Pty Ltd v Johnson (1983) 66 FLR 216
Outcome: cited
The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1 at 11.
Case: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22
Outcome: cited
In addition to these principles, it is also clear that: &#8226; In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . &#8226; Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . &#8226; Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. &#8226; It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. &#8226; Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] .
Case: Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392
Outcome: cited
While the respective trade marks of both parties feature the word "bing" there is absolutely no evidence that in doing so the first respondent represented any relationship with the applicant, that the first respondent's service was in any way related to the products and services provided by the applicant, or that the first respondent's service had, for example, uses or benefits which it did not have. While not conclusive, I also consider that the substantial differences between the products and service offered by the applicant and the service offered by the first respondent militate against the application of s 53 (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392). 83 This finding is further supported by the absence of evidence before me that either the applicant or its products have a reputation from which the first respondent would be able to benefit (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392 ; Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626). Other than evidence of a small number of inquiries temporarily confusing the applicant with the first respondent, there is no evidence that the applicant or its products and service are sufficiently well-known that a substantial number of members of the public, or even a substantial number of members of those sections of the public which are likely to engage either with the applicant or respondent, would be misled in terms of ss 53(c) or 53 (d) TPA.
Case: Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: cited
The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)...(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
Case: British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289
Outcome: distinguished
In relation to the order sought by the applicant in para 5 of the Amended Application, namely that the first respondent transfer the registration of the domain name www.bing.com , I make the following observations: &#8226; The first respondent, apparently in good faith, acquired the domain name from the United States for the not inconsiderable sum of $US25,000. An order in the nature of that sought by the applicant, which would deprive the first respondent of that asset, is not lightly entertained by the Court. &#8226; While it may be commonplace for companies in Australia to use a ".com" or ".com.au" domain name, the first respondent's domain name is registered in the United States. An order that the first respondent transfer an international domain name to remedy infringement of an Australian trade mark which trade mark is territorial in its operation would in my view require extraordinary circumstances. &#8226; The applicant has relied on a number of cases in support of its application for an order that the first respondent be ordered to transfer the domain name, namely the English Court of Appeal case British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289 and the High Court of New Zealand case Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661. Further, Hill J ordered transfer of a domain name in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408. However each of those cases involved cybersquatting, defined by The Australian Concise Oxford Dictionary as "the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit", and which practice is, as Hill J noted in CSR Ltd [2003] FCA 279 ; 128 FCR 408 , conduct somewhat suggestive of criminality and fraud. The facts in each of those cases were very different from those in the case before me.
Case: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359
Outcome: cited
In addition to these principles, it is also clear that: &#8226; In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . &#8226; Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . &#8226; Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. &#8226; It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. &#8226; Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] .
Case: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45
Outcome: cited
In addition to these principles, it is also clear that: &#8226; In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . &#8226; Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . &#8226; Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. &#8226; It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. &#8226; Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] .