mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Knight v Beyond Properties Pty Limited [2007] FCAFC 170 ; (2007) 242 ALR 586 at 597
Outcome: cited
It is appropriate for the court to approach the question of whether s 52 has been contravened by answering the composite question whether the defendant's conduct was misleading or deceptive in relation to the ordinary and reasonable consumer of rice cakes or corn cakes purchasing them in supermarkets: see Knight v Beyond Properties Pty Limited [2007] FCAFC 170 ; (2007) 242 ALR 586 at 597 [51] per French, Tamberlin JJ and myself. 77 The Court must be cautious against finding fraud merely because there has been an imitation of another's goods, get-up, method or trading or trading style: Cadbury Schweppes [1980] 2 NSWLR at 861 [33] per Lord Scarman. In that case the trial judge had found that the defendant's deliberate purpose was to take advantage of the plaintiff's efforts to develop its product. The plaintiff had launched its product with mass media advertising at great expense prior to the defendant's product being put on the market. He found that the intention was not to pass off the defendant's goods as those of the plaintiff, but to take advantage of the market developed by the advertising campaign which the plaintiff had initiated. The Privy Council upheld findings that there had been no deception because the goods had been sufficiently distinguished. The plaintiff had needed to show that in doing so the defendant infringed the plaintiff's intangible property rights in the goodwill attaching to its product: Cadbury Schweppes [1980] 2 NSWLR at 861 [35]. Their Lordships upheld the trial judge's finding that although the two cans in which the rival traders marketed their soft drink were of the same size (a stock size and shape in the trade) and similar colour, the defendant had sufficiently distinguished its product. The judge found it could readily be seen that they were different: Cadbury Schweppes [1980] 2 NSWLR at 862-863 [42]. 78 Ricegrowers argued that the collection in its packaging of obvious features in an attractive way not thought of before should be seen as a new idea which created a valuable resource to the person who conceived it, just as might be the case with an original invention for which a patent was claimed. It asserted that, in effect, Real Foods had produced such similar packaging for its three new flavoured corn thins that their get-up would convey the pleaded representations to an ordinary reasonable consumer and thus pass off Real Foods' goods as Ricegrowers'.
Case: Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523
Outcome: cited
Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford &amp; Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539.
Case: Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73 ; (1984) 156 CLR 414
Outcome: cited
Their Lordships went on, through Lord Scarman, to say that competition had to remain free and was safeguarded by the necessity for the plaintiff to prove that he has built up an intangible property right which he seeks to protect in the action: Cadbury Schweppes [1980] 2 NSWLR at 858 [23]: see too Moorgate Tobacco Co Ltd v Philip Morris Ltd [No 2] [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). In ConAgra 33 FCR at 356 Gummow J said: But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, "the classical trinity" does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interest damaged, and the significance of fraud in the making of the misrepresentation.
Case: Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191
Outcome: cited
There is no reason to conclude that Ricegrowers is entitled to a monopoly on colours and flow packs for the packaging of corn or rice cakes with the features of those on Real Foods' packaging complained of. Here, Real Foods adopted colours and printed flow pack packaging which were in common use in the savoury biscuits category. Just because Ricegrowers was first to use these in the corn cake and rice cake subcategories did not entitle it to a monopoly of their use. Real Foods took sufficient steps, in all the circumstances, to distinguish its flavoured "Corn Thins" from the three conflicting products of SunRice: cp: Campomar 202 CLR at 84 [99]; Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1981) 149 CLR 191 at 200 per Gibbs CJ; Office Cleaning 63 RPC at 43. The ordinary reasonable consumer was used to seeing the corn and rice cakes products of the parties displayed standing up in the shelves. The new packaging for the new "Corn Thins" was presented as part of the family or group of products distinct from the SunRice family or group. When one of the "Corn Thins" flavoured corn cakes varieties was placed within the SunRice product display, as is shown in some photographs in evidence, they look noticeably out of place on the shelves and in the wrong "family" or group. I am of opinion that the ordinary reasonable consumer would notice this and realise the products were not related, even if they wondered why the supermarket had displayed them in this way: Hornsby Building Information Centre 140 CLR at 229; Cadbury Schweppes [1980] 2 NSWLR at 858 [21].
