mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167
Outcome: cited
The applicants made reference in their submissions to Adidas-Salomon AT v Turner [2003] 58 IPR 67. Goldberg J commented upon the limited evidence available to him upon which to base the assessment of damages for the infringement of trade mark rights. The difficulty arose from the limited information which could be extracted from the respondent as to the sale of infringing items. His Honour however said (at 67): '... notwithstanding the difficulty facing me on the assessment of damages the Court has to do the best it can on available material.' He quoted from the judgment of the Full Court in Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 where the Court said (at 183): 'The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasize, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant.' See also: Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852. 42 I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.'
Case: General Tire &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197
Outcome: cited
I do not consider that it is a consequence of the principle enunciated in Adidas or Enzed that, where a basis for quantification of loss is entirely within the knowledge of the applicant and no evidence is adduced as to the quantum, the Court should make its own uninformed assessment of a royalty or licence fee that the applicant might have foregone by reason of loss of sales. Speculation and even guesswork may have a role to play where the relevant evidence is inaccessible to the applicant. That is particularly so where the inadequacy of the evidence is caused by a recalcitrant or uncooperative respondent or one who has kept no adequate records of dealings. In so saying, of course, it must be recognised that an applicant may apply to the Court for an order for the examination of the respondent in aid of the assessment of damages. Relevant to this issue, and incidentally that of exemplary damages, is the observation of Lord Wilberforce in General Tire &amp; Rubber Co v Firestone Tyre and Rubber Co Ltd [1976] RPC 197 at 212, quoted by Jacob J in Lectra (at 393): 'First the plaintiff's (sic) have the burden of proving their loss: second, that the defendants being wrongdoers, damages should be liberally assessed but the object is to compensate the plaintiffs and not punish the defendants.' 43 In the case of a patentee who has licensed his patent, the damages are the lost royalty. The same principle applies to trade marks which are licensed. Jacob J said (at 394): 'The court must be satisfied that the royalty represents a true bargain.' Again he cited Lord Wilberforce in General Tire (at 394): 'Before a "going rate" of royalty can be taken as the basis on which an infringer should be held liable, it must be shown that the circumstances in which the going rate was paid are the same, or at least comparable with those in which the patentee and the infringer are assumed to strike their bargain.'
Case: AG Spalding &amp; Bros v AW Gamage Ltd [1918] 35 RPC 101
Outcome: cited
I would add the cautionary observation in Kerly at 18-146: 'It is important to note that in assessing damages for lost sales on a compensatory basis, it will be necessary for the court to determine what proportion of the defendant's customers have been confused. The claimant is not entitled to damages for sales to persons who have not been misled, since he has suffered no loss in respect of them, and, arguably, no actionable wrong has been committed in respect of sales to them. If he were to recover damages in relation to such persons, he would be over-compensated. This principle distinguishes passing-off and trade mark infringement from other intellectual property proceedings such as those for patent infringement, where all the defendant's activities of a given kind infringe.' See AG Spalding &amp; Bros v AW Gamage Ltd [1918] 35 RPC 101 and Draper v Trist and Tristbestos Brake Linings, Ld [1939] 56 RPC 429. In the latter case, which concerned passing off by Trade Name and get up of goods, the Master of the Rolls, Sir Wilfrid Greene MR, said (at 437): '... it has been said more than once - and indeed it is obvious that, taking the sales of deceptive articles, the Court is not entitled to assume that every one of those sales would have been obtained by the Plaintiff. For obvious reasons that is an assumption which would be quite unwarranted. The unwarrantable nature of such an assumption is further strengthened, of course, where there are differences in price, differences in quality and so forth, because it is not legitimate to assume that a person who bought the Defendants' article at a lower price, if it was sold at a lower price, would necessarily have bought the Plaintiff's article at a higher price, even if he was deceived into thinking that the Defendants' article was the Plaintiff's. That is a consideration which must be borne in mind.'
