mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287
Outcome: cited
In Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 the High Court considered the concept of fraudulent imitation under the 1906 Act. Their Honours held (at [36]) that in order to find a fraudulent imitation it was not necessary to show that the differences between alleged infringement and design had been made to disguise the copying. In this respect their Honours at [28] qualified the statement in Malleys Limited v J W Tomlin Pty Ltd [1961] HCA 77 ; (1961) 180 CLR 120 at 127. In Polyaire their Honours at [17] accepted the submission that the application of a "fraudulent imitation" requires that the application of the design be with knowledge of the existence of the registration and of the absence of consent to its use, or with reason to suspect those matters, and that the use of the design produces what is an "imitation" within the meaning of para (a) [of s 30(1)]. This... is the knowledge, belief or intent which renders the conduct fraudulent. In a footnote to that passage their Honours say: See as to the permissible inference by a jury of fraud against a party who "wilfully shuts his eyes" the judgment of Lord Esher MR in English and Scottish Mercantile Investment Co Ltd v Brunton [1892] 2 QB 700 at 707-708. 114 As the submissions of Black &amp; Decker appear to accept, the knowledge, belief or intent which does or does not render the conduct fraudulent is that of the Chinese manufacturer. It is the manufacturer who is said to have "applied" the Design outside Australia. I see no reason to disbelieve the evidence of Mr Coates. It seems inherently unlikely that the Chinese manufacturer had knowledge of the Australian Designs Act; still less that the Design was registered under it. There is no basis for finding that the manufacturer had reason to suspect such registration. The onus on Black &amp; Decker to establish fraudulent imitation has not been discharged.
Case: R v Wheeler (1819) 2 B &amp; Ald 345
Outcome: cited
Much of this argument overlapped with GMCA's case on description, utility, novelty and obviousness. To the extent that it did not, it must be rejected. The alleged invention did not involve an abstract idea, like that considered in Grant v Commissioner of Patents (2006) 69 IPR 221. It concerned machines and their operation and thus "something of a corporeal and substantial nature": R v Wheeler (1819) 2 B &amp; Ald 345 at 350, cited in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 72 IPR 447 at [66] ( Lockwood 2 ).
Case: Royal British Bank v Turquand (1856) 6 E &amp; B 327
Outcome: cited
However, s 127(1) is not mandatory. Section 127(4) provides that the section does not limit the ways in which a company may execute a document (including a deed). As to authority to execute, persons dealing with BDA, including BDI, were entitled to assume that the company's constitution had been complied with and that a director had been duly appointed and had authority to exercise the powers customarily performed by a director of a similar company: s 129(1) , (3), the statutory equivalent of the Rule in Turquand's Case ( Royal British Bank v Turquand (1856) 6 E &amp; B 327). Section 128(1) provides that a person is entitled to make the assumptions in s 129 and a person is not entitled to make an assumption under s 129 if they knew the assumption was incorrect. While there is no evidence in the present case as to the powers of a director of a similar company to BDA, the onus is on GMCA to establish the contrary. In any event, it seems inherently likely that a director of a company similar to BDA, a wholly owned subsidiary of an overseas company, would have authority to execute on the company's behalf a document of the kind executed by Ms Armstrong. A degree of informality is to be expected. The reality is that Ms Armstrong was not, in the time-honoured expression, engaged on a frolic of her own. 145 In relation to BDI, Mr Pratt was authorized, by virtue of his office, to execute the Deed. The Deed was clearly in the ordinary course of business of BDI in that it dealt with the licensing of intellectual property, which seems to have been BDI's only business. 146 Black &amp; Decker's case is that because the December 2006 Deed made the March 2006 letter of termination "null and void ab initio", the 1987 Agreement, as varied by the 2005 Deed, continued uninterrupted. As a consequence, BDA is to be treated as having the status of exclusive licensee from at least the date of the 2005 Deed (its case that such status existed from the 1987 Agreement has been rejected for the reasons already given).
Case: Stack v Brisbane City Council (1996) 35 IPR 296
Outcome: cited
However, statutory rights to damages or an account of profits conferred on owners or exclusive licensees of intellectual property only have effect for the period that a plaintiff in fact has the relevant status. Thus in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25 Windeyer J held (at 36) that an account of profits should be taken to terminate as at the date the plaintiff assigned the trade mark in question and (at 41) that the assignee, having been joined as a plaintiff, should be entitled to an account of profits from the date of assignment. Similarly in Stack v Brisbane City Council (1996) 35 IPR 296 at 302 Drummond J held that where an equitable title had been converted into legal title by assignment, the assignor would have the right to an account of profits made by the infringers in the period up to the assignment and that the assignee alone would have the right to any profits made by the infringers after that date. Likewise, if an election were made for damages the assignee is the proper claimant for that relief, but only as from the date its equitable ownership became converted by registration into full legal and beneficial ownership of the patent.
Case: Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd [2006] FCAFC 119 ; (2006) 153 FCR 437
Outcome: cited
Section 17 of the Designs Act 1906 requires that a design be new or original to enable it to be registered. It must be "substantially novel or substantially original, having regard to the nature of the article to which the design is applied": Ullrich Aluminium Pty Ltd v Dias Aluminium Products Pty Ltd [2006] FCAFC 119 ; (2006) 153 FCR 437 at [3] . GMCA's expert Mr Brown considered nine prior saw blades as follows: (i) Canadian Patent No. 636160; (ii) US Patent No. 3,802,079; (iii) US Patent No. 2,621,689; (iv) Extract from "Popular Mechanics Encyclopaedia of Tools and Techniques" by Oldham, 1994, page 132; (v) "Power Hand Tool Handbook", pages 40 41, 1980 by Case; (vi) Bourke Patent US No. 5,755,293; (vii) Black &amp; Decker European Patent No. 0949 032; (viii) pages 94, 95 and 106 from "The Complete Book of Tools" by Jackson and Day; (ix) Disston No. 12 and D23 lightweight saws. 105 With the exception of the Disston saw blades all of these references were provided to Mr Brown by GMCA's solicitors. None of the references contain a blade with a notch at the front or the same shape as the Design. The Disston blades lack the notch at the front of the Design and any shank at the rear and an angled front edge. 106 Black &amp; Decker's expert Professor Redmond considered the references and was of the view that none were substantially similar visually to the Design. In my view none of the references showed blades which were substantially similar visually to the Design.
Case: Wanem Pty Ltd v John Tekiela [1990] FCA 372 ; (1990) 19 IPR 435
Outcome: cited
The principles are stated by Gummow J in Wanem Pty Ltd v John Tekiela [1990] FCA 372 ; (1990) 19 IPR 435 at 440, cited with approval by the Full Court in Foggin v Lacey (2003) 57 IPR 225 at [13]. Gummow J said: ...(i) first impressions are important in determining whether there is an infringement of a design, (ii) an obvious imitation is one which is not the same as the registered design but is a copy apparent to the eye notwithstanding slight differences, (iii) the question must be looked at as one of substance and by examining the essential features of the design, (iv) a closer correspondence between the registered design and the alleged infringing design is necessary to satisfy the test of obvious imitation than that of fraudulent imitation, (v) precise mathematical comparisons or matters of measurements or ratios, which form no part of the mental picture which the eye conveys to the brain of shape or configuration suggested by the design, are not to be applied as the test of infringement; appearance to the eye is the critical issue, and (vi) questions of infringement must not be determined by a narrow or overly technical approach in comparison between the design and the alleged infringement, lest the registration be sapped of its worth to the registered owner.
