mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Croker v Deputy Registrar of the High Court of Australia [2003] FCA 34
Outcome: referred to
It is also the position that, in seeking to apply the rules of court of the High Court to documents sought to be filed by an applicant which sought an exercise or purported to seek an exercise of the judicial power of the Court, a registrar, or deputy registrar as the case may be, is exercising the judicial power of the Court on its behalf and as such is acting judicially and not administratively: see, for example, Croker v Deputy Registrar of the High Court of Australia [2003] FCA 34 ; Gunter v Doogan [2003] FCA 667.
Case: Gunter v Doogan [2003] FCA 667
Outcome: referred to
It is also the position that, in seeking to apply the rules of court of the High Court to documents sought to be filed by an applicant which sought an exercise or purported to seek an exercise of the judicial power of the Court, a registrar, or deputy registrar as the case may be, is exercising the judicial power of the Court on its behalf and as such is acting judicially and not administratively: see, for example, Croker v Deputy Registrar of the High Court of Australia [2003] FCA 34 ; Gunter v Doogan [2003] FCA 667.
Case: Walsh v University of Technology, Sydney [2007] FCA 880
Outcome: considered
I have also had regard to the detailed judgment delivered in the proceedings previously brought by Mr Walsh where Buchanan J examined a statement of claim in relation to similar facts, albeit based on different causes of action, and ordered that it be struck out and the proceedings dismissed (see Walsh v University of Technology, Sydney [2007] FCA 880). In that decision, his Honour examined carefully the relevant authorities concerning the dismissal of proceedings, the adequacy of a statement of claim as a proper proceeding, and the necessary elements of a claim under the Trade Practices Act 1974 (Cth). There is no need to recite those principles here. While his Honour held in that case that the Court had jurisdiction because Mr Walsh had pleaded the Trade Practices Act 1974 (Cth), in the present case, and apparently as a consequence of his Honour's earlier decision, the draft statement of claim has been amended to exclude that claim with the result that it fails to incorporate a federal element, and as a consequence this Court has no jurisdiction. 6 Accordingly, I order that the proceedings brought by Mr Walsh be dismissed with costs. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate: Dated: 21 August 2007 Counsel for the Applicant: None Solicitor for the Applicant: None Counsel for the Respondent: Mr P. Brereton Solicitor for the Respondent: Minter Ellison Date of Hearing: 15 August 2007 Date of Judgment: 15 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1288.html
Case: Aristoc Ltd v Rysta [1945] AC 68
Outcome: cited
concept of a "trade mark" thus has both functional and formative aspects. It must be used "to distinguish" goods, that is "to indicate the origin of the goods to which it is applied": Aristoc Ltd v Rysta [1945] AC 68 at 96 (Lord MacMillan); and it must be capable of description as a "sign", which is defined in s 6 as: sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
Case: Burger King Corporation v Registrar of Trade Marks (The Whopper case) [1973] HCA 15 ; (1973) 128 CLR 417
Outcome: applied
parties were not in dispute about the applicable principles, only the application of those principles to the facts. The question whether a trade mark is inherently adapted to distinguish is directed at the nature of the trade mark itself and is not concerned with the mark's capability to distinguish arising from its actual or intended use: Burger King Corporation v Registrar of Trade Marks (The Whopper case) [1973] HCA 15 ; (1973) 128 CLR 417 ( Burger King ) at 424; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [83] (Lindgren J). A trade mark that is inherently adapted to distinguish goods is one that can "do the job of distinguishing without first educating the public that it is a trade mark": British Sugar plc v James Robertson &amp; Sons Ltd [1996] RPC 281 ( British Sugar ) at 306 (Jacob J); see also Austereo [2004] FCA 968 ; 61 IPR 257 at [48] (Finn J). Although in dissent on the ultimate outcome, Lindgren J observed in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [84] that: While inherent adaptation to distinguish requires attention to be focused on the mark itself, and is intended to stand in sharp contrast to a mark's capacity to distinguish arising from use, the notion of "the mark itself" does not exclude from consideration the nature of the range of goods within the class or classes in respect of which registration is sought, or the various ways in which the mark might, within the terms of the registration, be used in relation to those goods. Indeed, those matters must be taken into account. The application of this test, as French J observed at [49], is "largely a matter of evaluative judgment within the broad principles laid down by [the] authorities". The reference to "likelihood" by Kitto J in Clark was described by Gibbs J in Burger King 128 CLR at 425 as a reference to whether another trader "might", without improper motive, want to use the mark in relation to his or her goods: see also Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [33] (Wilcox J).
