mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Clements v Independent Indigenous Advisory Committee [2003] FCAFC 143 (2003) 131 FCR 28
Outcome: cited
proceeding in this Court is by way of appeal from the AAT. By s 44(1) of the Administrative Appeals Tribunal Act 1975 (Cth) ("the AAT Act "), an appeal lies to this Court from the AAT but the appeal is restricted to a question of law. A question whether the AAT has denied procedural fairness to a party to a proceeding before it is a question of law for this purpose. See Clements v Independent Indigenous Advisory Committee [2003] FCAFC 143 (2003) 131 FCR 28 at [3] - [8] per Gray ACJ and North J. Ordinarily, the AAT's decision would be immune from challenge in this Court, because of s 474 of the Migration Act . It would fall squarely within the definition of "privative clause decision" in s 474(2). Section 44 of the AAT Act would also not apply to it, because of s 483 of the Migration Act , which provides that s 44 of the AAT Act does not apply to a "privative clause decision". The judgment of the High Court of Australia in Plaintiff S157/2002 v Commonwealth of Australia [2003] HCA 2 (2003) 211 CLR 476 makes clear, however, that the reference to a "decision" in the definition of "privative clause decision" is a reference to a decision that is not invalidated by reason of jurisdictional error. It follows that, if the applicant in the present case can establish jurisdictional error on the part of the AAT, he is entitled to appeal to this Court. Denial of procedural fairness on the part of the decision-maker is jurisdictional error for this purpose, as Plaintiff S157 itself demonstrates. If the applicant in the present case can establish such a denial on the part of the AAT, he will succeed in establishing both error of law by the AAT and an entitlement to have the AAT's decision set aside, despite s 474 of the Migration Act .
Case: SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 (2006) 81 ALJR 515
Outcome: applied
applicant contended that the AAT ought not to have made the findings it did about Dr Kennedy's evidence without giving notice to the applicant and his counsel that it intended to do so. In the recent judgment in the High Court of Australia in SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 (2006) 81 ALJR 515, the procedural fairness obligations of another tribunal under the Migration Act , in relation to the issues arising in hearings, have been stated succinctly. At [29]-[34], the High Court referred to the dichotomy suggested by the Full Court in Commissioner for Australian Capital Territory Revenue v Alphaone Pty Ltd (1994) 49 FCR 576 at 591-592, between a decision-maker's obligation to identify an issue not obviously open on the known material, and his or her lack of obligation to expose in advance aspects of the mental processes by which the decision-maker arrives at a decision. The High Court pointed out that the dichotomy does not necessarily encompass all possible kinds of cases that may fall for consideration, and focussing on it may distract from the fundamental principles that are engaged. The High Court emphasised the principle, referred to in Alphaone at 590-591, that the right to be heard ordinarily requires that the party affected be given the opportunity of ascertaining the relevant issues, and that this may involve more than simply knowing what is the ultimate decision to be made. At [47]-[49], the High Court pointed out that sometimes it is necessary for the decision-maker to indicate what he or she thinks the issues are, either by the questions he or she asks during a hearing, or more explicitly. What is not required is for the decision-maker to give a running commentary on what he or she thinks about the evidence that is given. The High Court did say that, even if the issues are properly identified, there may be cases that would yield to analysis in the terms identified in Alphaone . It appears from this reasoning that the distinction between an issue not obviously open on the known material, and an aspect of the decision-maker's mental processes is a valid distinction, but that care must be taken to avoid trying to force each case into one or other of those categories.
Case: Australian Wine Importers' Trade Mark (1889) 6 RPC 311
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: BP plc v Woolworths (2004) 62 IPR 545
Outcome: discussed
There is an exception to the general rule. In BP plc v Woolworths (2004) 62 IPR 545 I held that in very limited situations it was possible to dissect a total image to obtain proprietorship (and trade mark registration) of only one component of the total image. The test I adopted was whether the component created "a separate and distinct commercial impression" from the other components, so that it might be said of the distinct component that it performs a trade mark function. Another way of putting it is to determine whether the individual component for which registration is sought comprises a separate and distinct trade mark. In other words, although two or more elements (words, devices or both) may be used in combination and constitute a combination mark for which registration may be obtained that does not deny absolutely the possibility that one or more of those elements is an individual mark for which registration can also be obtained. Admittedly the cases where this will occur are rare. It is more likely to occur in the case of a word and device mark, because often the word is the dominant portion of a combination mark: In re Tekelec-Airtronic , 188 USPQ 694 (1975); Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976); In re Dempster Bros, Inc , 132 USPQ 300 (1961).
Case: Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401
Outcome: cited
I do not think it can be said that handbags, purses and wallets are of the same description as backpacks. Backpacks, especially those in respect of which Colorado Group or its predecessor applied the mark (being school backpacks), are not put to the same use as handbags, wallets or purses. The nature of the products is, to my mind, quite different. Backpacks are highly functional and directed toward comfort, weight-bearing, support and durability while wallets and purses have a predominant fashion purpose. While perhaps not decisive, a person wishing to buy a backpack would not find a handbag, wallet or purse to be an acceptable substitute or alternative: see San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd (2000) 50 IPR 321, 330; Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401, 410-411. In any event, a consumer is not likely to think that these goods originate from the same source. That is, I do not accept that either the trade or the public would regard the goods as similar.
