mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Cash Converters Pty Ltd v Tallut Pty Ltd [2005] FCA 939 , (2005) ATPR 42-074
Outcome: cited
does not fall within ss 52 or 53 merely because a member of the public is caused to wonder whether goods may come from the same source: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375. Lockhart J there observed at 377: Conduct does not contravene s 52 merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source or two services are provided by the same source or two business names suggest that they come from the same stable. The purpose of Pt V of the Trade Practices Act 1974 is to protect consumers by eliminating unfair trade practices. The object of s 52 is to prevent misleading or deceptive conduct which will affect the identification of goods or services. Conduct which merely causes some uncertainty in the minds of the public does not infringe s 52. Beaumont J there further observed that a likelihood of deception will readily be inferred where the parties are engaged in " allied or related " fields of activity: (1986) 12 FCR at 392. And in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12 at [105] , [2000] HCA 12 ; 202 CLR 45 at 87, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ observed that: [105] ... The initial question which must be determined is whether the misconceptions or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. These were the decisions Siopis J had in mind when considering claims for contravention of ss 52 and 53 (d) in Cash Converters Pty Ltd v Tallut Pty Ltd [2005] FCA 939 , (2005) ATPR 42-074.
Case: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375
Outcome: cited
does not fall within ss 52 or 53 merely because a member of the public is caused to wonder whether goods may come from the same source: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375. Lockhart J there observed at 377: Conduct does not contravene s 52 merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source or two services are provided by the same source or two business names suggest that they come from the same stable. The purpose of Pt V of the Trade Practices Act 1974 is to protect consumers by eliminating unfair trade practices. The object of s 52 is to prevent misleading or deceptive conduct which will affect the identification of goods or services. Conduct which merely causes some uncertainty in the minds of the public does not infringe s 52. Beaumont J there further observed that a likelihood of deception will readily be inferred where the parties are engaged in " allied or related " fields of activity: (1986) 12 FCR at 392. And in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12 at [105] , [2000] HCA 12 ; 202 CLR 45 at 87, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ observed that: [105] ... The initial question which must be determined is whether the misconceptions or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. These were the decisions Siopis J had in mind when considering claims for contravention of ss 52 and 53 (d) in Cash Converters Pty Ltd v Tallut Pty Ltd [2005] FCA 939 , (2005) ATPR 42-074.
Case: Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 , 156 FCR 380
Outcome: discussed
however, there have emerged two lines of authority such that the path to be followed remains unclear. In Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 , 156 FCR 380 , Kenny J expressed these two lines of authority as follows: [160] The law concerning the liability of directors and other officers for corporate wrongdoings is unclear: see Allen Manufacturing Company Pty Ltd v McCallum &amp; Company Pty Ltd (2001) 53 IPR 400 at 409 411 per Wilcox, French and Dowsett JJ (" Allen Manufacturing "). There are two relevant lines of authority, each supportive of a different test. As the Full Court said in Allen Manufacturing 53 IPR at 409: One line supported ... the " Performing Right Society test": whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". [161] No Full Court of this Court has settled which of these two tests is to be preferred: see Allen Manufacturing 53 IPR at 410 411 and Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 at [160] [161] per Weinberg and Dowsett JJ (" Sydneywide "). In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 (" Root Quality "), Finkelstein J discussed both tests and concluded at [46] that "[t]he director's conduct must be such that it can be said of him that he was so personally involved in the commission of the unlawful act that it is just that he should be rendered liable." I tend to agree with his Honour's approach: compare also Universal Music [2005] FCA 972 ; 150 FCR 1 at [134]. Branson J did not express a preference for either test and the remaining member of the Court, French J, simply agreed with the conclusion of Branson and Kenny JJ that the appeal should be dismissed.
Case: CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 , 128 FCR 408
Outcome: applied
of a domain name may constitute conduct falling within s 52: e.g. CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 , 128 FCR 408 ; Macquarie Bank Ltd v Seagle [2008] FCA 1417 , 79 IPR 72. Indeed, as in the present proceeding, in intellectual property cases it is not uncommon for a plaintiff to contend that the conduct of a respondent in using a domain name or a business name constitutes not only a contravention of ss 52 and 53 of the Trade Practices Act and the tort of passing off, but also a contravention of the Trade Marks Act : Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760 , 79 IPR 454; SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1.
