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: applied
In Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 686, Aickin J recognised that a mark may be used to indicate a connection with an unidentified person. His Honour said that in those circumstances it must indicate a connection with both the proprietor and the user. 188 In my opinion, that requirement is not satisfied as a matter of fact because the evidence does not demonstrate any connection between the actual use of the mark and the registered proprietor, Shin-Sun. 189 Nevertheless, Shin-Sun contends that s 88(2)(c) is not enlivened because Nature's Hive's use of the mark was under the control of Shin-Sun so that Nature's Hive was an "authorised user" within the meaning of s 8(1) of the Act. 191 However, s 8(3) and s 8(4) do not limit the meaning of the expression "under the control of" the owner of the trade mark in s 8(1): see s 8(5). It is therefore necessary to deal with the question of whether Shin-Sun exercised quality or financial control over Nature's Hive's use of the mark, or whether it controlled the use in the broad sense referred to by Aickin J in Pioneer at 683. 192 There is no evidence before me that Shin-Sun has exercised quality control over the Health Plus products manufactured for Nature's Hive and supplied under Nature's Hive's packaging. 193 Indeed, in my view, the evidence establishes that Nature's Hive has the relevant obligations of quality control under the Therapeutic Goods Act . Nature's Hive is the sponsor and the certificate of listing for the goods imposes the obligation of quality control on Nature's Hive. 200 The "control" which is contemplated by s 8(5) would seem to be as wide as the "connection in the course of trade" to which Aickin J referred in Pioneer at 683. His Honour said that the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary: see also Henschke at [70]. 201 However, Aickin J observed in Pioneer at 683 that it is essential that the user maintains the connection of the registered proprietor with the goods. That connection is not established on the facts of the present case. 202 It follows in my view that Nature's Hive was not an authorised user of the mark. It also follows that the use of the Health Plus trade mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act.
Case: Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365 
Outcome: applied
Those authorities, as well as authorities of Full Courts in CA Henschke &amp; Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] [90]. 152 Under s 60 in its pre-amended form, a finding of deceptive similarity was a pre-condition for the Court to go on to consider the test set out in s 60(b): Registrar of Trade Marks v Woolworths at [82]. It is therefore unnecessary for me to consider that test. 153 Under the amended form of the section it would be necessary to consider that question because a finding of deceptive similarity is no longer a pre-requisite. However, even if the amended form of the section applies, Health World would not succeed in its application for rectification on this ground. 154 Section 60(a) as amended would be enlivened because Inner Health Plus had acquired the necessary reputation. But the causal link required under s 60(b) would not be made out. This is because the reputation of Inner Health Plus was that of a more potent and convenient form of Inner Health powder.
Case: Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Limited (1986) 12 FCR 477
Outcome: referred to
Nor do I accept that the letter of 4 April 2007 from Shin-Sun's solicitors constitutes an admission that the marks are deceptively similar. It is well settled that the issue of deceptive similarity is for the Court itself to decide: Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Limited (1986) 12 FCR 477 at 487-488, referred to by Cooper J in Health World v Shin-Sun (2005) at [33].
Case: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 
Outcome: referred to
An aggrieved person is one who has a real interest in having a trade mark removed from the Register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the Register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113. 160 In my view, the intention, or lack thereof, to which s 59 is directed, is a "real and definite intention" of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time: Ritz Hotel at 202-203. 161 The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; Dufty A &amp; Lahore J, Lahore, Patents Trade Marks &amp; Related Rights (LexisNexis Butterworths, 2006) at [55,580]. 169 Indeed, the effect of Mr Shin's evidence was that "we wanted to widen our business" to use the mark on any products which Shin-Sun might make. This does not satisfy the test stated in the authorities to which McLelland J referred in the Ritz Hotel case at 202-203. 170 Ms Shin, in her affidavit of 20 December 2006, stated that Shin-Sun conceived the Health Plus mark and that she had taken certain steps on behalf of that company which were consistent with an intention, as at 7 May 2001, for Shin-Sun to use the mark. 171 However, the overall effect of her evidence was that she failed to distinguish between the two separate corporate entities, Shin-Sun and Nature's Hive. I cannot be satisfied, and I find that she did not pay attention to which corporation she was representing when she took the steps that she relies upon to support the assertion that Shin-Sun intended to use the mark. 223 Section 101(3) confers a broad discretion on the Court: Henschke at [72]. The discretion is conferred so as to give the Court a sufficient degree of flexibility to give effect to public interest considerations: Ritz Hotel at 221-225.