Case: Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130
Outcome: cited
J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning.
Case: Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505
Outcome: cited
of these chocolate boxes was purchased in May or June 2008, well after the priority date (16 April 2002). This raises a question about the acceptable use of this evidence. It is clear that the relevant date for assessing whether a trade mark is capable of distinguishing the goods for which it is used is the priority date: Austereo [2004] FCA 968 ; 61 IPR 257 at [30] . The parties both accepted that evidence of use by Guylian of the seahorse shape after the priority date is relevant for the purposes of s 41(5) of the Act, because it is open to draw rational inferences from such evidence as to whether the shape in fact had the required capacity to distinguish as at the priority date. That proposition was accepted by Finn J in Austereo , where his Honour referred to Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 and Burchett J's reference to actual events as being "capable of illuminating the probabilities already inherent in [a prior] situation". Although differing as to the weight such evidence should be given, the parties also appeared to accept more generally that evidence of events taking place after the priority date, whether that be the applicant's use of the mark itself or use of other similar or otherwise relevant shapes by rival traders, may be relevant to whether the seahorse shape is capable of distinguishing Guylian's goods. This was an appropriate course to take. In my view, evidence of what other traders were selling prior to, at or subsequent to the priority date has the ability to rationally affect, albeit with varying degrees of weight, the conclusion one might reach about the extent to which a mark is inherently adapted to distinguish under s 41(3) of the Act. As Kitto J said in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 ( Clark ) at 514: [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. In assessing as at the priority date the "likelihood" that other traders will behave in a certain way in the future, evidence of how they have in fact come to behave will be relevant, although close attention should be paid to whether such rival behaviour has been "actuated only by proper motives". In the absence of evidence of improper motive, however, it seems to me logical and appropriate that post priority date events should, where appropriate, be taken into account by decision makers in exercise of the "evaluative judgment" (see French J in Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [47] ) required under s 41(3).
Case: Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131
Outcome: cited
observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365.
Case: Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ; (2000) 47 IPR 579
Outcome: cited
Blount 83 FCR at 58C, Branson J took the view that the question under s 41(2) whether a mark is capable of distinguishing is "governed entirely" by subss 41(3) (6). Accordingly, her Honour considered that it is not the case, as might be expected from the terms of s 33, that the Registrar must accept an application if he or she is uncertain whether the mark is capable of distinguishing an applicant's goods. Her Honour's analysis of s 41 has been followed in a number of cases, including Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ; (2000) 47 IPR 579 ( Ocean Spray ) and Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd [2004] FCA 968 ; (2004) 61 IPR 257 ( Austereo ). Section 41(5) permits the registration of trade marks that are not, by their inherent qualities, sufficiently adapted to distinguish, but which have as at the priority date in fact acquired a capability to distinguish the relevant goods: see Austereo [2004] FCA 968 ; 61 IPR 257 ; see also Clark 111 CLR at 515; British Sugar [1996] RPC 281 at 306; Nestle [2006] FCA 782 ; 154 FCR 165 at [29] . In other words, s 41(5) recognises that marks which are insufficiently inherently adapted to distinguish may nevertheless by their use have become distinctive in the minds of consumers so that they will be able to "do the job of distinguishing" the applicant's goods, that is, they will in fact serve as a badge or an indicator of origin. Accordingly, under s 41(5) an applicant relying on use prior to the priority date will need to point to evidence that the mark has been used as a trade mark , so as to have acquired the requisite capability to distinguish the applicant's goods: see, in the context of s 41(6), Woolworths Ltd v BP Plc (No 2) [2006] FCAFC 132 ; (2006) 154 FCR 97 at [72] and [77] ( BP (No 2) ); Ocean Spray [2000] FCA 177 ; 47 IPR 579 at [38] - [41] , in particular [40]. Guylian's submissions
Case: Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599
Outcome: followed
J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning. Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable.
