mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45
Outcome: considered
In Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45, the High Court held at 88 that the use of the brand "Nike" was likely to mislead or deceive members of the public into thinking that "Nike Sports Fragrance" was " in some way promoted or distributed by Nike International itself or with its consent or approval ". The Full Federal Court in Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 ; (2000) 104 FCR 61 at 73 and 77 adopted a similar approach, finding that the evidence established that the respondent had used the appellant's name in a way which gave rise to a misrepresentation that "in some way" the respondent acted with the appellant's approval. It is not necessary to be more precise, provided the association is more than de minimis .
Case: Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330
Outcome: cited
In R &amp; A Bailey &amp; Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.)
Case: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107
Outcome: considered
In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods.
Case: Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212
Outcome: cited
Having regard to the evidence in this case, I find that Dynamic Supplies' conduct was likely to mislead members of the public into believing that the trap purchases were in some way promoted or distributed by Brother or with its consent, when in fact they were not. Put another way, the use of the name gives rise to the making of a connection with Brother and its reputation. The packaging and invoices identified the Sample Units as genuine Brother DR-200 units when, to the contrary, they were OEM products not branded with the Brother trade mark and sold exclusively to Company X. This suffices to establish a breach of ss 52 and 53 (a), (c), (ea) and (g) of the TPA. In oral submissions counsel for Dynamic Supplies submitted that it was merely a conduit for the impugned products, and had no part in the counterfeiting or the packaging of Sample Units, but its intention in this case is irrelevant. In some cases intention may be relevant to support an inference of deception, but not here. Objectively, its misrepresentations were made in the course of trade and commerce and were likely to mislead or deceive, and this is sufficient to establish a breach of ss 52 and 53 : see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216 at 223 (per Stephen J); Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212 at 217.
Case: Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216
Outcome: cited
Having regard to the evidence in this case, I find that Dynamic Supplies' conduct was likely to mislead members of the public into believing that the trap purchases were in some way promoted or distributed by Brother or with its consent, when in fact they were not. Put another way, the use of the name gives rise to the making of a connection with Brother and its reputation. The packaging and invoices identified the Sample Units as genuine Brother DR-200 units when, to the contrary, they were OEM products not branded with the Brother trade mark and sold exclusively to Company X. This suffices to establish a breach of ss 52 and 53 (a), (c), (ea) and (g) of the TPA. In oral submissions counsel for Dynamic Supplies submitted that it was merely a conduit for the impugned products, and had no part in the counterfeiting or the packaging of Sample Units, but its intention in this case is irrelevant. In some cases intention may be relevant to support an inference of deception, but not here. Objectively, its misrepresentations were made in the course of trade and commerce and were likely to mislead or deceive, and this is sufficient to establish a breach of ss 52 and 53 : see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216 at 223 (per Stephen J); Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212 at 217.
Case: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 ; (2000) 104 FCR 61
Outcome: considered
In Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45, the High Court held at 88 that the use of the brand "Nike" was likely to mislead or deceive members of the public into thinking that "Nike Sports Fragrance" was " in some way promoted or distributed by Nike International itself or with its consent or approval ". The Full Federal Court in Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 ; (2000) 104 FCR 61 at 73 and 77 adopted a similar approach, finding that the evidence established that the respondent had used the appellant's name in a way which gave rise to a misrepresentation that "in some way" the respondent acted with the appellant's approval. It is not necessary to be more precise, provided the association is more than de minimis .
Case: Pioneer v The Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670
Outcome: considered
In R &amp; A Bailey &amp; Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 51 In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. &amp; H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet &amp; Maxwell, 1986) at [14-13].
Case: Playboy Enterprises International Inc v Hong (2004) 63 IPR 533
Outcome: considered
In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. &amp; H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet &amp; Maxwell, 1986) at [14-13].
Case: R &amp; A Bailey &amp; Co Lt v Boccaccio Pty Ltd (1986) 4 NSWLR 701
Outcome: considered
In R &amp; A Bailey &amp; Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 47 The authorities discussed above are different from the present case because here the foreign manufacturer manufactured the products, sold them without any branding and took steps to dissociate itself as the originator of the products. Brother did not in any way project or authorise the sale or distribution of the OEM products into the Australian market. Brother later became aware that, contrary to its policy, the product was retailed in Australia by Dynamic Supplies as a Brother-branded product in counterfeit packaging which prominently displayed the Brother name and trade mark. Authorities such as Estex [1966] HCA 81 ; 116 CLR 254 and Bailey 4 NSWLR 701 lay down principles in relation to their own peculiar facts and so the observations they make are not applicable to the facts of this case. The broad propositions noted above were made in quite a different commercial context.