Case: Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147
Outcome: referred to
I do not consider that the Health Plus mark captures one of the essential features of the Inner Health Plus mark: c.f. Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147; de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106.
Case: Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166
Outcome: referred to
In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see eg. Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 at [97] ; Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 at [75] .
Case: Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137
Outcome: applied
However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent's evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96 ; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].
Case: Thai World Imports v Shuey Sing (1989) 17 IPR 289
Outcome: referred to
The relevant date for determining the reputation of the Inner Health Plus mark in the claims under ss 52 and 53 of the Trade Practices Act , and for passing off, is the date on which Shin-Sun (or Nature's Hive) commenced the use of the Health Plus mark: see Thai World Imports v Shuey Sing (1989) 17 IPR 289 at 302. 77 Shin-Sun contends that the relevant date for the purpose is September 2001 when it claims to have sold goods under the Health Plus mark in an export transaction to Taiwan. 78 Health World contends that the relevant date for the purposes of the claims under the Trade Practices Act and for passing-off is August 2004 when the Health Plus range was launched in the Australian market.
Case: Unilever Australia Limited v Karounos [2001] FCA 1132 ; (2001) 52 IPR 361
Outcome: referred to
First, it is contrary to established authority on the construction and operation of s 88(2)(a). In Unilever Australia Limited v Karounos [2001] FCA 1132 ; (2001) 52 IPR 361 at [13] , Hill J said that under this sub-section: The court is required to consider the question as at the time of registration and determine whether as at that time it was proper for the registrar to admit the mark to the register. Facts subsequent to the date of registration will be irrelevant. 109 Other authorities to the same effect are referred to in Davison M, Johnston K, Kennedy P , Shanahan's Australian Law of Trade Marks and Passing Off , (3 rd ed , Thomson Lawbook Co, 2003) at [14.175] n 127.
Case: Australian Finance Group Ltd v Accent Financial Group Pty Ltd [2005] FCA 66
Outcome: referred to
Notwithstanding this, for the reasons stated in Wu at [54] and following, I declined to make orders in terms of the motion for default judgment. At [54]-[55], I said: "I would not order that judgment be entered without more because, following the return of the subpoena directed to Mr Guss, there remains no continuing and unexplained default on the respondents' part. If Barry Armitage's evidence is accepted, there is nothing more the respondents can do to facilitate inspection of documents. Although Mr Guss did not produce all of the documents the subject of the subpoena, Barry Armitage has affirmed that the remaining documents remain in Mr Guss' custody. Ultimately, the credibility (or lack thereof) of Barry Armitage's claims regarding these and like matters will be an issue for trial: see Australian Finance Group Ltd v Accent Financial Group Pty Ltd [2005] FCA 66 at [33] per Nicholson J. Whether he is believed or not is likely to have other consequences for this litigation. I note too that there may be circumstances that partly explain the delays. These circumstances include the ill health of Barry Armitage and of a family member and the disturbance caused by changes in legal representation. Moreover, although the respondents have needed repeated prompting by Ms Wu's solicitor, they have filed their defence, various affidavits responding to Ms Wu's claims and lists of discoverable documents. They have mostly participated in court hearings and they were represented at the mediation by their solicitor. Barry Armitage ultimately took steps to have a subpoena issued to Mr Guss, in order that Ms Wu have access to the first and second respondents' discovered documents."
Case: Australian Competition and Consumer Commission v Black on White Pty Ltd [2004] FCA 363
Outcome: referred to
Counsel for Ms Wu opposed Mr Armitage's motion, noting that Mr Armitage was represented by counsel on the hearing of Ms Wu's motion on two occasions when the motion was part heard. It was only on the third and final occasion, when the hearing of the motion was completed, that Mr Armitage's solicitor obtained leave to withdraw. Counsel submitted that the relevant principles were contained in Australian Competition and Consumer Commission v Black on White Pty Ltd [2004] FCA 363 (" Black on White ") and Microsoft Corporation v Crosslink Marketing Group [2005] FCA 1817 at [21] . He argued that there were no exceptional circumstances in this case that would justify setting aside the orders in question. In this regard, he pointed out that Mr Armitage was heard, through his counsel, on the motion on two occasions and the affidavit material on which he relied was before the Court. The fact that his solicitor "went off the record" on 27 April 2005 "did not make any difference to the Orders". Further, counsel submitted that, having regard to the contents of Mr Armitage's affidavit of 16 May 2006, it is not reasonably probable that he would have obtained orders other than the orders made on 3 February 2006 had that affidavit been before the Court. Finally, Mr Armitage's affidavit did not, so counsel submitted, establish fraudulent conduct and satisfy the requisite tests for setting aside on the ground of fraud. 25 Some care must be taken in dealing with the authorities that concern the setting aside of judgment or orders. The force of judicial observations in this area depends on the circumstances in which application to set aside is made, including whether the judgment or order has been entered or is final or interlocutory. For present purposes, it suffices to refer to the observations of the Full Court in Wati v Minister for Immigration and Multicultural Affairs (1997) 78 FCR 543 at 552 that the jurisdiction to set aside orders made after they have been entered is "exceptional": see also Black on White at [14]-[16].