Case: Payton &amp; Co Ltd v Snelling Lampard &amp; Co Ltd (1899) 17 RPC 48
Outcome: referred to
O'Connor J found that the question for determination was whether the defendant had made the difference of manufacture and ownership clear on the face of the package when adopting cartons of the same material, colour, shape and size of the plaintiff's packaging. He applied what Lindley MR said in Payton &amp; Co Ltd v Snelling Lampard &amp; Co Ltd (1899) 17 RPC 48 at 52. Lindley MR discussed the situation where goods themselves resembled one another, in that case coffee, and were packaged similarly. He said that the issue was not that the defendant's goods or get-up was like the plaintiff's by reason of the features common to them and others. Rather, in a passage cited with approval by O'Connor J in Burford &amp; Sons 8 CLR at 217, in order to succeed in a passing off action, the plaintiff: ...must make out that the defendant's are like his by reason of something peculiar to him, and by reason of the defendant having adopted some mark, or device, or label, or something of that kind, which distinguishes the plaintiff's from other goods which have, like his, the features common to the trade. Unless the plaintiff can bring his case up to that, he fails. 63 Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford &amp; Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 106 Ricegrowers has not demonstrated that Real Foods' use of its packaging was calculated or likely to lead the ordinary reasonable consumer to believe that any of the three corn thin flavoured corn cakes were made by or in some way associated with Ricegrowers or its SunRice products (the sour cream and chives, or sea salt and balsamic vinegar thin flavoured rice cakes or the nacho cheese flavoured corn cake): Darrell Lea 159 FCR at 418-419 [96]-[99]; Office Cleaning 63 RPC at 42. The ordinary reasonable consumer would not believe that, to the extent that the packaging of the flavoured Real Foods products was similar, any of those packages emanated from or were in any way associated with Ricegrowers or SunRice: Campomar 202 CLR at 88-89 [109]-[110]; Cadbury Schweppes [1980] 2 NSWLR at 858 [22]; Borden [1990] 1 WLR at 506F-G; Payton 17 RPC at 51; see too Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 470 at [88] per Heerey J.
Case: Payton &amp; Co Ltd v Snelling Lampard &amp; Co Ltd [1901] AC 308
Outcome: cited
Thus, the mere fact that a defendant makes some distinction on the packaging from similar packaging used by or copied from the plaintiff may or may not be sufficient to distinguish the goods from those of or associated with the plaintiff: Burford &amp; Sons [1909] HCA 83 ; 8 CLR 212 ; Payton 17 RPC at 56; affirmed [1901] AC 308 ; Borden [1990] 1 WLR at 507H-508B per Lord Oliver. Lord Oliver said that it was important in such a case for the defendant to see that the goods could really be distinguished from those of or associated with the plaintiff. But, he said the question was how far the defendants' trademark bears such a resemblance to that of the plaintiff, as to be calculated to deceive incautious purchasers: Borden [1990] 1 WLR at 509B citing Lord Kingsdown in Leather Cloth Co Ltd v American Leather Cloth Co Ltd [1865] EngR 199 ; (1865) 11 H L Cas 523 at 539. 70 In Payton [1901] AC at 311 Lord Macnaghten said that the evidence of witnesses as to whether a customer would be likely to be deceived was, not a matter for the witnesses, but for the judge. He said, in a passage approved by Dixon CJ, Webb, Kitto and Taylor JJ in Scott v Numurkah Corporation [1954] HCA 14 ; (1954) 91 CLR 300 at 313: The judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own independent judgment to any witness.
Case: Scott v Numurkah Corporation [1954] HCA 14 ; (1954) 91 CLR 300
Outcome: cited
In Payton [1901] AC at 311 Lord Macnaghten said that the evidence of witnesses as to whether a customer would be likely to be deceived was, not a matter for the witnesses, but for the judge. He said, in a passage approved by Dixon CJ, Webb, Kitto and Taylor JJ in Scott v Numurkah Corporation [1954] HCA 14 ; (1954) 91 CLR 300 at 313: The judge, looking at the exhibits before him and also paying due attention to the evidence adduced, must not surrender his own independent judgment to any witness.
Case: Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354
Outcome: cited
However, their Honours concluded that in the end it was still a question of fact for the court to determine whether, indeed, there had been established a reasonable probability of deception or confusion from the use, in that case, of a trademark or device. They held that the main issue in the case was a question which was never susceptible of much discussion. They said ( Australian Woollen Mills 58 CLR at 659; see too Burford &amp; Sons 8 CLR at 220 per O'Connor J; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 389 [121] per Weinberg and Dowsett JJ, Branson J agreeing; Office Cleaning Services Ltd v Westminster Window &amp; General Cleaners Ltd (1946) 63 RPC 39 at 40 per Lord Simonds, with whom Lords Wright, Porter and Goddard agreed): It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.
Case: Taco Co of Australian Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Outcome: cited
In these proceedings SunRice seeks only equitable relief in respect of the claim for passing off; it has abandoned any claim for damages and seeks only an account and injunctive relief. Thus, the proceedings for passing off seek a remedy to protect against injury to the goodwill built up by the activities of SunRice: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45 at 88 [108] per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ. And, as their Honours pointed out, the action based on a contravention of s 52 is designed to protect consumers. Whether or not conduct amounts to a representation is a question of fact to be decided by considering what was said, written, and done against the background of all surrounding circumstances: see Campomar 202 CLR at 84 [100], citing Taco Co of Australian Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202 per Deane and Fitzgerald JJ.
