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: followed
The use of a trade mark is an authorised use only to the extent that the user uses the trade mark " under the control of the owner of the trade mark ": s 8(2). The essential requirement is that there must be a connection in the course of trade with the registered proprietor: Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670. Aickin J there observed (at 683): These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion 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. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive. 148 This conclusion is consistent with the interpretation of Estex Clothing provided by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670. His Honour there referred to Estex Clothing and continued (at 688): It was argued that Estex Clothing Manufacturers Pty. Ltd. v. Ellis and Goldstein Ltd. decided that a retailer who sold imported goods bearing an Australian registered trade mark did not use the mark, and that therefore a "distributor" did not use a mark which was already on the goods. In my opinion the Estex Case is not authority for that proposition. It is authority for the proposition that the foreign owner of an Australian mark uses it in Australia when he sells goods for delivery abroad to Australian retailers and those retailers import them into Australia for sale and there sell them. It demonstrates that such a situation does not differ from that where he sells the goods for delivery in Australia to the retailer or where he advertises the goods in Australia. ...
Case: Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227
Outcome: distinguished
In reaching this conclusion considerable assistance has been gained from the decision of Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227. Polo Textile was there the registered proprietor of the mark " Polo " in respect of manchester, including sheets and towels. It was concluded that Domestic Textile did not avoid infringing that mark by selling bed linen products using the mark " Polo Club ". Burchett J concluded that it was of importance that the distinctive impact of the word " Polo " was likely to affect the mind while the presence or absence of the blander word " Club " may escape notice. See also: de Cordova v Vick Chemical Co (1951) 68 RPC 103. 61 A distinction may be drawn as between the present case and that in Polo Textile -- but that distinction does not lead to any different conclusion. Unlike the use of a bland word such as " Club " -- as in the Polo Textile decision -- the word " RADLER " adds an additional and important distinguishing feature to the product. The word " RADLER " is not an ordinary English word and its use, it is considered, adds an element of both distinction and curiosity, such that persons will query what that particular word means.
Case: Re J Lyons &amp; Co Ltd's Application [1959] RPC 120
Outcome: followed
The fact that both types of goods may be consumed does not, of itself, make them goods of the same description: Re J Lyons &amp; Co Ltd's Application [1959] RPC 120 at 127 8 per Lord Evershed MR (Romer and Ormerod LJJ agreeing). (Applied: San Remo Macaroni [2000] FCA 1842 at [35] [36], 50 IPR 321 at 330 per Goldberg J). 197 In applying the terms of the discretion previously conferred by s 23(1) of the Trade Marks Act 1955 (Cth), Foster J observed that it was a discretion only to be exercised in " exceptional circumstances ": Jonathan Ross Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28. Foster J there observed at 29 30: The section to which I have just made reference has been the subject of consideration by courts of high authority. It is quite clear that the word "may", used in the section, requires that a court, in determining whether relief should be granted, exercise a discretion. Accordingly, a court in considering the matters raised by s 23 may, even though it be satisfied that the desiderata of the section have been made out, nevertheless refrain from ordering the removal of the trade mark in the manner contemplated by the section. The question of the operation of this discretion is considered in Shanahan's Australian Trade Mark Law and Practice, 1982 ed, p 212, under the heading, "Discretion under s 23(1)". The learned author refers to the decision of Kitto J in Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , which clearly establishes the existence of the residual discretion in the court, to which I have made reference. It is also clear, as the learned author points out, that the discretion is one of general application and not restricted specifically to sections of the Act. However, he also goes on to say: "It has been said that the discretion should be exercised only in 'exceptional circumstances'; however, there may well be cases where the public interest requires that the registration be retained." Reference is made to the case of J Lyons &amp; Co Ltd's Application [1959] RPC 120 at 130. I consider that the law is quite clear in this regard: although the discretion not to make an order of removal exists even though the enabling circumstances required by the section are proved, the discretion to refuse such an order is only to be exercised in the exceptional circumstances referred to.
Case: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365
Outcome: followed
The meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is in substance the same or essentially the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] , [1999] FCA 1020 ; 93 FCR 365 at 387 per Branson J. 92 In support of the submission that reliance may be placed upon not only the sign being used by Lion Nathan but also upon a wider ranger of considerations, including the manner in which that sign is being used and the differences between the competing products, reference was made to Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615. In allowing an appeal from a decision refusing to register a trade mark, Wilcox J concluded (at 624): The questions whether one mark is deceptively similar to another and whether the first mark is used in respect of services closely related to particular goods (or similar to other particular services) are conceptually distinct. However, the first question cannot be addressed in isolation from the second. The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive. The examples offered by Lockhart J in Caterpillar Loader Hire make the point. There are extremely close associations between the sale of data processing equipment and the provision of programs for its operation, the sale and sewing of curtains and the sale and tailoring of clothes. Because the relevant service is so specialised, and focused on the particular goods, it would be natural for any member of the public to treat a similarity of name as being an indication of a link between the origin of the goods and that of the service. At the other extreme, the use of even the same name, by traders in different industries, would not usually cause members of the public to assume a link between the traders. On appeal, the decision of Wilcox J was upheld: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365.
