mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Boscolo v Botany Council [1996] FCA 897
Outcome: cited
The Full Court said in Wiltshire-Smith v Mellor Olsson (1995) 57 FCR 572 at 584 that, for the purposes of ss 40(1)(g) and 41 (3)(b) of the Bankruptcy Act , there need not be an express order of a court staying execution of the particular judgment on which the creditor relies. The Full Court at 585 approved the observations of Beaumont J in Re Solomon; Ex parte Reid (1986) 10 FCR 423 at 425 426 that, for the purposes of s 41(3)(b) , execution is deemed to have been stayed where the judgment creditor is not in a position to issue immediate execution upon it. Circumstances preventing the judgment creditor from issuing execution include action by the judgment creditor to prevent payment of the debt or the appointment of a receiver over the debtor's property by order of the court so that the debtor, ' in practical reality ' is prevented from paying the debt ( Wiltshire-Smith at 586 587). The onus is on the debtor to prove affirmatively that the claim in respect of which the bankruptcy notice was issued could and would have been paid but for some act or omission which has the practical effect, in a business sense, of preventing the debtor from paying the debt ( Boscolo v Botany Council [1996] FCA 897 per Jenkinson J at 8 with whom O'Loughlin J agreed and per Sackville J at 4).
Case: New South Wales Crime Commission v Ollis (2006) 65 NSWLR 478
Outcome: cited
Federal Magistrate Smith concluded at [20] [22] that, while s 12 may not permit the reconsideration of the basis of the Supreme Court order or a variation of that order to apply for exclusion orders ( New South Wales Crime Commission v Ollis (2006) 65 NSWLR 478 at [34] [35] per Giles JA), neither New South Wales Crime Commission nor the language of the Assets Recovery Act precluded an application for an ancillary order to vary a restraining order. I agree with Smith FM that there is no reason why, under the Assets Recovery Act, Mr Ollis was precluded from making an application which would have resulted in him satisfying the judgment debt by, for example, releasing sufficient property from the Supreme Court order to pay the judgment debt. There is no evidence to support the submission that there was no prospect that he could have obtained the requisite exemption from the Supreme Court order or that he could not have obtained it within the time necessary to avoid the act of bankruptcy. Mr Ollis points to a concurrent hearing in the Supreme Court Court of Appeal ( New South Wales Crime Commission ) and the fact that it was heard on the day of purported service of the bankruptcy notice. I do not accept that this precluded Mr Ollis from making a s 12 application or that, in a practical business sense, a variation could not have been obtained. 26 It follows that Mr Ollis was able to apply both under the terms of the Supreme Court order and under the Assets Recovery Act for an order to vary the Supreme Court order to exclude sufficient of the property to pay the judgment debt. 27 Mr Ollis also submits that the purpose of the Assets Recovery Act is to ensure that only secured debts take priority to the confiscation of property under that Act. Some support for that proposition can be found in the definition in s 4 of "dealing" (which is prohibited by a restraining order under s 10) to include: (a) if the interest is a debt making a payment to any person in reduction of the amount of the debt
Case: Rayner &amp; Anor v Ollis [2007] FMCA 1160
Outcome: considered
The facts in this appeal from a decision of Smith FM ( Rayner &amp; Anor v Ollis [2007] FMCA 1160) are not in dispute. Judgment was obtained by the respondents against Mr Ollis in the sum of $39,411.55 on 1 July 2005 in an unrelated matter ('the judgment'). Mr Ollis' property then became the subject of an application by the New South Wales Crime Commission for a "proceeds assessment order" under s 27 of the Criminal Assets Recovery Act 1990 (NSW) ('the Assets Recovery Act'). On 19 January 2006 Sully J of the New South Wales Supreme Court made a restraining order ('the Supreme Court order') against, inter alia, Mr Ollis pursuant to s 10 of the Assets Recovery Act in the following terms: Pursuant to section 10 of the Criminal Assets Recovery Act 1990 that no person (other than any registered mortgagee dealing with its right to do so under the registered mortgage) is to dispose of, or attempt to dispose of, or otherwise deal with or attempt to otherwise deal with any interest in property (within the meaning of "interest in property" as defined in section 7 of the Criminal Assets Recovery Act 1990 ) of Victor Warren Ollis, including the interest in property in the property described in Schedules One, Two, Three, Four and Five hereto. 2 An "interest in property" is widely defined in s 7 of the Assets Recovery Act and includes an interest in real or personal property, money and the goodwill of a business. The effect of the Supreme Court order brought Mr Ollis' property under the control of the Supreme Court pending the Court's assessment of an amount to become payable as a debt to the Crown. Neither Mr Ollis nor the respondents could deal with any interest in the property without the leave of the Supreme Court. 3 In the Supreme Court order Justice Sully gave liberty to a number of people including Mr Ollis to apply on three days' notice. There is no suggestion that Mr Ollis did so. The Supreme Court order has been in effect at all relevant times since it was made.