Case: Draper v Trist and Tristbestos Brake Linings, Ld [1939] 56 RPC 429
Outcome: cited
I would add the cautionary observation in Kerly at 18-146: 'It is important to note that in assessing damages for lost sales on a compensatory basis, it will be necessary for the court to determine what proportion of the defendant's customers have been confused. The claimant is not entitled to damages for sales to persons who have not been misled, since he has suffered no loss in respect of them, and, arguably, no actionable wrong has been committed in respect of sales to them. If he were to recover damages in relation to such persons, he would be over-compensated. This principle distinguishes passing-off and trade mark infringement from other intellectual property proceedings such as those for patent infringement, where all the defendant's activities of a given kind infringe.' See AG Spalding &amp; Bros v AW Gamage Ltd [1918] 35 RPC 101 and Draper v Trist and Tristbestos Brake Linings, Ld [1939] 56 RPC 429. In the latter case, which concerned passing off by Trade Name and get up of goods, the Master of the Rolls, Sir Wilfrid Greene MR, said (at 437): '... it has been said more than once - and indeed it is obvious that, taking the sales of deceptive articles, the Court is not entitled to assume that every one of those sales would have been obtained by the Plaintiff. For obvious reasons that is an assumption which would be quite unwarranted. The unwarrantable nature of such an assumption is further strengthened, of course, where there are differences in price, differences in quality and so forth, because it is not legitimate to assume that a person who bought the Defendants' article at a lower price, if it was sold at a lower price, would necessarily have bought the Plaintiff's article at a higher price, even if he was deceived into thinking that the Defendants' article was the Plaintiff's. That is a consideration which must be borne in mind.'
Case: Alexander &amp; Co v Henry &amp; Co [1895] 12 RPC 360
Outcome: cited
It is difficult to see a rational basis upon which the applicants' products are devalued except to the extent that the availability of the cheap pirate DVDs has a potential competitive impact upon the price at which the applicants' DVDs can be sold and therefore the royalties that they can charge. Accepting that there is some devaluation of that kind, I consider it almost incapable of estimation not simply as a matter of difficulty, but as a matter of principle. By that I mean that, absent evidence of some competitive response by the applicants, the error in assessing changes in the value of a product by reference to infringement may be greater than the value shift itself. A case in which there was evidence of a lowering of the trade mark owner's prices which may have been partially affected by the infringer's conduct was Alexander &amp; Co v Henry &amp; Co [1895] 12 RPC 360. There is, of course, no such evidence here. Nevertheless, in deference to previous authority and the injunction to take a "liberal approach" to the assessment of compensatory damages in this area, I would allow a figure of $1,000 to each applicant for product devaluation. I have not differentiated between applicants on the basis of the volume of sales of products over the eBay. It seems to me that if there is any principle underlying the devaluation of product it is predominantly the availability of the cheaper product, rather than the particular number that might have been sold in a given period. Having said that, I accept that the volume of sales was not trivial for the period between March and May 2005.
Case: GEC Marconi v BHP (2003) 201 ALR 55
Outcome: cited
I will also allow pre-judgment interest at the rate of 6% per annum from 1 May 2005 to 1 November 2006. This amounts to $135 in respect of each of the applicants. The interest amount is awarded under s 51A(1) of the Federal Court of Australia Act 1976 (Cth) and follows the usual practice of adopting rates of interest applied in the relevant State Supreme Court: GEC Marconi v BHP (2003) 201 ALR 55; Walker v Citigroup [2005] FCA 1866. As to costs, having regard to the applicants' lack of success on the question of exemplary damages and the unnecessarily protracted presentation of evidence in this case, I will order, against the second respondent, half of the costs of the assessment of damages. That is to be taxed as one set. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice French. Associate: Dated: 2 November 2006 Counsel for the Applicant: Mr D Stewart Solicitor for the Applicant: Minter Ellison No appearance for the Respondents Date of Hearing: 4 September 2006, 24 October 2006 Date of Judgment: 2 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1431.html
Case: Walker v Citigroup [2005] FCA 1866
Outcome: cited
I will also allow pre-judgment interest at the rate of 6% per annum from 1 May 2005 to 1 November 2006. This amounts to $135 in respect of each of the applicants. The interest amount is awarded under s 51A(1) of the Federal Court of Australia Act 1976 (Cth) and follows the usual practice of adopting rates of interest applied in the relevant State Supreme Court: GEC Marconi v BHP (2003) 201 ALR 55; Walker v Citigroup [2005] FCA 1866. As to costs, having regard to the applicants' lack of success on the question of exemplary damages and the unnecessarily protracted presentation of evidence in this case, I will order, against the second respondent, half of the costs of the assessment of damages. That is to be taxed as one set. I certify that the preceding fifty-seven (57) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice French. Associate: Dated: 2 November 2006 Counsel for the Applicant: Mr D Stewart Solicitor for the Applicant: Minter Ellison No appearance for the Respondents Date of Hearing: 4 September 2006, 24 October 2006 Date of Judgment: 2 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1431.html
Case: Coochey v Commonwealth [2005] FCA 1165 ; (2005) 149 FCR 312
Outcome: cited
The overriding principle in assessing penalty is that the amount of the penalty should reflect the Court's view of the seriousness of the offending conduct in all , the relevant circumstances: Coochey v Commonwealth [2005] FCA 1165 ; (2005) 149 FCR 312 and the cases there cited. 117 The relevant circumstances will vary from case to case and by reference to the objects of the particular legislation which has been contravened. 118 Pursuant to s 3 of the OHS Act the objects of the Act include: (a) to secure the health, safety and welfare at work of employees of the Commonwealth and of Commonwealth authorities; and ... (d) to promote an occupational environment for such employees at work that is adapted to their needs relating to health and safety; ... (f) to encourage and assist employers, employees and other persons to whom obligations are imposed under the Act to observe those obligations; and (g) to provide for effective remedies if obligations are not met, through the use of civil remedies and, in serious cases, criminal sanctions.