Case: Microsoft Corporation v Crosslink Marketing Group [2005] FCA 1817
Outcome: referred to
Counsel for Ms Wu opposed Mr Armitage's motion, noting that Mr Armitage was represented by counsel on the hearing of Ms Wu's motion on two occasions when the motion was part heard. It was only on the third and final occasion, when the hearing of the motion was completed, that Mr Armitage's solicitor obtained leave to withdraw. Counsel submitted that the relevant principles were contained in Australian Competition and Consumer Commission v Black on White Pty Ltd [2004] FCA 363 (" Black on White ") and Microsoft Corporation v Crosslink Marketing Group [2005] FCA 1817 at [21] . He argued that there were no exceptional circumstances in this case that would justify setting aside the orders in question. In this regard, he pointed out that Mr Armitage was heard, through his counsel, on the motion on two occasions and the affidavit material on which he relied was before the Court. The fact that his solicitor "went off the record" on 27 April 2005 "did not make any difference to the Orders". Further, counsel submitted that, having regard to the contents of Mr Armitage's affidavit of 16 May 2006, it is not reasonably probable that he would have obtained orders other than the orders made on 3 February 2006 had that affidavit been before the Court. Finally, Mr Armitage's affidavit did not, so counsel submitted, establish fraudulent conduct and satisfy the requisite tests for setting aside on the ground of fraud.
Case: Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423
Outcome: referred to
First, I accept that the orders made on 3 February 2006 were interlocutory in nature. "[A]n order made in the course of an action or suit which does not conclude the rights of the parties inter se, although it may, of course conclude the fate of the particular application in which it is made, is interlocutory only": Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 440 per Taylor J. It is open to Mr Armitage to call in aid O 35 r 7(2)(c). 23 Secondly, I accept that Mr Armitage was not in court when the relevant orders were made on 3 February 2006 and that he was absent from a part of the hearing of Ms Wu's motion. That is, Mr Armitage was represented by his counsel at the hearing of the motion on 23 August and 13 October 2004, but was effectively unrepresented at the hearing on 27 April 2005, when his solicitor successfully obtained leave to withdraw. Accordingly, it is open to Mr Armitage to call in aid O 35 r 7(2)(a).
Case: Monroe Schneider Associates (Inc) v No 1 Raberem Pty Ltd (No 2) (1992) 37 FCR 234
Outcome: referred to
Thirdly, although Mr Armitage sought also to rely on O 35 r 7(2)(b), he has not adduced sufficient evidence to make out a case that the order was obtained by fraud. Plainly, any allegation of fraud is extremely serious. Before an order can be set aside on the ground of fraud, there must be sufficient evidence of the facts that establish the alleged fraudulent conduct and the part played by the party having the benefit the order. The fraudulent conduct must be "directly material" to the order and the evidence of the fraud must be evidence that was not available and could not have been discovered with reasonable and proper diligence before the order under challenge was made: see Monroe Schneider Associates (Inc) v No 1 Raberem Pty Ltd (No 2) (1992) 37 FCR 234 at 242. Mr Armitage's affidavit of 16 May 2006 did not satisfy these requirements. Accordingly, it is not open to him to rely on O 35 r 7(2)(b).
Case: Wati v Minister for Immigration and Multicultural Affairs (1997) 78 FCR 543
Outcome: referred to
Some care must be taken in dealing with the authorities that concern the setting aside of judgment or orders. The force of judicial observations in this area depends on the circumstances in which application to set aside is made, including whether the judgment or order has been entered or is final or interlocutory. For present purposes, it suffices to refer to the observations of the Full Court in Wati v Minister for Immigration and Multicultural Affairs (1997) 78 FCR 543 at 552 that the jurisdiction to set aside orders made after they have been entered is "exceptional": see also Black on White at [14]-[16].