Case: Revlon Inc v Cripps and Lee [1980] FSR 85
Outcome: cited
In any event, a finding that Brother America was part of the supply chain of the impugned products would not allow Dynamic Supplies to rely on s 123 of the Act because it is the consent of the registered owner which must be acquired. Here, Brother Japan is the registered owner of Brother's Australian trade marks. There is no evidence, and Dynamic Supplies submitted that it should not be expected to adduce such evidence, that Brother Japan (rather than Brother America) consented to the application of its mark to or in relation to the products in question. The fact that Brother America and Brother Japan are related entities within the same corporate group does not affect the clear and ordinary meaning and operation of s 123 of the Act . The consent to apply Brother's Australian trade marks to or in relation to a product must be acquired from Brother Japan. The situation where consent is not acquired from the registered owner of the trade mark but from a related entity in its corporate group has not, so far as I am aware, been considered in Australian law: cf the decision of the English Court of Appeal, which was decided on the basis of significantly different legislation in Revlon Inc v Cripps and Lee [1980] FSR 85. I am of the view that Brother Japan's consent for the purposes of s 123 of the Act is not to be implied from the fact that another member of the Brother corporate group may have, contrary to my finding, given its consent. 80 Accordingly, Dynamic Supplies' use of the 'BROTHER' trade mark was not done with the licence or authority of Brother Japan. I therefore find that its infringement of Brother's Australian trade marks is not excused by s 123 of the Act . 81 Although there was some uncertainty during the hearing as to whether Dynamic Supplies had conceded that Brother had a reputation for the purposes of ss 52 and 53 of the TPA, Dynamic Supplies' ultimate position was that it acknowledged Brother's reputation, but said that its acknowledgment did not constitute a concession as to Brother's trade practices claim. There was no substantial dispute between the parties on this, nor was there significant cross-examination by counsel for Dynamic Supplies on the issue. The uncontested evidence led by Brother showed that Brother Australia has been active in Australia since 1977 and that its sales run into the tens of millions of dollars. Advertisement of its products has been extensive. In cross-examination, Mr Piccinini acknowledged that Brother is a " well-known brand ".
Case: Thunderbird Products Corp v Thunderbird Marine Product Pty Ltd [1974] HCA 51 ; (1974) 131 CLR 592
Outcome: cited
Section 7(4) defines 'use' of a trade mark not only as the application of the mark to the product itself, but also the application of the mark to other items relating to the product, such as packaging, invoices, correspondence and advertisements: see Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51 ; (1974) 131 CLR 592 at 600 (per Jacobs J); Angoves Pty Ltd v Johnson (1982) 43 ALR 349 at 359-360 (per Deane J); Davison M, Johnston K and Kennedy P, Shanahan's Australian Law of Trade Marks &amp; Passing Off (3 rd ed, Lawbook Co., 2003) at [2.145] and [2.230]. Sections 9(1)(b)(i) , 9 (1)(c)(ii) and 9 (2) of the Act provide that a trade mark used on an invoice or attached to either the packaging in which the product is stored or transported is to be taken as being applied in relation to the goods. Accordingly, the use of the Sample Packaging or invoices displaying the mark in respect of the Sample Units is 'use' of a trade mark within s 7 of the Act .
Case: Transport Tyres Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421
Outcome: considered
In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods. 51 In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. &amp; H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet &amp; Maxwell, 1986) at [14-13]. 78 The second ground on which Dynamic Supplies' submissions fail is that even if Brother America was part of the supply chain, it has not demonstrated that Brother Japan, the registered owner of the relevant trade marks, expressly or impliedly consented to the application of its trade mark to or in relation to the goods in question. Although the Full Court of this Court in Transport Tyre 93 FCR at 440 found that the sale of the goods in question constituted a 'use', which was excused by s 123 of the Act , that decision is distinguishable. In that case the registered owner of the trade mark applied it to the goods which were subsequently sold. The chain of supply could be traced back from the retailer of the goods to the registered owner of the trade marks which were applied to or in relation to those goods. The registered owner's consent for the purpose of s 123 was, in the opinion of the Full Court, necessarily implied in those circumstances. No such chain of supply exists in the present case. The Sample Units were not branded by Brother with its mark, and the Sample Packaging was counterfeit. No consent, whether express or implied, was given by Brother to any person or entity to apply its registered trade mark to the products. To the contrary, Brother has distanced itself from the OEM products, manufacturing them only as unbranded products and selling them only through a confidential arrangement with Company X.