Case: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417
Outcome: followed
If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J.
Case: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539
Outcome: followed
It is again accepted that it is a question of fact and impression whether goods are " of the same description ": Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545 per Needham J.
Case: San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 , 50 IPR 321
Outcome: considered
Overall, the matter is to be determined from a business point of view: San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842 at [35] , 50 IPR 321 at 330 per Goldberg J. 72 The fact that both types of goods may be consumed does not, of itself, make them goods of the same description: Re J Lyons &amp; Co Ltd's Application [1959] RPC 120 at 127 8 per Lord Evershed MR (Romer and Ormerod LJJ agreeing). (Applied: San Remo Macaroni [2000] FCA 1842 at [35] [36], 50 IPR 321 at 330 per Goldberg J).
Case: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407
Outcome: followed
A " trade mark " is defined by s 17 of the Trade Marks Act 1995 (Cth) 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. The function of a trade mark, it has repeatedly been said, is "to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods -- 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 4 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] , [1999] FCA 1721 ; 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] per Sundberg J. See also: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1964) 109 CLR 407 at 424 5 per Kitto J; Rothnie W, Gray Goods Billow onto the Open Main: Section 123 of the Trade Marks Act 1995 (1996) 7 AIPJ 87 at 89 90. 43 And whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. [(1951) 68 RPC 103 at] [2], at p. 106. Whether there is substantial identity is a question of fact... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [38] , [1999] FCA 1721 ; 96 FCR 107 at 121. Black CJ, Sundberg and Finkelstein JJ there observed that the similarities and differences should be noted and the importance of these similarities and differences assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
Case: Tavener Rutledge Ltd v Specters Ltd [1959] RPC 355
Outcome: followed
Reference may also be made to Tavener Rutledge Ltd v Specters Ltd [1959] RPC 355. Lord Evershed MR there referred to the prospect of a plaintiff being able to establish the mark of a defendant causing confusion. His Lordship continued at 359 60: ... If the plaintiffs establish that then, as I have said, the defendants may still have another line of defence and may say, "Though it may generally be as you say a mark likely to cause confusion, in fact the way I have used it and in the circumstances and environment in which I have used it, it is not likely to cause confusion." Cited: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [43] , [1999] FCA 1721 ; 96 FCR 107 at 123.
Case: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 49 FCR 89
Outcome: followed
The comparison, it should be noted, is different to that undertaken in a passing off action where the plaintiff points to the goodwill built up around a mark by reason of prior use and then points to the conduct of the defendant as leading to deception, or perhaps merely confusion, and the consequent damage to that goodwill of the plaintiff: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 49 FCR 89 at 128 9 per Gummow J. Essentially what is required when considering whether a mark is deceptively similar to another is a comparison between the mark of the registered owner and that of the alleged infringer: C A Henschke &amp; Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [44] , [2000] FCA 1539 ; 52 IPR 42 at 62. Ryan, Branson and Lehane JJ there considered that it was not appropriate to undertake a wider inquiry of the kind undertaken in a passing off action or in a proceeding in which a contravention of Part V of the Trade Practices Act 1974 (Cth) is alleged.
Case: Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615
Outcome: followed
In support of the submission that reliance may be placed upon not only the sign being used by Lion Nathan but also upon a wider ranger of considerations, including the manner in which that sign is being used and the differences between the competing products, reference was made to Woolworths Ltd v Registrar of Trade Marks (1998) 42 IPR 615. In allowing an appeal from a decision refusing to register a trade mark, Wilcox J concluded (at 624): The questions whether one mark is deceptively similar to another and whether the first mark is used in respect of services closely related to particular goods (or similar to other particular services) are conceptually distinct. However, the first question cannot be addressed in isolation from the second. The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive. The examples offered by Lockhart J in Caterpillar Loader Hire make the point. There are extremely close associations between the sale of data processing equipment and the provision of programs for its operation, the sale and sewing of curtains and the sale and tailoring of clothes. Because the relevant service is so specialised, and focused on the particular goods, it would be natural for any member of the public to treat a similarity of name as being an indication of a link between the origin of the goods and that of the service. At the other extreme, the use of even the same name, by traders in different industries, would not usually cause members of the public to assume a link between the traders. On appeal, the decision of Wilcox J was upheld: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365.