Case: Australian Competition and Consumer Commission v World Netsafe (No. 1) [2002] FCA 526 ; (2002) 119 FCR 303
Outcome: considered
ACCC then made the following submissions as to the general principles against which the motion should be determined: (1) The power to make the direction is conferred by s 47A(1) of the Act. That subsection provides: The Court or a Judge may, for the purpose of any proceeding, direct or allow testimony to be given by videolink, audiolink or other appropriate means. (2) Section 47C provides: (1) The Court or a Judge must not exercise the power conferred by subsection 47A(1) or section 47B in relation to a video link unless the Court or the Judge is satisfied that the following conditions are met in relation to the video link: ... (b) the place at which the remote person is located is equipped with facilities (for example, television monitors) that enable all eligible persons present in that place to see and hear each eligible person who is present in the courtroom or other place where the Court or the Judge is sitting; ... (6) For the purposes of the application of this section to a particular proceeding, eligible persons are such persons as the Court or a Judge considers should be treated as eligible persons for the purposes of that proceeding. (Emphasis in original) (3) The discretion in s 47A is to be exercised judicially. (4) It is to be exercised recognising 'that there are deficiencies when evidence is taken by videolink when compared with evidence given viva voce' per Spender J in Australian Competition and Consumer Commission v World Netsafe (No. 1) [2002] FCA 526 ; (2002) 119 FCR 303 at 305. His Honour continued by quoting from Giles CJ of the Commercial Division of the Supreme Court of New South Wales, in Sunstate Airlines (Qld) Pty Ltd v First Chicago Australia Securities Ltd (unreported, NSWSC, 11 March 1997) at [4]: Cross-examination may be more difficult when video evidence is taken because documents have to be transmitted or produced in an unfamiliar manner, because of the delay in voice transmission, or for other reasons and the effectiveness of cross-examination as a weapon in the fight for truth should not be unduly hindered. And in many cases the court is assisted in fact by observance of what is misleadingly called the demeanour of the witnesses upon which the taking of video evidence may impact. Those observations of Spender J were cited with approval by a Full Court of this Court in Odhiambo v Minister for Immigration &amp; Multicultural Affairs [2002] FCAFC 194 ; (2002) 122 FCR 29 at [97] .
Case: Australian Securities &amp; Investments Commissioner v Rich &amp; Ors (2004) 49 ACSR 578
Outcome: applied
power conferred by s 47A(1) of the Act is, subject to the Court and judge being satisfied that the conditions of s 47C(1) are met in relation to the video-link, an exercise of discretion that would not be ordered unless the Court or judge was satisfied that recourse to such a link was, in the particular circumstances of the case, appropriate. So understood, what was done in other cases is only of limited assistance, if any. So much was recognised by the Supreme Court of New South Wales (Austin J) in Australian Securities &amp; Investments Commissioner v Rich &amp; Ors (2004) 49 ACSR 578 at [16], although his Honour went on to observe that there are broadly two approaches exhibited by the observations in the cases one generally in favour of the use of audiovisual absent any impediment telling against its use; and the other a more cautious approach requiring good reason to be shown before leave to give evidence by means of video-link was granted. At [19] his Honour observed: Apart from dealing with obvious practical matters such as comparative costs and the difficulty created by differences in time zones, the cases touch upon some recurring themes: the appropriateness of audiovisual facilities for centrally important evidence, the assessment of credit where evidence is given by audiovisual link, difficulties raised by the use of documents for cross-examination in audiovisual evidence, technological difficulties due to lapse of time between transmission and receipt of questions and answers, and difficulties posed by the use of audiovisual facilities where the cross-examination is lengthy. There are also comments on the general approach to be taken by the court to a proposal for evidence to be adduced using audiovisual facilities. I shall refer briefly to each of these matters.