Case: Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525
Outcome: cited
Registrar submits that any trader using a seahorse shape simply to denote a seahorse should, in the absence of evidence to the contrary, be considered to be acting with proper motives for the purposes of the Clark test. The Registrar referred to both Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525 at [51] and [53], where Mansfield J referred to the "concept of a properly motivated trader" as including the use of a mark to denote a meaning that the mark might ordinarily possess, and Clarke 111 CLR at 517, where Kitto J identified an improper motive on the part of a rival trader as a "desire to get for themselves a benefit" from the applicant's reputation. Here, said the Registrar, there was no evidence at all, including any witness evidence, that traders now using a seahorse shape are acting with improper motives, for example to assert a connection between their goods and Guylian. There is also no evidence that Guylian has in any way objected to, or sought to restrain, the use by other traders of any similar seahorse shapes. Resolution
Case: Rejfek v McElroy [1965] HCA 46 ; (1965) 112 CLR 517
Outcome: cited
s 41(4) and Branson J's decision in Blount , with the presumption and French J's decision in Kenman Kandy , is not entirely free from difficulty. The matter is further complicated by the fact that the onus is reversed under s 41(5) (the Registrar must be "satisfied" that the mark does or will distinguish) and s 41(6) (the applicant must "establish" that the mark does distinguish). In its submissions, the Registrar accepts that the presumption applies in relation to s 41(3), but says that the use of the term "satisfied" in s 41(5) suggests that the presumption no longer applies once the inquiry moves to s 41(5). I agree. Sections 41(3)-(6) contemplate that there are degrees to which a mark might be inherently adapted to distinguish: see Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [82] (Lindgren J); Austereo [2004] FCA 968 ; 61 IPR 257 at [35] (Finn J). The ultimate question under s 41(3) is whether the mark is inherently adapted to a sufficient degree to conclude that it is "capable of distinguishing". In my view, the effect of the presumption of registrability on s 41(3) is that, in considering whether a mark is capable of distinguishing by reason of the "inherently adapted" criteria, it should be presumed that the mark is sufficiently adapted unless the Registrar is satisfied otherwise on the balance of probabilities. If the Registrar is otherwise satisfied, then he or she will be "unable to decide the question" (see s 41(4)) whether the mark is capable of distinguishing on the basis of any inherent adaptation alone, and must then proceed to consider s 41(5) or (6). Under those provisions, the presumption no longer has any operation, as the applicant is then required to either "satisfy" the Registrar (s 41(5)), or "establish" (s 41(6)), that the relevant criteria set out therein is met. As Branson J said in Blount 83 FCR at 56, referring to Rejfek v McElroy [1965] HCA 46 ; (1965) 112 CLR 517 at 521, a test of satisfaction requires the Registrar to "be persuaded of the matter according to the balance of probabilities".
Case: Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51
Outcome: cited
application of this test, as French J observed at [49], is "largely a matter of evaluative judgment within the broad principles laid down by [the] authorities". The reference to "likelihood" by Kitto J in Clark was described by Gibbs J in Burger King 128 CLR at 425 as a reference to whether another trader "might", without improper motive, want to use the mark in relation to his or her goods: see also Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [33] (Wilcox J). As I consider the shape is to some extent inherently adapted to distinguish, then s 41(5) is applicable. Section 41(5) involves a balancing exercise. With a view to deciding whether the mark does or will distinguish the goods as being Guylian's, the Court is required to consider, in combination, two specific matters: (1) the extent to which the mark is inherently adapted to distinguish, and (2) the use, or intended use, of the mark by Guylian (cf. Kitto J's approach in Clark 111 CLR at 513). The Registrar, and on this appeal the Court, must be "satisfied" that the mark does or will distinguish the goods as being Guylian's: pars 41(5)(b) and (c). It is a balancing exercise in that, for example, a mark that is inherently adapted only to a small degree is thereby likely to require greater evidence that it has been (or will be) used in such a way as to distinguish the relevant goods: see, eg, the approaches of Bennett J in Unilever Australia Ltd v Societe Des Produits Nestl&eacute; SA [2006] FCA 782 ; (2006) 154 FCR 165 ( Nestle ) at [57] and Wilcox J in Time Warner Entertainment Company LP v Stepsam Investments Pty Ltd [2003] FCA 1502 ; (2003) 134 FCR 51 at [42] .
Case: Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318
Outcome: cited
observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365. Gyles J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning.