mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Pianotist Co's Application (1906) 23 RPC 774
Outcome: applied
The key issue under s 60 is a comparison between the GLENN OAKS mark and marks used before its priority date. The approach in Pianotist Co's Application (1906) 23 RPC 774 at 777 is oft cited. There, Parker J said: "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all of the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks are used in a normal way as a trade mark for the goods of the respective owners of the marks." 80 Beck Koller at 83 indicates that family marks are only to be regarded as one of the "surrounding circumstances which is required to be taken into account" when making a comparison. Pianotist , as approved in High Court authorities, remains the primary test of deceptive similarity. Therefore, the existence of family marks is only a relevant factor in the totality of the assessment of whether there is a likelihood of deception or confusion. In this case, it supports the respondent.
Case: Cooper Engineering Co. Pty Ltd v Sigmund Pumps Limited [1952] HCA 15 ; (1952) 86 CLR 536
Outcome: applied
That passage was cited with approval in Cooper Engineering Co. Pty Ltd v Sigmund Pumps Limited [1952] HCA 15 ; (1952) 86 CLR 536 at 538 and in Woollen Mills at 658, where Dixon and McTiernan JJ described the comparative analysis as follows: "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 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 course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight."
Case: Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485
Outcome: applied
In Coca-Cola Co v All-Fect Distributors Ltd (All-Fect) (1998) 43 IPR 47 at [41], albeit an infringement case, the Full Court said: "...the likelihood of deception or confusion involves an assessment of what would be the probable visual impression on customers or potential customers which would be produced as a result of the "notional normal and fair use" of the marks. See Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485 at 493." 70 The GLENN OAKS mark has two elements GLENN and OAKS. Despite being a single word, the GLENFIDDICH mark also has two elements. The first element of both marks is substantially the same - GLENN and GLEN. It is the second that requires closer attention. OAKS and FIDDICH are quite different. &#8226; OAKS and FIDDICH do not have similar meanings, if the latter has one at all. In any event, confusion is mitigated when one word has no readily apparent meaning: Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485. &#8226; OAKS and FIDDICH are quite different in a visual sense: cf Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 28 IPR 193. &#8226; OAKS and FIDDICH are aurally different. The two syllables in FIDDICH is a further distinction between the marks.
Case: Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 28 IPR 193
Outcome: applied
The GLENN OAKS mark has two elements GLENN and OAKS. Despite being a single word, the GLENFIDDICH mark also has two elements. The first element of both marks is substantially the same - GLENN and GLEN. It is the second that requires closer attention. OAKS and FIDDICH are quite different. &#8226; OAKS and FIDDICH do not have similar meanings, if the latter has one at all. In any event, confusion is mitigated when one word has no readily apparent meaning: Gardenia Overseas Pty Ltd v The Garden Co Ltd (1994) 29 IPR 485. &#8226; OAKS and FIDDICH are quite different in a visual sense: cf Wingate Marketing Pty Ltd v Levi Strauss &amp; Co (1994) 28 IPR 193. &#8226; OAKS and FIDDICH are aurally different. The two syllables in FIDDICH is a further distinction between the marks.
Case: McDonalds Corporation v Bellamy (2004) 62 IPR 133
Outcome: cited
As I understood the submission it was that use of the GLENN OAKS mark is likely to result in confusion because a family of 'GLEN' marks exists in the market. The applicant relied upon a Trade Mark Office decision in McDonalds Corporation v Bellamy (2004) 62 IPR 133 at 139 to support the submission. There, the delegate said: "[In] the line of 'family' trade mark cases...the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent's goods or services that the use by another person of a trade mark incorporating that element, would deceive or confuse." 78 In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J &amp; J Snack Foods Corp v McDonald's Corp 932 F2d 1460 (Fed Cir 1991) and American Standard Inc v Scott &amp; Fetzer Co 200 USPQ 457 461 (TTAB 1978), support the distinction referred to at [77]-[78].