Case: Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247 , 139 FCR 215
Outcome: cited
52 has been discussed and applied in innumerable authorities. In Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247 , 139 FCR 215 , Wilcox, Heerey and RD Nicholson JJ outlined some of the matters to be proved and the manner of proof as follows (citations omitted): [17] It has long been established that: When the question is whether conduct has been likely to mislead or deceive it is unnecessary to prove anyone was actually misled or deceived ... Evidence of actual misleading or deception is admissible, and may be persuasive, but is not essential ... The test is objective and the Court must determine the question for itself ... Conduct is likely to mislead or deceive if that is a real or not remote possibility, regardless of whether it is less or more than 50% ... [18] The likelihood of recipients of a representation being misled or deceived is not a matter to be proved by evidence (testimony, documents or things), or by judicial notice or its statutory equivalent ... The existence or otherwise of such a likelihood is a jury question for the trier of fact ... It is not necessary to prove an intention to mislead or deceive but proof of such an intention has a very strong evidentiary value: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 39 FCR 348 at 389.
Case: E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386
Outcome: cited
" trade mark " is defined by s 17 of the Trade Marks Act as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows: If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods &#8212; to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. Use " as a trade mark " in s 120(1) is use of the mark as a " badge of origin " in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.
Case: E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180
Outcome: referred to
" trade mark " is defined by s 17 of the Trade Marks Act as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows: If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods &#8212; to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. Use " as a trade mark " in s 120(1) is use of the mark as a " badge of origin " in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.
Case: Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431
Outcome: cited
determining whether a plaintiff has established distinctiveness in the name or names with which it contends that the goodwill which it seeks to protect has become associated, useful guidance is provided by the following observations of Hill J in Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431 at 448: Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between, names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff's business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this &#8212; a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion. There need not be an exact or even substantial similarity in the nature of the two businesses: The Architects (Australia) [2002] QSC 139 at [27] to [28] per Chesterman J.
Case: Ghazal v Government Insurance Office of New South Wales (1992) 29 NSWLR 336
Outcome: cited
competing submissions invoked the following observations of Kitto J in Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298 at 308: ... any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the ground for the inference has not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence. The rule is one of common sense reasoning. An unexplained failure by a party to call a witness may, in appropriate circumstances, lead to an inference that the uncalled evidence would not have assisted the case of the party who might have been expected to call the witness: Ghazal v Government Insurance Office of New South Wales (1992) 29 NSWLR 336 at 343 per Kirby P. A court must see that a person who has not given evidence not only could shed light on a matter, but also would ordinarily be expected to do so: RPS v The Queen [2000] HCA 3 at [25] , [2000] HCA 3 ; 199 CLR 620 at 632 per Gaudron ACJ, Gummow, Kirby and Hayne JJ.
Case: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 , 76 IPR 161
Outcome: cited
" trade mark " is defined by s 17 of the Trade Marks Act as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows: If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods &#8212; to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. Use " as a trade mark " in s 120(1) is use of the mark as a " badge of origin " in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.