Case: Odhiambo v Minister for Immigration &amp; Multicultural Affairs [2002] FCAFC 194 ; (2002) 122 FCR 29 
Outcome: referred to
ACCC then made the following submissions as to the general principles against which the motion should be determined: (1) The power to make the direction is conferred by s 47A(1) of the Act. That subsection provides: The Court or a Judge may, for the purpose of any proceeding, direct or allow testimony to be given by videolink, audiolink or other appropriate means. (2) Section 47C provides: (1) The Court or a Judge must not exercise the power conferred by subsection 47A(1) or section 47B in relation to a video link unless the Court or the Judge is satisfied that the following conditions are met in relation to the video link: ... (b) the place at which the remote person is located is equipped with facilities (for example, television monitors) that enable all eligible persons present in that place to see and hear each eligible person who is present in the courtroom or other place where the Court or the Judge is sitting; ... (6) For the purposes of the application of this section to a particular proceeding, eligible persons are such persons as the Court or a Judge considers should be treated as eligible persons for the purposes of that proceeding. (Emphasis in original) (3) The discretion in s 47A is to be exercised judicially. (4) It is to be exercised recognising 'that there are deficiencies when evidence is taken by videolink when compared with evidence given viva voce' per Spender J in Australian Competition and Consumer Commission v World Netsafe (No. 1) [2002] FCA 526 ; (2002) 119 FCR 303 at 305. His Honour continued by quoting from Giles CJ of the Commercial Division of the Supreme Court of New South Wales, in Sunstate Airlines (Qld) Pty Ltd v First Chicago Australia Securities Ltd (unreported, NSWSC, 11 March 1997) at [4]: Cross-examination may be more difficult when video evidence is taken because documents have to be transmitted or produced in an unfamiliar manner, because of the delay in voice transmission, or for other reasons and the effectiveness of cross-examination as a weapon in the fight for truth should not be unduly hindered. And in many cases the court is assisted in fact by observance of what is misleadingly called the demeanour of the witnesses upon which the taking of video evidence may impact. Those observations of Spender J were cited with approval by a Full Court of this Court in Odhiambo v Minister for Immigration &amp; Multicultural Affairs [2002] FCAFC 194 ; (2002) 122 FCR 29 at [97] .
Case: Brock v Minister for Home Affairs (2008) 170 FCR 434
Outcome: applied
First, in my opinion, to relitigate the events of 27 March 2006 is an abuse of process and the pursuit of the claim for unlawful discrimination would involve a relitigation of the events of 27 March 2006. The Court has a wide jurisdiction to protect a party from an abuse of process constituted by an attempt to relitigate a case already disposed of: Walton v Gardiner [1993] HCA 77 ; (1993) 177 CLR 378 at 392-393 per Mason CJ, Deane and Dawson JJ. It seems clear on the authorities that a proceeding may constitute an abuse of process because it involves an attempt to relitigate a dispute already judicially determined even though none of the doctrines of res judicata , issue estoppel in the strict sense or an Anshun estoppel are made out: Coffey v Secretary, Department of Social Security [1999] FCA 375 ; (1999) 86 FCR 434 at 443 [25] ; Spalla v St George Motor Finance Ltd (No 6) [2004] FCA 1699 at [58] - [70] per French J; SZAJB v Minister for Immigration and Citizenship (2008) 168 FCR 410 at 423 [37]-[39] per French J (with whom Tracey J agreed at 437 [114]); Brock v Minister for Home Affairs (2008) 170 FCR 434 at 447 [74] per Lindgren and Tracey JJ. The claim for unlawful discrimination represents an attempt to relitigate the events of 27 March 2006 and is an abuse of process. I am mindful of the fact that, as events transpired, the claim for unlawful discrimination could not have been brought in the earlier proceeding, but that does not dissuade me from reaching the conclusion that I have expressed. The fact is that it was the applicant who decided to institute the earlier proceeding the day after the relevant events, to lodge his complaint with the Commission about three weeks after the relevant events, and to wait until 14 July 2006 before advising the Court that he had lodged a complaint with the Commission.
Case: Commonwealth Bank of Australia v Taylor [2008] VSC 3
Outcome: referred to
An alternative ground for the conclusion that I should not disqualify myself from hearing the present application on the ground of apparent bias is this. The test for apparent bias is well-known and it is "whether a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial and unprejudiced mind to the resolution of the question the judge is required to decide": Johnson v Johnson (2000) 201 CLR 488 at 492 [11] per Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ. In this case, if there is apparent bias, it takes the form of prejudgment. That form of bias was considered by the High Court in Livesey v The New South Wales Bar Association [1983] HCA 17 ; (1983) 151 CLR 288. In assessing that form of apparent bias in this case, the nature of the respondents' application is important. The respondents' application is not one in which I was called upon to make findings as to credit or, indeed, to make any findings of fact. The applicant's allegations of fact may be accepted for the purposes of the respondents' application. The questions raised by the respondents' application are, in substance, questions of law, and, having regard to all the circumstances, I do not think it can be said that a fair-minded lay observer might reasonably apprehend that I might not bring an impartial and unprejudiced mind to the question I am required to decide: Sydney Refractive Surgery Centre Pty Ltd v Federal Commissioner of Taxation (2007) 68 ATR 19 ; Commonwealth Bank of Australia v Taylor [2008] VSC 3.