Case: KM &amp; A Chadwick Pty Ltd v Yeung (" KM &amp; A Chadwick ") [1995] FCA 354
Outcome: referred to
Mr Armitage stated on oath that the respondents made the arrangements that led to the retainer of legal representatives, who knew little or nothing of their case and took little or no responsibility for its ongoing conduct. This impeded the proper conduct of the litigation, as Mr Armitage apparently concedes. Parties to litigation such as Mr Armitage are obliged to take steps to keep themselves informed of the conduct of the litigation by their appointed legal representatives. They cannot escape their responsibility as parties with respect to the conduct of the litigation by hiding behind a poorly instructed lawyer retained briefly or at the last minute. Nor can they excuse themselves by relying on a series of "unfortunate events", as Mr Armitage sought to do. If it were otherwise, case management would prove virtually impossible: compare KM &amp; A Chadwick Pty Ltd v Yeung [1995] FCA 354 (" KM &amp; A Chadwick ") at [15] per Tamberlin J. 35 Ms Wu has, moreover, proceeded to the taxation contemplated by the orders in question, as indeed she was entitled to do. In so doing she has incurred further costs. In this regard, I note, however, that Mr Armitage has been most assiduous in contesting the taxation. His notice of appeal, which was filed on 24 February 2006, preceded the taxation hearings. 36 I am satisfied, however, that, taken as a whole, the circumstances are such as to justify me setting aside pars [2] and [3] the orders made on 3 February 2006: compare KM &amp; A Chadwick . 37 I would set aside par [3] of my orders principally because it was made in Mr Armitage's absence from the final stages of the hearing of Ms Wu's motion and costs application and will apparently operate to prevent Mr Armitage, who swears that he is impecunious, from advancing his defence. Having regard to the serious nature of some of the claims made against him and to the fact that he has apparently an arguable defence, it would not be in the interests of justice to make an order with such a result. That Ms Wu will suffer some inconvenience or hardship as a result is unavoidable. It is impossible to reconcile Ms Wu's interest in having the benefit of the orders previously with Mr Armitage's interest in having an opportunity to advance his defence. 38 For essentially the same reasons, I would also set aside par [2] of the 3 February orders. For the reasons set out below, I would order instead that, after judgment in this proceeding, Mr Armitage pay, on an indemnity basis, costs in the amount of $26,666.02 in respect of Ms Wu's motion. Further, I would order that Mr Armitage pay Ms Wu's costs of his motion. As will be seen below, although Mr Armitage has been partially successful in his motion, the need for such a motion arose from his failure to keep himself informed of the conduct of the proceeding on his behalf.
Case: Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225
Outcome: cited
The power of the Court to make an order for costs derives from s 43 of the Federal Court of Australia Act 1976 (Cth). Costs ordinarily follow the event and are awarded on a party-party basis, unless there are particular or special circumstances which warrant the Court departing from this practice and making some other order: see Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 (" Colgate-Palmolive ") at 232-233 per Sheppard J and Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at 234 per Black CJ and French J. Since Ms Wu was in substance successful, she was and remains entitled to an order for costs. She continues to submit that an indemnity costs order is appropriate. 42 Whilst the Court has power to make an order for costs on an indemnity basis, the question is whether the Court should so exercise its discretion in the particular case. A court may award indemnity costs in respect of misconduct which causes loss of time to the Court and to other parties: Tetijo Holdings Ltd v Keeprite Australia Pty Ltd (Fed C of A, French J, WAG 55 of 1988, 3 May 1991, unreported) referred to with approval in Colgate-Palmolive at 233; Ugly Tribe Co Pty Ltd v Sikola [2001] VSC 189 at [7] per Harper J. As Mason P, with whom Meagher and Clarke JJA agreed, said in Rosniak v Government Insurance Office (1997) 41 NSWLR 608 at 616, "the court requires some evidence of unreasonable conduct, albeit that it need not rise as high as vexation" before departing from the usual party and party costs order. The procedural history provides sufficient evidence of unreasonable conduct on the part of Mr Armitage, through his legal representatives or personally, to continue to justify an indemnity costs order on Ms Wu's motion.
Case: Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229
Outcome: referred to
The power of the Court to make an order for costs derives from s 43 of the Federal Court of Australia Act 1976 (Cth). Costs ordinarily follow the event and are awarded on a party-party basis, unless there are particular or special circumstances which warrant the Court departing from this practice and making some other order: see Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 (" Colgate-Palmolive ") at 232-233 per Sheppard J and Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at 234 per Black CJ and French J. Since Ms Wu was in substance successful, she was and remains entitled to an order for costs. She continues to submit that an indemnity costs order is appropriate.