Case: Owston Nominees No 2 Pty Ltd v Branir Pty Ltd [2003] FCA 629
Outcome: followed
Order 35, r 7(1) and (2)(e) provide as follows: Setting aside (1) The Court may vary or set aside a judgment or order before it has been entered. (2) The Court, where it is not exercising its appellate or related jurisdiction under Division 2 of Part III of the Act, may if it thinks fit vary or set aside a judgment or order after the order has been entered where: ... (e) the order does not reflect the intention of the Court; or ... In addition to such power as is conferred by Rule 7, the Court also has an implied power to vary an order: Owston Nominees No 2 Pty Ltd v Branir Pty Ltd [2003] FCA 629 at [27] [29], [2003] FCA 629 ; 129 FCR 558 at 569 70 per Allsop J. 6 Within the constraints imposed by that Rule, it is considered that Orders 1 and 2 as made on 30 November 2007 should be varied. Order 35, r 7(2) relevantly confers power where, as in respect to these orders, they have been entered and where an order " does not reflect the intention of the Court ". The intention of the Court was that the then form of the Statement of Claim should be struck out. The reasons for decision then given expressed reservation as to the utility of the Respondents' Notice of Motion being heard in advance of further amendments being made, as contemplated by the Applicants. But the intent of the Court was that the Applicants were to file any Amended Statement of Claim in the same proceeding within the time then specified. The reservation expressed arose because the Applicants had not previously amended their pleadings and could do so unless the proceeding itself was dismissed: Federal Court Rules, O 13, r 3. The intention was not to foreclose the opportunity to be extended to the Applicants to amend the then existing Statement of Claim . 7 Order 4 as made on 30 November 2007 contemplated an " Amended Application " also being filed. None was in fact filed -- but the intention of the Court was to permit such an amendment to be made should the Applicants so have wished. That order reflected the intention of the Court and should thus not now be varied.
Case: Todorovic v Moussa [2001] NSWCA 419 , 53 NSWLR 463
Outcome: followed
In varying and setting aside these orders it must be acknowledged that there has been both an imprecision in the language previously employed in the reasons for decisions and the orders made. The reasons previously provided could also have been expressed in greater detail. But an application made pursuant to O 35, r 7 to vary or set aside orders previously made is not considered to be the occasion to supplement reasons previously provided or to make findings which could more conveniently have been made on earlier occasions. In a civil action there is a limited ability to alter reasons previously given, provided that the alteration is not one of substance: cf. Todorovic v Moussa [2001] NSWCA 419 , 53 NSWLR 463 at 468 9 per Beazley JA (Powell JA and Sperling J agreeing). To supplement the reasons previously provided would not fall within that limited exception. 13 The orders of the Court are: 1. Order 1 as made on 30 November 2007 be varied as follows: "1. The Statement of Claim as filed on 7 August 2007, as against the First Respondent, be struck out." 2. Order 2 as made on 30 November 2007 be varied as follows: "2. The Statement of Claim as filed on 7 August 2007, as against the Second Respondent, be struck out." 3. Order 1 as made on 31 March 2008 be varied as follows: "1. The proceeding be dismissed as against both Respondents." 4. There be no order as to the costs of 7 July 2008. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick. Associate: Dated: 8 July 2008 Counsel for the First Applicant: The First Applicant appeared in person Counsel for the First Respondent: G Curtis Solicitor for the First Respondent: Australian Government Solicitor Counsel for the Second Respondent: J Turnbull Solicitor for the Second Respondent: McCabe Terrill Date of Hearing: 7 July 2008 Date of Judgment: 8 July 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1028.html
Case: Von Reisner v Commonwealth [2007] FCA 1959
Outcome: cited
Two previous decisions have been given in this matter -- the first on 30 November 2007 ( Von Reisner v Commonwealth [2007] FCA 1959) and the second on 31 March 2008 ( Von Reisner v Commonwealth (No 2) [2008] FCA 430).