Case: Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216
Outcome: referred to
52 and 53 are found within Part V of the Trade Practices Act . They are provisions designed to protect members of the public who are consumers of goods and services from unfair trading practices: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 at [38] , [2000] FCA 1626 ; 104 FCR 61 at 72 per Beaumont, Tamberlin and Emmett JJ (citing Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216). They are not provisions specifically designed to protect traders, although the operation of those provisions may incidentally have that effect. As stated by Barwick CJ, with whom Aickin J agreed, in Hornsby Building Information Centre at 220: Section 52 is concerned with conduct which is deceptive of members of the public in their capacity as consumers of goods or services: it is not concerned merely with the protection of the reputation or goodwill of competitors in trade or commerce. The entitlement to loss or damages springs from s 82(1) of the Trade Practices Act , which provides as follows: ... a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of Part ... V ... may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention. In order to obtain relief under s 82 , a person must have suffered loss or damage " by " conduct in contravention of (relevantly) Part V: Wardley Australia Ltd v The State of Western Australia [1992] HCA 55 ; (1992) 175 CLR 514. Mason CJ, Dawson, Gaudron and McHugh JJ there observed at 525: By virtue of s. 82(2) of the Act, the period of limitation begins to run at the time when the cause of action under s. 82(1) accrues. As loss or damage is the gist of the statutory cause of action for which s. 82(1) provides [ Elna Australia Pty. Ltd. v. International Computers (Australia) Pty. Ltd. [No. 2] [1987] FCA 230 ; (1987), 16 F.C.R. 410 , at p. 418], the cause of action does not accrue until actual loss or damage is sustained. The statutory cause of action arises when the plaintiff suffers loss or damage "by" contravening conduct of another person. "By" is a curious word to use. One might have expected "by means of", "by reason of", "in consequence of" or "as a result of". But the word clearly expresses the notion of causation without defining or elucidating it. In this situation, s. 82(1) should be understood as taking up the common law practical or common-sense concept of causation recently discussed by this Court in March v. Stramare (E. &amp; M. H.) Pty. Ltd. [(1991) [1991] HCA 12 ; 171 CLR 506] , except in so far as that concept is modified or supplemented expressly or impliedly by the provisions of the Act. Had Parliament intended to say something else, it would have been natural and easy to have said so.
Case: ICT Pty Ltd v Sea Containers Ltd [2006] NSWSC 1280
Outcome: referred to
particular relevance to the present proceeding is the significance to be given to the delay that has been experienced. As noted by Finn J in HK Frost Holdings [1999] FCA 795 , delay may be relevant to both the rate at which interest is awarded and the period of time during which interest is to be paid. See also: ICT Pty Ltd v Sea Containers Ltd [2006] NSWSC 1280 at [15] .
Case: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 39 FCR 348
Outcome: cited
52 has been discussed and applied in innumerable authorities. In Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247 , 139 FCR 215 , Wilcox, Heerey and RD Nicholson JJ outlined some of the matters to be proved and the manner of proof as follows (citations omitted): [17] It has long been established that: When the question is whether conduct has been likely to mislead or deceive it is unnecessary to prove anyone was actually misled or deceived ... Evidence of actual misleading or deception is admissible, and may be persuasive, but is not essential ... The test is objective and the Court must determine the question for itself ... Conduct is likely to mislead or deceive if that is a real or not remote possibility, regardless of whether it is less or more than 50% ... [18] The likelihood of recipients of a representation being misled or deceived is not a matter to be proved by evidence (testimony, documents or things), or by judicial notice or its statutory equivalent ... The existence or otherwise of such a likelihood is a jury question for the trier of fact ... It is not necessary to prove an intention to mislead or deceive but proof of such an intention has a very strong evidentiary value: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 39 FCR 348 at 389.
Case: Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd [2003] VSC 291 , 9 VR 171
Outcome: cited
may, of course, be held liable as joint tortfeasors with their company: Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd [2003] VSC 291 at [102] , 9 VR 171 at 201 per Redlich J. However, liability as a joint tortfeasor is not confined to the potential liability of a director or officer of a corporation for a corporate tort.
Case: LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 , 80 IPR 85
Outcome: referred to
the acknowledgment that there are these two distinct lines of authority, the Full Court has suggested that the differences may be more apparent than real. In Allen Manufacturing Co Pty Ltd v McCallum &amp; Co Pty Ltd [2001] FCA 1838 , 53 IPR 400 Wilcox, French and Dowsett JJ concluded: [43] The difference between the two tests may be more apparent than read [sic]. We are not aware of any case in which it has been held that a director or officer of a company directed or procured the company's infringing act, yet that person escaped liability because he or she did not deliberately, wilfully or knowingly pursue a course of conduct that was likely to constitute infringement or that reflected indifference to the risk of infringement. This may be because, in practice, an act of direction or procurement will generally meet the Mentmore test. It is notable that, in Mentmore itself, the Canadian Federal Court of Appeal declined (at 204) to "go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement". The court declined to do this because that "would be to impose a condition of liability that does not exist for patent infringement generally". The same conclusion was reached by Gordon J in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at [171] to [175] [2008] FCA 1941 ; , 80 IPR 85 at 128 to 129.