mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254 
Outcome: considered
As Crennan J observed in Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 at [34] , the test enunciated by Kitto J in the Shell Co case has been adopted many times including by the Full Court in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192 where, at 209-214, Sackville J conveniently collected the authorities. Crennan J at [35] explained: The test involves consideration of the context in which the allegedly infringing use occurs. This can encompass factors such as the positioning of the sign, the type of font, the size of words or letters and the colours which are used, as well as how the sign is applied to advertising materials or the packaging of the goods in relation to other features: for example, see the analysis of Emmett J in Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 at [46] - [48] with respect to the use of the term "MaxClean" used on toothbrushes. 61 In Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254 at [48] Emmett J observed: The prominence and positioning of the MaxClean sign on the packaging of the toothbrush and in promotional material, together with the font size, styling, colour and shading of the MaxClean sign, suggests even greater significance than the "Colgate" brand. Other products, of both Colgate and its competitors, position distinguishing names that are properly characterised as sub-brands in the same place as the MaxClean sign appears in relation to Colgate on the packaging and leaflet. The distinctive styling, colouring and shading has a graphic element akin to a logo. The distinctive blue and white colouring, with a halo effect of white shading around the words, is also indicative of use as a trade mark, rather than as a merely descriptive phrase. Although the 'C' appears in upper case, there is no space between the 'X' and the 'C.' That suggests an invented word intended for use as a trade mark. 62 Except in respect of the "polo" style shirt, I consider the critical issue for present purposes to be the respondent's use of its logo as a whole, not its use of the words "Chatswood BBQ King". The distinctive colouring and layout of the respondent's logo and the prominence with which it is displayed at and near the restaurant's entrance and on the restaurant's menu cover are such that, in my view, a person seeing them would conclude that the respondent used its logo to distinguish its food and services from those offered by others. 63 I conclude that the respondent's logo generally, and because of its obvious derivation from that logo, the sign on the "polo" style shirt, each has the character of a brand which the respondent uses for the purpose of indicating a connection in the course of trade between the respondent's restaurant and related services and the respondent. I am therefore satisfied that the respondent uses each of its logo and the sign on the "polo" style shirt "as a trade mark".
Case: Blount Inc v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50
Outcome: considered
Section 41(6) of the Trade Marks Act was intended to ameliorate the test under the 1955 Act and, in particular, to allow registration of a trade mark that was shown to be distinctive in fact of the applicant's goods or services (see Blount Inc v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 at 55-56). 46 Having regard to such of the evidence identified in [92]-[100] below as existed as at 24 October 2004, I am satisfied that, as at that date, because of the extent to which the applicant, or its predecessor in title, had used the Trade Mark before that date, it did distinguish the goods and services of the applicant. I am so satisfied notwithstanding that the evidence discloses that, as at 29 October 2004, there were other restaurants and businesses in the greater Sydney area and elsewhere that were trading under names that included the words "BBQ King".
Case: British Sugar Plc v James Robertson &amp; Sons Ltd [1996] RPC 281
Outcome: cited
Under the Trade Marks Act 1955 (Cth) ("the 1955 Act") it was clear that certain marks could never be regarded as entitled to registration even though they were, as a matter of fact, plainly distinctive of the applicant's goods ( Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 515-516; British Sugar Plc v James Robertson &amp; Sons Ltd [1996] RPC 281 at 305). Kitto J observed with respect to the 1955 Act in Clark Equipment Company v Registrar of Trade Marks at 513: ... It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose [ie distinguishing the applicant's goods from those of others] ... may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
Case: Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 
Outcome: considered
As Crennan J observed in Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 at [34] , the test enunciated by Kitto J in the Shell Co case has been adopted many times including by the Full Court in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192 where, at 209-214, Sackville J conveniently collected the authorities. Crennan J at [35] explained: The test involves consideration of the context in which the allegedly infringing use occurs. This can encompass factors such as the positioning of the sign, the type of font, the size of words or letters and the colours which are used, as well as how the sign is applied to advertising materials or the packaging of the goods in relation to other features: for example, see the analysis of Emmett J in Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 at [46] - [48] with respect to the use of the term "MaxClean" used on toothbrushes.