Case: Beck Koller &amp; Co (1947) 64 RPC 76
Outcome: applied
The family marks argument is not persuasive. The applicant is not the registered owner of all the 'Glen' marks. Beck Koller &amp; Co (1947) 64 RPC 76 at 83 provides guidance, in dicta, as to how family marks should be examined: "When an application for registration is before the Registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors. ... If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a 'series' of marks and judge the conflict between the applicants' mark and each of the proprietor's mark with this consideration in mind. ... On the other hand, if the registered marks were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant's mark with the registered marks, ... the presence of marks on the register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account. " (Emphasis added) 77 The "applicant" referred to in that passage is the applicant for the trade mark. So if the marks were owned by the same party, that would have gone against the applicant, but where there were a number of prior registered marks belonging to different parties, that was in the applicant's favour. In the present case, the respondent is the applicant for the trade mark. The passage above cuts in favour of the GLENN OAKS mark. 80 Beck Koller at 83 indicates that family marks are only to be regarded as one of the "surrounding circumstances which is required to be taken into account" when making a comparison. Pianotist , as approved in High Court authorities, remains the primary test of deceptive similarity. Therefore, the existence of family marks is only a relevant factor in the totality of the assessment of whether there is a likelihood of deception or confusion. In this case, it supports the respondent.
Case: J &amp; J Snack Foods Corp v McDonald's Corp , 932 F2d 1460 (Fed Cir 1991)
Outcome: cited
In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J &amp; J Snack Foods Corp v McDonald's Corp 932 F2d 1460 (Fed Cir 1991) and American Standard Inc v Scott &amp; Fetzer Co 200 USPQ 457 461 (TTAB 1978), support the distinction referred to at [77]-[78].
Case: American Standard Inc v Scott &amp; Fetzer Co , 200 USPQ 457 461 (TTAB 1978)
Outcome: cited
In both Woolworths Metro and McDonalds there was only one registered owner of the relevant trade marks. Several United States authorities, including J &amp; J Snack Foods Corp v McDonald's Corp 932 F2d 1460 (Fed Cir 1991) and American Standard Inc v Scott &amp; Fetzer Co 200 USPQ 457 461 (TTAB 1978), support the distinction referred to at [77]-[78].
Case: Powell's Trade Mark (1893) 10 RPC 195
Outcome: cited
As a matter of commonsense and consistency with the purpose of the Act, the respondent's position is to be preferred. The function of a trade mark is to indicate the origin of the goods: Powell's Trade Mark (1893) 10 RPC 195 at 200. If the evidence establishes a common characteristic well recognised in marks in use by different owners in the particular trade (for example 'Glen'), this would reduce the chance of confusion as the consumer is aware that different owners maintain different trade marks (albeit names starting with the same word or letters). The consumer's attention is, therefore, likely to be more attuned to the second element in the relevant mark. For example OAKS in GLENN OAKS or LIVET in GLENLIVET. In particular, awareness of the second element would be a matter of habit for involved scotch whisky consumers.
Case: Erven Warnink BV v J Townsend &amp; Sons Hull Ltd [1980] RPC 31
Outcome: referred to
Passing off is a tort that does not require proof of intent to deceive. However, there must be at least a likelihood of deception: Erven Warnink BV v J Townsend &amp; Sons Hull Ltd [1980] RPC 31 at [93] and [99]. For the reasons given in dealing with the earlier grounds, that has not been established. 85 The application must be dismissed. 86 The delegate said that the applicant's opposition was justified. The applicant was correct in saying that use of the mark on the goods for which the application was accepted was likely to cause confusion. On the other hand the respondent's amendment to his statement of goods following the hearing was sufficient to eliminate that likelihood. As both parties thus had a measure of success, the delegate considered they should bear their own costs. That is also the view to which I have come. The cross appeal should be dismissed. I certify that the preceding eighty-six (86) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg. Associate: Dated: 2 November 2007 Counsel for the Applicant: Ms S Strong SC Solicitor for the Applicant: Corrs Chambers Westgarth Counsel for the Respondent: Ms HMJ Rofe Date of Hearing: 3-4 September 2007 Date of Judgment: 2 November 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1649.html
Case: Taco Co (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Outcome: referred to
While a tendency to cause confusion will generally not satisfy s 52 or s 53, in particular circumstances such as that illustrated by Taco Co (Aust) Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 201, it may. However, for the reasons given in dealing with the earlier grounds, there is no such tendency here.