Case: Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361
Outcome: cited
Lord Parker identified the basis of a passing off action as a false representation by the defendant that his goods were the plaintiff's. In Campomar 202 CLR at 88-89 at [109]-[110] the High Court recognised that the range of the defendant's conduct which could constitute passing off included inducing consumers to believe that the defendant's goods or services had an association, quality or endorsement which belonged, or would belong, to the goods or services of or associated with the plaintiff. As Lord Parker recognised, relevantly here, the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the get-up in question, impliedly represents the defendant's goods to be goods of the plaintiff or associated with the plaintiff, whether generally or in respect of a particular class or quality. In other words, the question is whether the defendant's use of the get-up is calculated to deceive. He pointed out that it would be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on: Spalding 84 LJ Ch at 450; see too Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369-370 per Beaumont, Branson and Lindgren JJ; ConAgra 33 FCR at 356 per Gummow J.
Case: Alister v R (1984) 154 CLR 404
Outcome: cited
is also clear that although a mere "fishing" expedition can never justify the issue of subpoenas, it may be enough that it appears to be "on the cards" that the documents will materially assist the applicant: Alister v R (1984) 154 CLR 404 ; cf R v Saleam [1999] NSWCCA 86 at [11] .
Case: Bailey v Beagle Management Pty Ltd [2001] FCA 60 ; (2001) 105 FCR 136
Outcome: cited
is common ground that a subpoena may be issued in respect of an interlocutory application, and indeed this is made clear by such cases as Bailey v Beagle Management Pty Ltd [2001] FCA 60 ; (2001) 105 FCR 136 (subpoena issued pursuant to a security for costs application by the respondent to produce standard financial documents of a corporate applicant) and Dorajay Pty Ltd v Aristocrat Leisure Ltd [2005] FCA 588 (subpoena issued relating to a notice of motion pursuant to s 33N(1) Federal Court of Australia Act 1976 (Cth)). Consideration
Case: Dorajay Pty Ltd v Aristocrat Leisure Ltd [2005] FCA 588
Outcome: cited
is common ground that a subpoena may be issued in respect of an interlocutory application, and indeed this is made clear by such cases as Bailey v Beagle Management Pty Ltd [2001] FCA 60 ; (2001) 105 FCR 136 (subpoena issued pursuant to a security for costs application by the respondent to produce standard financial documents of a corporate applicant) and Dorajay Pty Ltd v Aristocrat Leisure Ltd [2005] FCA 588 (subpoena issued relating to a notice of motion pursuant to s 33N(1) Federal Court of Australia Act 1976 (Cth)). Consideration
Case: Hennessy v Wright (No 2) (1890) 24 QBD 445
Outcome: followed
law is clear that a subpoena cannot issue to facilitate "fishing" by a party. Of particular relevance in the circumstances of this case are comments of Jordan CJ in Small (1938) 38 SR (NSW) 564 at 575 where his Honour observed: In the absence of special circumstances... A party is no more entitled to use a subpoena duces tecum than he is a summons for interrogatories, for the purpose of "fishing", i.e. endeavouring, not to obtain evidence to support his case but to discover whether he has a case at all : Hennessy v Wright ... (emphasis added) Indeed it is useful to also note comments of Lord Esher MR in Hennessy v Wright (No 2) (1890) 24 QBD 445 at 448 where his Lordship said in the context of interrogatories and "fishing" by the plaintiff in that case: In other words, the plaintiff wishes to maintain his questions, and to insist upon answers to them, in order that he may find out something of which he knows nothing now, which might enable him to make a case of which he has no knowledge at present... Significantly, the key issue arising in the notice of motion filed 17 November 2008 is whether Habitare Pty Ltd and other parties should be joined as respondents to the substantive proceedings. The applicant candidly concedes that the purpose of the subpoena is to obtain further evidence: On balance, I consider that the applicant in this case has established that the purpose of the subpoenas is to obtain further evidence relevant to the notice of motion filed 17 November 2008, that this is a legitimate forensic purpose, and that the claim cannot be categorised as "fishing". I form this view because: Accordingly, I consider that the applicant has demonstrated a legitimate forensic purpose for seeking issue of subpoenas in relation to the documents sought, and that the orders sought by the notice of motion before the Court cannot be characterised as "fishing". "On the cards" Is it "on the cards" that the documentation sought by the applicant will materially assist the applicant's case in relation to the notice of motion filed 17 November 2008?