Case: Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511
Outcome: considered
Under the Trade Marks Act 1955 (Cth) ("the 1955 Act") it was clear that certain marks could never be regarded as entitled to registration even though they were, as a matter of fact, plainly distinctive of the applicant's goods ( Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 515-516; British Sugar Plc v James Robertson &amp; Sons Ltd [1996] RPC 281 at 305). Kitto J observed with respect to the 1955 Act in Clark Equipment Company v Registrar of Trade Marks at 513: ... It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose [ie distinguishing the applicant's goods from those of others] ... may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.
Case: Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563
Outcome: cited
I am persuaded that it is appropriate for an order to be made restraining the respondent from using the name "Chatswood BBQ King" as the name of, or otherwise in connection with, the respondent's restaurant. However, I am not persuaded that the restraint should extend to the use of the individual words and phrases "BBQ King", "BBQ Kings", "BBQ", "King" and "Kings". Rather, in my view, the appropriate approach is that exemplified by the injunction ultimately made in Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 which was discussed in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 575. In Turner v General Motors (Australia) Pty Ltd the defendants were restrained "from using the words 'General Motor', or 'General Motors' in connection with any business then or thereafter carried on by them or any of them without clearly distinguishing such business from the business carried on by General Motors (Australia) Pty Ltd and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendants was or were identical or connected with the business of the plaintiff and also from representing or holding out to the like effect". As to the appropriate form generally of an injunction, including an injunction in an intellectual property case, see Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110 at [42] - [49] .
Case: Dent v Moore [1919] HCA 11 ; (1919) 26 CLR 316 
Outcome: considered
I interpolate that at [13]-[21] below I deal with the respondent's submission that the receipt into evidence of the Sale Agreement is prohibited by s 304(1) of the Duties Act 1997 (NSW) ("the 1997 Act "). It is sufficient here to record that, in my view, s 304(1) does not, as a matter of construction, do more than render an unstamped instrument that effects a dutiable transaction inadmissible to prove any fact giving the instrument its taxable character. I have reached this view after giving consideration to authorities concerning the equivalent prohibition in the English Stamps Acts. As the High Court observed in Dent v Moore [1919] HCA 11 ; (1919) 26 CLR 316 at 327-328, until 1891 the prohibition in the English Acts had used the language "admitted to be good, useful, or available in law or equity". In Matheson v Ross [1849] EngR 425 ; (1849) 2 H.L.C. 286 the House of Lords accepted that if the facts provided by the instrument were one which, even if it were stamped, would be foreign to its taxable character, the document could be used for that purpose. Although it may be a borderline situation, it seems to me that, to the extent that the Sales Agreement evidences Bar-B-Q King Restaurant Pty Ltd's ownership of the BBQ King restaurant as at the date of the Sale Agreement, it falls outside the terms of s 304(1).
Case: FCT v Murry [1998] HCA 42 ; (1998) 155 ALR 67
Outcome: considered
The respective financial records of Mempoll and Anakin provide support for Mr Yip's evidence that Mempoll did not sell the goodwill that it purchased from Bar-B-Q King Restaurant Pty Ltd, or any later generated goodwill in the BBQ King restaurant, to Anakin. As mentioned above, Mempoll's financial records for as late as 30 June 2006 continue to show as a non-current asset goodwill at cost in the amount of $283,490.00. However, the fact that Mempoll did not sell the goodwill to Anakin and continued to show that goodwill as an asset in its accounts is not, in my view, conclusive as to the ownership of that goodwill. In FCT v Murry [1998] HCA 42 ; (1998) 155 ALR 67 at [22] the majority of the High Court approved the observation of Barwick CJ in Geraghty v Minter [1979] HCA 42 ; (1979) 142 CLR 177 at 181 that "goodwill is not something that can be conveyed or held in gross: it is something that attaches to a business. It cannot be dealt with separately from the business with which it is associated". 40 The respondent contended that Anakin was not at the time of the application for registration (ie on 29 October 2004) the owner of the Trade Mark. As appears above, I am satisfied that as at 29 October 2004 the BBQ King restaurant business was owned and operated by Gold Kings and not by Anakin (see [32]). I am also satisfied that, notwithstanding the retention in Mempoll's accounts of the goodwill that it purchased under the Sale Agreement, as at 29 October 2004 Gold Kings owned the goodwill in the trade mark "BBQ King". The evidence makes plain that at this time Gold Kings had and exercised the right to conduct the BBQ King restaurant business "in substantially the same manner and by substantially the same means that [had previously] attracted custom to it" (see FCT v Murry at [23]). 41 I conclude that Anakin was not the owner of the Trade Mark at 29 October 2004. 42 As I am satisfied that Anakin was not the owner of the Trade Mark as at 20 October 2004 it is not strictly necessary for me to reach a conclusion on whether the Trade Mark was then capable of distinguishing the applicant's goods or services from the goods or services of other persons (s 41(2) of the Trade Marks Act ). However, lest the matter go further, I record that, if the issue of ownership is left to one side, I am satisfied that the Trade Mark is to be taken to have been capable of distinguishing the applicants' goods and services.