Case: Yau's Entertainment Pty Ltd v Asia Television Ltd [2002] FCA 338 , 54 IPR 1
Outcome: followed
Section 92(1) and (4)(b) of the 1995 Act provide as follows: Application for removal of trade mark from Register etc. (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be registered removed from the Register. ... (4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: ... (b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates. Section 7 further defines that which constitutes the " use " of a trade mark. An " authorised use " of a trade mark is taken to be a use of the trade mark by the owner: s 7(3). Section 8 defines that which constitutes an " authorised use ". See: Yau's Entertainment Pty Ltd v Asia Television Ltd [2002] FCA 338 at [75] [81], [2002] FCAFC 78 ; 54 IPR 1 at 16 per Hely J (Sundberg and Finkelstein JJ agreeing). The term " during " does not mean " throughout " so as to require a regular and continuous course of conduct for the whole period: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (No 1) (1989) 14 IPR 26 at 44 per Gummow J. See: Luck J, Case Note (1990) 1 IPJ 63.
Case: Australian Communications and Media Authority v Mobilegate Ltd A Incorporated in Hong Kong (No 4) [2009] FCA 1225
Outcome: considered
general nature of the conduct which is alleged by the Australian Communications and Media Authority (Authority) to constitute contraventions of the Spam Act 2003 (Cth) (Spam Act), together with pertinent principles in relation to the imposition of penalty are canvassed at some length in reasons for judgment which I delivered on 23 October 2009 in Australian Communications and Media Authority v Mobilegate Ltd A Company Incorporated in Hong Kong (No 4) [2009] FCA 1225 (ACMA v Mobilegate (No 4)). These reasons for the judgment should also then, in respect of those two subjects, be read in conjunction with that earlier (ACMA v Mobilegate (No 4)) judgment in this matter. Some repetition is necessary as to the general background, if only to provide a context against which the particular involvement of Jobspy and Mr Moles falls for assessment of penalty. The essence of the contraventions of s 16 of the Spam Act , which are established by the default judgment, is a contravention, and a repeated contravention, by the sending of unsolicited short message service (SMS) messages to the mobile telephones of users who have been deceived, inveigled even, into providing their mobile telephone numbers to representatives of either Mobilegate Ltd A Company Incorporated in Hong Kong (Mobilegate), or, as the case may be, Winning Bid Pty Ltd (Winning Bid), under the belief that they were corresponding with individuals seeking to meet them and form relationships via dating websites. It was the very essence of the businesses of Mobilegate and Winning Bid to engage in this conduct. That conduct is a form of seduction for reward of those who are vulnerable. It is a particularly vile form of conduct. Moreover, it is a form of conduct which, when the deception is appreciated by its victim, wounds in a peculiarly embarrassing and emotional way, quite aside from its financial impact. Those non-financial aspects of victim impact are such that the perpetrator of the contravention is to some extent rendered immune, or at least afforded a degree of immunity, from a likelihood of complaint, in my opinion. That is a feature, in my opinion, which is not unknown in respect of criminal activity, and I interpolate at once this is not criminal activity, but contraventions of civil penalties, which touches upon a person's sexual nature. In other words, an embarrassment attends the victim of the contravention and that embarrassment in turn provides the degree of immunity from complaint. I regard that as an aggravating aspect of the contravening conduct.
Case: Australian Communications and Media Authority v Clarity 1 Pty Ltd [2006] FCA 1399 ; (2006) 155 FCR 377
Outcome: considered
factor which I took into account in the ACMA v Mobilegate (No 4) judgment is that articulated by Nicholson J in Australian Communications and Media Authority v Clarity 1 Pty Ltd [2006] FCA 1399 ; (2006) 155 FCR 377 (Clarity1) at para 43. By reference to other authorities, his Honour observed that, while he accepted that the issue of capacity to pay is a relevant factor, it is one "of less importance when balanced against the necessity of imposing a penalty that satisfies the objective of general deterrence". Deterrence is a factor of particular importance in this case. I have already adverted to the need for penalties to demonstrate that both in the specific and general senses. Whilst the Act does provide for large penalties, it nonetheless makes provision for a daily maximum, something of a cap in other words. Nicholson J drew attention to this feature of the legislation in Clarity 1 by reference to the explanatory memorandum to the bill which became the Spam Act . It is there stated: A daily ceiling for penalties has been set and may be charged for all contraventions against a particular provision that have occurred in one day. This has been included to ensure that a meaningful penalty may be charged for a single contravention without causing an unrealistically large penalty payable for multiple contraventions. For example, there are reported cases of dedicated spammers sending millions of unsolicited commercial and electronic messages each day. Without a ceiling amount for daily contraventions such a spammer could potentially be liable for a million contraventions. Jobspy and its director, Mr Moles, were involved in contravening conduct the subject of default judgment for a period in excess of 800 days. Using the maximum penalties under the Spam Act as a guide for calculation that yields, in the case of Mr Moles, a total potential penalty of over $35 million, and in the case of Jobspy over $100 million.