Case: Hughes v WA Cricket Association (1986) 66 ALR 541
Outcome: cited
practice whereby the Court gives leave for subpoenas to be issued against a third party pursuant to O 27A has survived the introduction of O 15A Federal Court Rules providing for orders of the Court relating to non-party discovery. In relation to a third party, it is clear that a subpoena duces tecum may be directed to a third party prior to trial: where it appears to the court to be in the interests of justice and the proper and expeditious conduct of a proceeding that a person produce documents before the date of hearing of the application. ( Hughes v WA Cricket Association (1986) 66 ALR 541 at 543; cf P Dawson Nominees Pty Ltd v Multiplex Ltd (2007) 64 ACSR 53 at 57 [23])
Case: McIlwain v Ramsey Food Packaging Pty Ltd [2005] FCA 1233
Outcome: followed
governing the grant of leave by the Court to issue subpoenas were considered in detail by Greenwood J in McIlwain v Ramsey Food Packaging Pty Ltd [2005] FCA 1233. In that case his Honour observed, so far as is relevant in these proceedings, that:
Case: P Dawson Nominees Pty Ltd v Multiplex Ltd (2007) 64 ACSR 53
Outcome: cited
practice whereby the Court gives leave for subpoenas to be issued against a third party pursuant to O 27A has survived the introduction of O 15A Federal Court Rules providing for orders of the Court relating to non-party discovery. In relation to a third party, it is clear that a subpoena duces tecum may be directed to a third party prior to trial: where it appears to the court to be in the interests of justice and the proper and expeditious conduct of a proceeding that a person produce documents before the date of hearing of the application. ( Hughes v WA Cricket Association (1986) 66 ALR 541 at 543; cf P Dawson Nominees Pty Ltd v Multiplex Ltd (2007) 64 ACSR 53 at 57 [23])
Case: R v Saleam [1999] NSWCCA 86
Outcome: cited
is also clear that although a mere "fishing" expedition can never justify the issue of subpoenas, it may be enough that it appears to be "on the cards" that the documents will materially assist the applicant: Alister v R (1984) 154 CLR 404 ; cf R v Saleam [1999] NSWCCA 86 at [11] .
Case: The Commissioner for Railways v Small (1938) 38 SR (NSW) 564
Outcome: followed
a third party however a subpoena is not to be used as a substitute for discovery. As Jordan CJ observed in The Commissioner for Railways v Small (1938) 38 SR (NSW): A writ of subpoena duces tecum may be addressed to a stranger to the cause or to a party. If it be addressed to a stranger, it must specify with reasonable particularity the documents which are required to be produced. A subpoena duces tecum ought not to be issued to such a person requiring him to search for and produce all such documents as he may have in his possession or power relating to a particular subject matter. It is not legitimate to use a subpoena for the purpose of endeavouring to obtain what would be in effect discovery of documents against a person who, being a stranger, is not liable to make discovery. A stranger to the cause ought not to be required to go to trouble and perhaps to expense in ransacking his records and endeavouring to form a judgment as to whether any of his papers throw light on a dispute which is to be litigated upon issues of which he is presumably ignorant... (at 573) The law is clear that a subpoena cannot issue to facilitate "fishing" by a party. Of particular relevance in the circumstances of this case are comments of Jordan CJ in Small (1938) 38 SR (NSW) 564 at 575 where his Honour observed: In the absence of special circumstances... A party is no more entitled to use a subpoena duces tecum than he is a summons for interrogatories, for the purpose of "fishing", i.e. endeavouring, not to obtain evidence to support his case but to discover whether he has a case at all : Hennessy v Wright ... (emphasis added)
Case: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407
Outcome: applied
The context or setting in which a mark appears is an important consideration in determining whether it has been used as a trade mark: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 422 ( Shell ). 17 The key witnesses and evidence relied upon by the parties were: &#8226; Mr Melville Speers, who is director of World Brands Management Pty Ltd, the first cross-respondent, and two affidavits sworn by him on 21 September 2006 and 7 April 2008 &#8226; Mr Trenear, who is Managing Director of YD, and one affidavit sworn by him on 25 May 2007 &#8226; Mr Vickery, who is a consultant and director of DawVic Pty Ltd, Footwear Consultancy, and one affidavit sworn by him on 6 July 2007. With the exception of Mr Trenear, none of the witnesses was seriously challenged in cross examination. The applicants submit that elements of Mr Trenear's evidence were unreliable, but notwithstanding this I accept his evidence as a whole. 18 The relevant market is the buying and selling of shoes. It involves shoes similar to that expressed in the Shape Mark. Diesel's shoes are sold in stores such as Myer and David Jones amongst many other retail and chain 'youth' stores. Substantial sales of the shoes have been made over the past ten years. Mr Speers said 30,000 unit sales of the Wish (male) and Evelyn (female) styles of shoe, and 15,000 unit sales of the Kort (male) and Kortnay (female) styles of shoe, were made in that period.