Case: Australian Competition and Consumer Commission v 4WD Systems Pty Limited (2003) 59 IPR 435
Outcome: followed
There is a body of authority in this Court which establishes the following propositions: (a) The scope of s 51AC is wider than that of s 51AA. The meaning of unconscionable for the purposes of s 51AC is not limited to the meaning of the word according to established principles of common law and equity: per French J in Australian Competition and Consumer Commission v C G Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491 at [24] and [25] (p 503); per Sundberg J in Australian Competition and Consumer Commissioner v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [31] (p 265); per Selway J in Australian Competition and Consumer Commission v 4WD Systems Pty Limited (2003) 59 IPR 435 at [183] (p 487) and per Jacobson J in Pacific National (ACT) Limited v Queensland Rail (2006) 28 ATPR 46-268 (p 53,515) at [918] (p 53,527). (b) The ordinary or dictionary meaning of unconscionable, which involves notions of serious misconduct or something which is clearly unfair or unreasonable, is picked up by the use of the word in s 51AC. When used in that section, the expression requires that the actions of the alleged contravenor show no regard for conscience, and be irreconcilable with what is right or reasonable. Inevitably the expression imports a pejorative moral judgment: per Heerey, Drummond and Emmett JJ in Hurley v McDonalds Australia Limited (2000) 22 ATPR 41-741 (p 40,578) at [22] (p 40,585). This helpful articulation of the meaning of the word when used in s 51AC was followed by Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [183]-[185] (pp 487-488) and by Sundberg J in ACCC v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [30] (p 264); and (c) Normally, some moral fault or moral responsibility would be involved. This would not ordinarily be present if the critical actions are merely negligent. There would ordinarily need to be a deliberate (in the sense of intentional) act or at least a reckless act: per Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [185] (p 488).
Case: Australian Competition and Consumer Commission v Allphones Retail Pty Limited [2008] FCA 1664
Outcome: followed
In order to make clear the basis on which that undertaking was given, I delivered Reasons for Judgment on 7 November 2008 in which I explained the circumstances in which that undertaking had been given and made certain directions concerning any future publication of the fact that that undertaking had been given and of its terms: See Australian Competition and Consumer Commission v Allphones Retail Pty Limited [2008] FCA 1664. 12 These Reasons for Judgment deal with the ACCC's extant claim for interlocutory relief. It is apparent from what I have already said that Allphones resists the making of any interlocutory orders.
Case: Australian Competition and Consumer Commission v C G Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491
Outcome: followed
There is a body of authority in this Court which establishes the following propositions: (a) The scope of s 51AC is wider than that of s 51AA. The meaning of unconscionable for the purposes of s 51AC is not limited to the meaning of the word according to established principles of common law and equity: per French J in Australian Competition and Consumer Commission v C G Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491 at [24] and [25] (p 503); per Sundberg J in Australian Competition and Consumer Commissioner v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [31] (p 265); per Selway J in Australian Competition and Consumer Commission v 4WD Systems Pty Limited (2003) 59 IPR 435 at [183] (p 487) and per Jacobson J in Pacific National (ACT) Limited v Queensland Rail (2006) 28 ATPR 46-268 (p 53,515) at [918] (p 53,527). (b) The ordinary or dictionary meaning of unconscionable, which involves notions of serious misconduct or something which is clearly unfair or unreasonable, is picked up by the use of the word in s 51AC. When used in that section, the expression requires that the actions of the alleged contravenor show no regard for conscience, and be irreconcilable with what is right or reasonable. Inevitably the expression imports a pejorative moral judgment: per Heerey, Drummond and Emmett JJ in Hurley v McDonalds Australia Limited (2000) 22 ATPR 41-741 (p 40,578) at [22] (p 40,585). This helpful articulation of the meaning of the word when used in s 51AC was followed by Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [183]-[185] (pp 487-488) and by Sundberg J in ACCC v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [30] (p 264); and (c) Normally, some moral fault or moral responsibility would be involved. This would not ordinarily be present if the critical actions are merely negligent. There would ordinarily need to be a deliberate (in the sense of intentional) act or at least a reckless act: per Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [185] (p 488).