Case: Re Solomon; Ex parte Reid (1986) 10 FCR 423
Outcome: cited
The Full Court said in Wiltshire-Smith v Mellor Olsson (1995) 57 FCR 572 at 584 that, for the purposes of ss 40(1)(g) and 41 (3)(b) of the Bankruptcy Act , there need not be an express order of a court staying execution of the particular judgment on which the creditor relies. The Full Court at 585 approved the observations of Beaumont J in Re Solomon; Ex parte Reid (1986) 10 FCR 423 at 425 426 that, for the purposes of s 41(3)(b) , execution is deemed to have been stayed where the judgment creditor is not in a position to issue immediate execution upon it. Circumstances preventing the judgment creditor from issuing execution include action by the judgment creditor to prevent payment of the debt or the appointment of a receiver over the debtor's property by order of the court so that the debtor, ' in practical reality ' is prevented from paying the debt ( Wiltshire-Smith at 586 587). The onus is on the debtor to prove affirmatively that the claim in respect of which the bankruptcy notice was issued could and would have been paid but for some act or omission which has the practical effect, in a business sense, of preventing the debtor from paying the debt ( Boscolo v Botany Council [1996] FCA 897 per Jenkinson J at 8 with whom O'Loughlin J agreed and per Sackville J at 4).
Case: Wiltshire-Smith v Mellor Olsson (1995) 57 FCR 572
Outcome: cited
The Full Court said in Wiltshire-Smith v Mellor Olsson (1995) 57 FCR 572 at 584 that, for the purposes of ss 40(1)(g) and 41 (3)(b) of the Bankruptcy Act , there need not be an express order of a court staying execution of the particular judgment on which the creditor relies. The Full Court at 585 approved the observations of Beaumont J in Re Solomon; Ex parte Reid (1986) 10 FCR 423 at 425 426 that, for the purposes of s 41(3)(b) , execution is deemed to have been stayed where the judgment creditor is not in a position to issue immediate execution upon it. Circumstances preventing the judgment creditor from issuing execution include action by the judgment creditor to prevent payment of the debt or the appointment of a receiver over the debtor's property by order of the court so that the debtor, ' in practical reality ' is prevented from paying the debt ( Wiltshire-Smith at 586 587). The onus is on the debtor to prove affirmatively that the claim in respect of which the bankruptcy notice was issued could and would have been paid but for some act or omission which has the practical effect, in a business sense, of preventing the debtor from paying the debt ( Boscolo v Botany Council [1996] FCA 897 per Jenkinson J at 8 with whom O'Loughlin J agreed and per Sackville J at 4). 12 In Sood v Crown Diagnostic Imaging Pty Ltd [2006] FCA 1721 ; (2006) 156 FCR 240, Gyles J considered the "interplay" between the bankruptcy legislation and the Proceeds of Crime Act 2002 (Cth) ('the Commonwealth Act'). The question before his Honour was whether an order pursuant to s 18 of the Commonwealth Act effectively stays execution on an outstanding judgment against the party subject to that order for the purposes of ss 40(1)(g) and 41(3)(b) of the Bankruptcy Act (at [1]). Justice Gyles recognised at [11] that the concept of a "stay" has been ' stretched beyond recognition ' but proceeded to consider and apply existing authority to the effect that the test as laid down by the Full Court in Wiltshire-Smith was whether in the eyes of ordinary fairness in business it will be said that the order has, in a business sense, prevented the debtor from paying (at [12]). In this regard Mr Ollis says that if he had to make an application for leave to deal with the property the subject of the Supreme Court order, the creditor was not entitled to levy immediate execution.
Case: Woodcroft v Director of Public Prosecutions (2000) 174 ALR 60
Outcome: followed
I agree, with respect, with Giles JA in Woodcroft v Director of Public Prosecutions (2000) 174 ALR 60 at [72] where his Honour said that an ancillary order must be ancillary to something, here to the Supreme Court order, in that it is incidental or supplemental to it. Justice Giles commented that a narrow view of what is incidental or supplemental should not be taken. His Honour then considered, as an ancillary order, an order varying the property the subject of a restraining order but concluded that, in the circumstances of Woodcroft , the order sought could not be so characterised (at [71] [73]).