Case: Chorlton and Dugdale's Trade Mark, Re (1885) 53 LT NS 337
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: Continental Connector Corp v Continental Specialities Corp , 492 F.Supp 1088 (1979)
Outcome: cited
I do not treat as relevant, as Colorado Group asserted it was, that both it and Strandbags Group sell these goods from the same stores and to the same sorts of customers. The fact that goods may be found in the same shop or in the same department within a department store is more a symptom of modern marketing methods which "tend to unify widely different types of products in the same retail outlets or distribution networks", than any great similarity in the goods: Continental Connector Corp v Continental Specialities Corp , 492 F.Supp 1088, 1096-1097 (1979). In my view, correspondence in the channels of trade is no longer a very helpful line of inquiry in relation to many goods, although there may be exceptions.
Case: Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976)
Outcome: cited
There is an exception to the general rule. In BP plc v Woolworths (2004) 62 IPR 545 I held that in very limited situations it was possible to dissect a total image to obtain proprietorship (and trade mark registration) of only one component of the total image. The test I adopted was whether the component created "a separate and distinct commercial impression" from the other components, so that it might be said of the distinct component that it performs a trade mark function. Another way of putting it is to determine whether the individual component for which registration is sought comprises a separate and distinct trade mark. In other words, although two or more elements (words, devices or both) may be used in combination and constitute a combination mark for which registration may be obtained that does not deny absolutely the possibility that one or more of those elements is an individual mark for which registration can also be obtained. Admittedly the cases where this will occur are rare. It is more likely to occur in the case of a word and device mark, because often the word is the dominant portion of a combination mark: In re Tekelec-Airtronic , 188 USPQ 694 (1975); Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976); In re Dempster Bros, Inc , 132 USPQ 300 (1961).
Case: Dempster Bros, Inc , In re , 132 USPQ 300 (1961)
Outcome: cited
There is an exception to the general rule. In BP plc v Woolworths (2004) 62 IPR 545 I held that in very limited situations it was possible to dissect a total image to obtain proprietorship (and trade mark registration) of only one component of the total image. The test I adopted was whether the component created "a separate and distinct commercial impression" from the other components, so that it might be said of the distinct component that it performs a trade mark function. Another way of putting it is to determine whether the individual component for which registration is sought comprises a separate and distinct trade mark. In other words, although two or more elements (words, devices or both) may be used in combination and constitute a combination mark for which registration may be obtained that does not deny absolutely the possibility that one or more of those elements is an individual mark for which registration can also be obtained. Admittedly the cases where this will occur are rare. It is more likely to occur in the case of a word and device mark, because often the word is the dominant portion of a combination mark: In re Tekelec-Airtronic , 188 USPQ 694 (1975); Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976); In re Dempster Bros, Inc , 132 USPQ 300 (1961).
Case: Grossmith's Trade Mark, In re (1889) 6 PR 180
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: J B Palmer's Trade-Mark, In re (1883) 24 Ch D 504
Outcome: cited
Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 &amp; 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis &amp; Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.
Case: Jackson &amp; Co v Napper (1886) 35 Ch D 160
Outcome: cited
On the facts as I have found them, Edgarlodge was, and its successor Strandbags Group is, unambiguously the proprietor of the Colorado mark in respect of handbags because of first use. There was a contest about its first use in relation to wallets and purses. Even if that contest had been resolved differently it would not have affected the outcome. In my earlier judgment I explained that a person is entitled to registration of a mark not only in respect of goods to which the mark has been applied but also to goods or classes of goods that are "of the same kind": Jackson &amp; Co v Napper (1886) 35 Ch D 160. This is because it is assumed that a consumer is likely to believe that the other goods originate from the same source as the goods in respect of which the mark has been used. 31 In my view purses and wallets are goods of the same kind as handbags. Both are intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects. True, handbags are usually larger than both wallets and purses but I do not think this affects the kind of goods they are. At any rate, it is often very difficult to tell the difference between what is a purse and what is a handbag these days, with many handbags being quite small in size. A consumer would expect a handbag and a purse or wallet bearing the same mark to come from the same source. Some are even matching in design. Indeed, many leading fashion houses sell lines of handbags, purses and wallets. 32 Were it necessary this analysis would produce the following consequence. That is, Strandbags Group would not infringe Colorado Group's mark when it applied the mark to wallets or purses, as well as handbags.
Case: Jellinek's Application for a Trade Mark, Re (1946) 63 RPC 59
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369
Outcome: cited
I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther &amp; Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt &amp; Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.
Case: K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149
Outcome: cited
The final question is whether the service of bringing together handbags, wallets and purses for sale is a service "closely related" to backpacks or whether it is "of the same description" as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is "closely related" to backpacks. There is no relationship between the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627, 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service "of the same description" as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods "closely related" to that service.