Case: Von Reisner v Commonwealth (No 2) [2008] FCA 430
Outcome: cited
Two previous decisions have been given in this matter -- the first on 30 November 2007 ( Von Reisner v Commonwealth [2007] FCA 1959) and the second on 31 March 2008 ( Von Reisner v Commonwealth (No 2) [2008] FCA 430). 9 Insofar as the orders as made on 31 March 2008 are concerned, it was the intention of the Court to resolve " the proceedings generally ": [2008] FCA 430 at [8] . On that occasion there had been non-compliance with a previous order that any Amended Statement of Claim was to be filed by 29 February 2008. There was, however, before the Court on 31 March 2008 a draft document which the First Applicant accepted " reflected the principles which she wished to agitate ": [2008] FCA 430 at [5] . An order was made that the " proceedings be dismissed ". This order has not been entered and may be varied or set aside pursuant to O 35, r 7(1). This order should be varied -- but only to the extent of referring to a singular " proceeding ". In seeking such an order, reliance was properly placed by the Respondents upon either s 31A of the Federal Court of Australia Act 1976 (Cth) or O 20, r 5 of the Federal Court Rules . Both of those provisions refer to an order being made in a " proceeding ". Order 20, r 5 was the power invoked. It was considered appropriate to dismiss the proceeding. 10 Order 2 as made on that occasion, the Court has been told, has been the subject of leave being granted to appeal to the Full Court. It is thus inappropriate to revisit either the form of that order or whether such an order should have been made given the dismissal of the proceeding. 11 The orders made on both occasions should be varied to reflect that which was intended. Whether such orders as now varied have been properly made remains a matter for the Full Court.
Case: SZEEU v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2006] FCAFC 2
Outcome: referred to
Finally, because the appellant was unrepresented on the appeal, counsel for the first respondent informed me that the first respondent had considered whether any breach of s 424A(1) of the Act can be said to arise following the decision in SZEEU v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2006] FCAFC 2. In that regard, counsel submitted that while the Tribunal's knowledge of the date of the appellant's application for the protection visa (December 2003) and the appellant's travel to Australia on a business visa in March 2000 may have derived initially from the protection visa application, this did not mean that s 424A was engaged by those parts of the protection visa application in this case. He submitted that the Tribunal's account of the hearing and the Tribunal's reasons indicate that the Tribunal was relying upon what the appellant said at the hearing about his travel to Australia in 2000 and subsequent activities until lodging his protection visa application in December 2003 as the relevant 'part of the reason' for its decision. He further submitted that on a fair reading the reason for the Tribunal's decision on this issue was based solely on information the appellant gave at the hearing, which falls within s 424A(3)(b). I accept these submissions. Accordingly, there was no breach of s 424A(1) of the Act. 22 The appeal must be dismissed with costs. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Edmonds. Associate: Dated: 30 March 2006 Solicitor for the Applicant: The appellant appeared in person Counsel for the Respondent: Mr T Reilly Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 20 March 2006 Date of Judgment: 30 March 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/303.html
Case: Australia and New Zealand Banking Group Ltd v Merribee Pastoral Industries Pty Limited [1998] 84 FCR 367
Outcome: cited
In my opinion, it is appropriate to grant a stay and to extend the injunctions: Australia and New Zealand Banking Group Ltd v Merribee Pastoral Industries Pty Limited [1998] 84 FCR 367. 14 In light of those reasons, the orders that I will make, therefore, are, as to the first four orders, in terms of paragraphs 1 to 4 of the notice of motion as amended. As to 5, I will order that costs be reserved. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gilmour. Associate: Dated: 25 February 2008 Counsel for the Applicant: Mr G H Murphy SC with Mr B Dharmanada Solicitors for the Applicant: Minter Ellison Counsel for the 1 st Respondent: Dr A S Bell SC with Mr C Lockhart Solicitors for the 1 st Respondent: Maxim Litigation Counsel for the 2 nd - 4 th Respondents: Mr K A Reid Solicitors for the 2 nd - 4 th Respondents: Allens Arthur Robinson Date of Hearing: 21 December 2007 Date of Judgment: 21 December 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/2110.html