Case: Finance Facilities Pty Ltd v Federal Commissioner of Taxation [1971] HCA 12 ; (1971) 127 CLR 106
Outcome: cited
A reading s 35 of the 1920 Act in the context of the Act as a whole suggests that the word "may" is not intended to vest a discretion in the Chief Commissioner but rather that it indicates the circumstances in which the power is to be exercised ( Finance Facilities Pty Ltd v Federal Commissioner of Taxation [1971] HCA 12 ; (1971) 127 CLR 106 per Windeyer J at 134-135). As s 29 of the 1920 Act (the equivalent of s 304(1) of the 1997 Act ) makes plain, a failure by the Chief Commissioner to stamp a dutiable instrument in accordance with s 35 could cause serious harm to a party to that instrument and, indeed, to others. 18 I conclude that the stamp on the Sale Agreement upon which the applicant's rely is insufficient to allow me to conclude that the Sale Agreement is "duly stamped" within the meaning of s 304(1) of the 1997 Act ; it neither indicates that the instrument is not liable to duty nor that a specific amount of duty has been paid and the document is duly stamped. Nonetheless, as recorded above, I am satisfied that a cheque drawn by Mempoll in favour of the Office of State Revenue was sent to that office in intended payment of an amount of stamp duty in respect of the Sale Agreement. 19 No party advanced submissions touching on whether s 304(1) of the 1997 Act constrains the admissibility of evidence in the Federal Court (see s 79 of the Judiciary Act 1903 (Cth) and s 138 of the Evidence Act 1995 (Cth)). I shall therefore proceed on the assumption, but without so deciding, that the section does constrain the admissibility of evidence in this Court. Nonetheless I do not draw the conclusion that the Sale Agreement is inadmissible to prove the facts giving rise to its taxable character (ie the sale and purchase of the business of the BBQ King Restaurant). The applicants, by their counsel, have indicated that they are willing to transmit the instrument to the Chief Commissioner in accordance with arrangements approved by the Court (s 304(2)(a)). I will hear counsel as to appropriate arrangements in this regard. My present inclination is that an appropriate arrangement would be for the instrument to be transmitted to the Chief Commissioner together with a complete copy of these reasons for judgment.
Case: Geraghty v Minter [1979] HCA 42 ; (1979) 142 CLR 177
Outcome: considered
The respective financial records of Mempoll and Anakin provide support for Mr Yip's evidence that Mempoll did not sell the goodwill that it purchased from Bar-B-Q King Restaurant Pty Ltd, or any later generated goodwill in the BBQ King restaurant, to Anakin. As mentioned above, Mempoll's financial records for as late as 30 June 2006 continue to show as a non-current asset goodwill at cost in the amount of $283,490.00. However, the fact that Mempoll did not sell the goodwill to Anakin and continued to show that goodwill as an asset in its accounts is not, in my view, conclusive as to the ownership of that goodwill. In FCT v Murry [1998] HCA 42 ; (1998) 155 ALR 67 at [22] the majority of the High Court approved the observation of Barwick CJ in Geraghty v Minter [1979] HCA 42 ; (1979) 142 CLR 177 at 181 that "goodwill is not something that can be conveyed or held in gross: it is something that attaches to a business. It cannot be dealt with separately from the business with which it is associated".