Case: Australian Woollen Mills Ltd v F S Walton &amp; Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641
Outcome: referred to
was referred to what Windeyer J said in Shell concerning 'deceptive similarity', quoted at [25] supra, and to what was said by Dixon and McTiernan JJ in Australian Woollen Mills at 658: 'In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The cause of business and the way in which a particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.'
Case: Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254
Outcome: referred to
was also referred to the recent decision in Beecham Group at [54] [56] where the Court considered the established principles in Southern Cross and confirmed that the approach adopted by the Court is to attempt to estimate the 'effect or impression produced on the mind of potential customers' and to determine whether there is a 'real, and tangible danger of confusion'.
Case: Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 549
Outcome: cited
the respondent submitted that any emphasis solely on the similarities would be misconceived. In considering marks as a whole where they contain common words, one should look primarily to those aspects of the marks that are not common: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 ; (1952) 86 CLR 536 at 538 539; Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [40]; Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 549 at 568; and Re London Lubricants (1920) Ltd's Application [1925] 42 RPC 264 at 279.
Case: Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38
Outcome: referred to
the respondent submitted that any emphasis solely on the similarities would be misconceived. In considering marks as a whole where they contain common words, one should look primarily to those aspects of the marks that are not common: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 ; (1952) 86 CLR 536 at 538 539; Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [40]; Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 549 at 568; and Re London Lubricants (1920) Ltd's Application [1925] 42 RPC 264 at 279. The same can be said with respect to the words 'STARR' and 'Star', even coupled with the star logo in each case; the similarity is not sufficient to create a reasonable likelihood of deception where the remaining portions of the marks are so different. As was recently said by a Full Court of this Court in Melbourne Chinese Press at [40]: 'Cases like Cooper Engineering, Coca-Cola Co [(1942) 59 RPC 127] and Sports Caf&eacute; [(1998) 42 IPR 552] do not support the proposition ... that non-descriptive words should be emphasised in considering deceptive similarity. In considering marks as a whole, where they contain common words, one should look primarily to those aspects of the marks that are not common: Cooper Engineering at 538-9. Where distinctive aspects of the marks are the aspects that would remain with a consumer, that is sufficient to avoid confusion: Coca-Cola Co at 134. Elements of the mark were not discounted in these cases because they were descriptive but because they were common to the two marks.' But there is another reason. It was submitted on behalf of the applicant that there was visual similarity between the two marks in their use of colours blue and white. But that is where the similarity starts and finishes. One has only to view the evidence of the depiction of the two marks as a whole to see that the different shades of those colours, particularly the blue, and the juxtaposition of those colours, in the case of the registered mark, the dark blue lettering on the sky blue background and, in the case of the respondent's mark, the white lettering on the dark blue background, is such that there is no visual similarity; the contrast is stark.
Case: Re Bali Brassiere Co. Inc's Registered Trade Mark and Berlei Ltd's Application [1968] HCA 72 ; (1968) 118 CLR 128
Outcome: referred to
seemed to be common ground as to the governing principles to be applied in a case where the question is whether a mark so nearly resembles a registered mark that it is likely to deceive or cause confusion. It is a different comparison than that for substantial identity; in the case of deceptive similarity, it is one of impression based on recollection: Shell at 415, which will be an imperfect recollection, measured against a standard of side by side comparison. As Windeyer J said in Re Bali Brassiere Co. Inc's Registered Trade Mark and Berlei Ltd's Application [1968] HCA 72 ; (1968) 118 CLR 128 at 139: 'The governing principles are not in dispute; and little is to be gained by the quotation of enunciations and elaborations of them in other cases. The difficulty is always in their application to the facts of the case in hand.'
Case: Re London Lubricants (1920) Ltd's Application [1925] 42 RPC 264 
Outcome: cited
the respondent submitted that any emphasis solely on the similarities would be misconceived. In considering marks as a whole where they contain common words, one should look primarily to those aspects of the marks that are not common: Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15 ; (1952) 86 CLR 536 at 538 539; Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd (2004) 63 IPR 38 at [40]; Chantelle v Kabushiki Kaisha Chandeal (1996) 36 IPR 549 at 568; and Re London Lubricants (1920) Ltd's Application [1925] 42 RPC 264 at 279.
Case: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1953) 91 CLR 592
Outcome: applied
was also referred to certain propositions set out by Kitto J at first instance in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73 ; (1953) 91 CLR 592 at 594 595: (1) To show that a trade mark is deceptively similar to another it is necessary to show a real, tangible danger of deception or confusion occurring. A mere possibility of confusion is not sufficient. (2) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (3) In considering whether there is a likelihood of deception or confusion, all the surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold, and the character of the probable acquirers of the goods and services. The respondent accepted, generally, the summary of the relevant principles as set out in the applicant's submissions; the test in respect of infringement, it was submitted, remains that as set out in Southern Cross . I was also referred to the recent decision in Beecham Group at [54] [56] where the Court considered the established principles in Southern Cross and confirmed that the approach adopted by the Court is to attempt to estimate the 'effect or impression produced on the mind of potential customers' and to determine whether there is a 'real, and tangible danger of confusion'.