Case: Coffey v Secretary, Department of Social Security [1999] FCA 375 ; (1999) 86 FCR 434
Outcome: applied
First, in my opinion, to relitigate the events of 27 March 2006 is an abuse of process and the pursuit of the claim for unlawful discrimination would involve a relitigation of the events of 27 March 2006. The Court has a wide jurisdiction to protect a party from an abuse of process constituted by an attempt to relitigate a case already disposed of: Walton v Gardiner [1993] HCA 77 ; (1993) 177 CLR 378 at 392-393 per Mason CJ, Deane and Dawson JJ. It seems clear on the authorities that a proceeding may constitute an abuse of process because it involves an attempt to relitigate a dispute already judicially determined even though none of the doctrines of res judicata , issue estoppel in the strict sense or an Anshun estoppel are made out: Coffey v Secretary, Department of Social Security [1999] FCA 375 ; (1999) 86 FCR 434 at 443 [25] ; Spalla v St George Motor Finance Ltd (No 6) [2004] FCA 1699 at [58] - [70] per French J; SZAJB v Minister for Immigration and Citizenship (2008) 168 FCR 410 at 423 [37]-[39] per French J (with whom Tracey J agreed at 437 [114]); Brock v Minister for Home Affairs (2008) 170 FCR 434 at 447 [74] per Lindgren and Tracey JJ. The claim for unlawful discrimination represents an attempt to relitigate the events of 27 March 2006 and is an abuse of process. I am mindful of the fact that, as events transpired, the claim for unlawful discrimination could not have been brought in the earlier proceeding, but that does not dissuade me from reaching the conclusion that I have expressed. The fact is that it was the applicant who decided to institute the earlier proceeding the day after the relevant events, to lodge his complaint with the Commission about three weeks after the relevant events, and to wait until 14 July 2006 before advising the Court that he had lodged a complaint with the Commission.
Case: Cox v Journeaux (No 2) [1935] HCA 48 ; (1935) 52 CLR 713
Outcome: referred to
In Cox v Journeaux (No 2) [1935] HCA 48 ; (1935) 52 CLR 713 , Dixon J (as his Honour then was) considered the meaning of personal injury or wrong done to the bankrupt within s 63(3) of the Bankruptcy Act 1924-1933 (Cth). His Honour applied Wilson v United Counties Bank Ltd [1920] AC 102 and described (at 721) the relevant test in the following terms: The test appears to be whether the damages or part of them are to be estimated by immediate reference to pain felt by the bankrupt in respect of his mind, body or character and without reference to his rights of property.
Case: Johnson v Johnson (2000) 201 CLR 488
Outcome: referred to
An alternative ground for the conclusion that I should not disqualify myself from hearing the present application on the ground of apparent bias is this. The test for apparent bias is well-known and it is "whether a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial and unprejudiced mind to the resolution of the question the judge is required to decide": Johnson v Johnson (2000) 201 CLR 488 at 492 [11] per Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ. In this case, if there is apparent bias, it takes the form of prejudgment. That form of bias was considered by the High Court in Livesey v The New South Wales Bar Association [1983] HCA 17 ; (1983) 151 CLR 288. In assessing that form of apparent bias in this case, the nature of the respondents' application is important. The respondents' application is not one in which I was called upon to make findings as to credit or, indeed, to make any findings of fact. The applicant's allegations of fact may be accepted for the purposes of the respondents' application. The questions raised by the respondents' application are, in substance, questions of law, and, having regard to all the circumstances, I do not think it can be said that a fair-minded lay observer might reasonably apprehend that I might not bring an impartial and unprejudiced mind to the question I am required to decide: Sydney Refractive Surgery Centre Pty Ltd v Federal Commissioner of Taxation (2007) 68 ATR 19 ; Commonwealth Bank of Australia v Taylor [2008] VSC 3.