Case: Health World Ltd v Shui-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478
Outcome: considered
Subsequently, in Health World Ltd v Shui-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478 Jacobson J at [203]-[205] observed: The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the court. In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see, for example, Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd (2000) 100 FCR 166 ; 51 IPR 1 ; [2000] FCA 618 at [97] ; Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 ; [2008] FCA 27 at [75] . Lahore observes at [57,155] that s 89 may be seen as codifying the case law on blameworthy conduct; accordingly, it deals with the circumstances in which a particular discretion may be exercised without detracting from the general discretion found in s 88(1). I propose to proceed on that basis.
Case: Kettle Chip Company Pty Ltd v Apand Pty Ltd [1993] FCA 546 ; (1993) 119 ALR 156
Outcome: cited
As I have concluded above, the phrase "BBQ King" does for a great many people identify the restaurant which operates under that name in Goulburn Street, Haymarket. Once the respondent chose to adopt a name so close to that of the Goulburn Street restaurant it came under an obligation to take care to ensure that its restaurant was adequately distinguished from it (see Kettle Chip Company Pty Ltd v Apand Pty Ltd [1993] FCA 546 ; (1993) 119 ALR 156 at 169 and the cases there cited). It did not do so. As noted above, by placing a geographic indicator "Chatswood" before the phrase "BBQ King", the respondent created a name apt to convey the message to an English speaking customer that its restaurant was the Chatswood branch or outlet of the BBQ King restaurant.
Case: Matheson v Ross [1849] EngR 425 ; (1849) 2 H.L.C. 286 
Outcome: considered
I interpolate that at [13]-[21] below I deal with the respondent's submission that the receipt into evidence of the Sale Agreement is prohibited by s 304(1) of the Duties Act 1997 (NSW) ("the 1997 Act "). It is sufficient here to record that, in my view, s 304(1) does not, as a matter of construction, do more than render an unstamped instrument that effects a dutiable transaction inadmissible to prove any fact giving the instrument its taxable character. I have reached this view after giving consideration to authorities concerning the equivalent prohibition in the English Stamps Acts. As the High Court observed in Dent v Moore [1919] HCA 11 ; (1919) 26 CLR 316 at 327-328, until 1891 the prohibition in the English Acts had used the language "admitted to be good, useful, or available in law or equity". In Matheson v Ross [1849] EngR 425 ; (1849) 2 H.L.C. 286 the House of Lords accepted that if the facts provided by the instrument were one which, even if it were stamped, would be foreign to its taxable character, the document could be used for that purpose. Although it may be a borderline situation, it seems to me that, to the extent that the Sales Agreement evidences Bar-B-Q King Restaurant Pty Ltd's ownership of the BBQ King restaurant as at the date of the Sale Agreement, it falls outside the terms of s 304(1).
Case: Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192
Outcome: considered
As Crennan J observed in Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 at [34] , the test enunciated by Kitto J in the Shell Co case has been adopted many times including by the Full Court in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192 where, at 209-214, Sackville J conveniently collected the authorities. Crennan J at [35] explained: The test involves consideration of the context in which the allegedly infringing use occurs. This can encompass factors such as the positioning of the sign, the type of font, the size of words or letters and the colours which are used, as well as how the sign is applied to advertising materials or the packaging of the goods in relation to other features: for example, see the analysis of Emmett J in Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 at [46] - [48] with respect to the use of the term "MaxClean" used on toothbrushes.
Case: Reckitt &amp; Colman Products Ltd v Borden Inc [1990] 1 WLR 491
Outcome: considered
At the same page his Honour noted that attempts to produce a definition of the tort which is both succinct and comprehensive have had mixed success. Nonetheless, both Lockhart and Gummow JJ in that case referred with approval to the following passage from the speech of Lord Oliver of Aylmerton in Reckitt &amp; Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499 in which his Lordship identified the elements that a plaintiff must prove in order to succeed: ... First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling and packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff. See also Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369.
Case: Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411 
Outcome: cited
For the purposes of the Trade Marks Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion (s 10). The use of the word "likely" does not import a requirement that it be more probable than not that the trade mark has that effect; it is sufficient that the probability of deception is finite and non-trivial ( Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411 per French J at [43]).