Case: Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 132 FCR 326
Outcome: referred to
respondent submitted that the marks 'STARR Partners' and 'Star REALTY' are not identical and they fall short of being 'substantially identical'. The respondent referred to the following points of difference: (i) In the use of capitals for the entirety of the word and the additional 'R' in 'STARR'; (ii) there is the use of the word 'Partners' as opposed to 'REALTY'. The use of the word 'Partners' is essential to the registered mark and some analogy can be drawn to the circumstances in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 132 FCR 326 at [54] [60]; (iii) the use of different words results in completely different aural sounds when the marks are spoken in their entirety; (iv) the 'star symbols' at the commencement of each of the respective marks are different; (v) the applicant's 'star symbol' has four points to the star including points on the eastern and southeastern points whilst the respondent's symbol has only the northern and western points; (vi) the applicant's 'star symbol' is also separate and distinct from the letters in the word 'STARR' with the southern line of the symbol directed to the northwest and coming inside, and parallel to, a line heading directed to the southeast; (vii) the respondent's 'star symbol' leans against, or is cut off by, the 'S'; (viii) further, the 'S' in the respondent's mark is stylised and the letters 't', 'a' and 'r' are separate from one another whilst the applicant's 'T', 'A', 'R' and 'R' are more standard, closely positioned letters. I was referred to a summary of the principles, recently extracted by Bennett J in Torpedoes Sportswear at [78] from the leading authorities. The respondent submitted that the applicant's submissions disregard the fact that the respective marks must be considered in their entirety when assessing whether they are deceptively similar. The focus on the use of the word 'STARR' and the applicant's 'star symbol' is, in effect, to infer that infringement will occur if another mark contains the word 'star', either of its own accord or in combination with a star symbol of some type. It was submitted that it is erroneous to focus on that word or symbol in isolation from the remainder of the mark. I was referred in particular to SAP (Australia) Pty Ltd v Sapient (Australia) Pty Ltd (1999) 169 ALR 1 and Torpedoes Sportswear , supra.
Case: Amadio Pty Ltd and Another v Henderson and Others (1998) 81 FCR 149
Outcome: applied
Given the above facts, the Court considers that it should depart from the usual rule relating to the award of costs. It is just for AIA to receive costs on an indemnity basis in respect of the issues which the Court is satisfied were raised without any factual basis and those which were pursued falsely to the knowledge of the applicants. Since these matters largely occupied hearing time from 11 September 2007, in accordance with the principles in Re Wilcox; Ex parte Venture Industries Pty Ltd and Others (No 2) (1996) 72 FCR 151 at 156-158 and Amadio Pty Ltd and Another v Henderson and Others (1998) 81 FCR 149 at 258-259, the Court will order the applicants to pay indemnity costs to AIA from that date.
Case: Calderbank v Calderbank [1975] 3 All ER 333
Outcome: referred to
Alternatively, AIA submits that it should be entitled to indemnity costs from 15 June 2007. By letter of this date AIA's solicitors, Ebsworth and Ebsworth, made an offer of settlement which was stated to be written in accordance with the principle referred to in Calderbank v Calderbank [1975] 3 All ER 333 ('the Calderbank letter'). The Calderbank letter attached copies of the receipts and copies of correspondence written by Mr Xu to AIA complaining that although he had paid cash to Mr Yang for the renewal of his policies his policies had been cancelled. The Calderbank letter proposed that each party pay their own costs and the proceedings be abandoned. Such offer was not accepted. 8 The applicants oppose the orders sought. They submit that their claim was predicated upon various representations which were alleged to have been made by AIA to Mr Yang at the time of his engagement as an agent of AIA. The applicants submit that the evidence of Ms Lin disputing the grant of authority to issue the receipts was not provided until approximately September 2007 which was at a late stage of the proceedings and that the applicants' claim was keenly fought in respect of numerous factual issues. 9 Section 43 of the Federal Court of Australia Act 1976 (Cth) ('the Act') empowers the Court to make orders for costs. Subsection 43(1) of the Act empowers the Court or a Judge thereof to award costs in all proceedings before the Court except those proceedings in respect of which any other Act provides that costs shall not be awarded. Subsection 43(2) of the Act provides: Except as provided by any other Act, the award of costs is in the discretion of the Court or Judge.