Case: Plaintiff S157/2002 v Commonwealth of Australia [2003] HCA 2 ; (2003) 211 CLR 476
Outcome: cited
The Minister's decision is a "privative clause decision" within the meaning of s 474 of the Act. This Court cannot set it aside except for jurisdictional error: see Plaintiff S157/2002 v Commonwealth of Australia [2003] HCA 2 ; (2003) 211 CLR 476 at 506-508 and 511 per Gaudron, McHugh, Gummow, Kirby and Hayne JJ. 5 For the reasons I am about to state, I would dismiss this application. 6 Mr Yalniz, who is in his mid forties, is a citizen of Turkey. He arrived in Australia on 18 July 1984. He has been married three times and has nine children from two of these marriages.
Case: Minister for Immigration and Multicultural and Indigenous Affairs v Lorenzo [2005] FCAFC 13
Outcome: cited
It is unnecessary in this case to consider whether or not the Minister was bound to take into account the best interests of Mr Yalniz's children in deciding to cancel his visa. For present purposes, I am prepared to assume that, if the Minister failed to have regard to the interests of his children, her decision would have been affected by jurisdictional error. This assumption may rest on any one of a number of bases: see, for example, Minister for Immigration and Multicultural and Indigenous Affairs v Lorenzo [2005] FCAFC 13 at [57] per Wilcox, Sackville and Finn JJ. The difficulty faced by the applicant is in showing that the Minister failed to have regard the best interests of the children as a primary consideration in a manner the law accepts.
Case: Sebastian v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 31
Outcome: referred to
There was no need in this case for the Minister to go through a list of factors that might have informed her conclusion with regard to Mr Yalniz's children. Sometimes this may be appropriate but in other cases it may be sufficient, as in this case, to adopt an approach that assumes the relevant factors point to one conclusion that it will be in the best interests of children to remain with their parents: compare Sebastian v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 31 at [15] per Tamberlin, Kiefel and Emmett JJ; Kaur v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 70 at [20] - [22] per Nicholson, Jacobson and Lander JJ; and Re Minister for Immigration and Multicultural and Indigenous Affairs; ex parte Palme [2003] HCA 56 ; (2003) 216 CLR 212 at 221 per Gleeson CJ, Gummow and Heydon JJ and 238 per Kirby J. The fact that she did not make a list of factors (e.g., hardship and children's development) does not in this case make good the proposition that she did not direct her mind to the matters that arose on the information before her. Having regard to what I have already stated, I think it plain enough that she discharged her obligation fully in this regard.
Case: Kaur v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 70
Outcome: referred to
There was no need in this case for the Minister to go through a list of factors that might have informed her conclusion with regard to Mr Yalniz's children. Sometimes this may be appropriate but in other cases it may be sufficient, as in this case, to adopt an approach that assumes the relevant factors point to one conclusion that it will be in the best interests of children to remain with their parents: compare Sebastian v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 31 at [15] per Tamberlin, Kiefel and Emmett JJ; Kaur v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 70 at [20] - [22] per Nicholson, Jacobson and Lander JJ; and Re Minister for Immigration and Multicultural and Indigenous Affairs; ex parte Palme [2003] HCA 56 ; (2003) 216 CLR 212 at 221 per Gleeson CJ, Gummow and Heydon JJ and 238 per Kirby J. The fact that she did not make a list of factors (e.g., hardship and children's development) does not in this case make good the proposition that she did not direct her mind to the matters that arose on the information before her. Having regard to what I have already stated, I think it plain enough that she discharged her obligation fully in this regard.
Case: Re Minister for Immigration and Multicultural and Indigenous Affairs; ex parte Palme [2003] HCA 56 ; (2003) 216 CLR 212
Outcome: referred to
There was no need in this case for the Minister to go through a list of factors that might have informed her conclusion with regard to Mr Yalniz's children. Sometimes this may be appropriate but in other cases it may be sufficient, as in this case, to adopt an approach that assumes the relevant factors point to one conclusion that it will be in the best interests of children to remain with their parents: compare Sebastian v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 31 at [15] per Tamberlin, Kiefel and Emmett JJ; Kaur v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCAFC 70 at [20] - [22] per Nicholson, Jacobson and Lander JJ; and Re Minister for Immigration and Multicultural and Indigenous Affairs; ex parte Palme [2003] HCA 56 ; (2003) 216 CLR 212 at 221 per Gleeson CJ, Gummow and Heydon JJ and 238 per Kirby J. The fact that she did not make a list of factors (e.g., hardship and children's development) does not in this case make good the proposition that she did not direct her mind to the matters that arose on the information before her. Having regard to what I have already stated, I think it plain enough that she discharged her obligation fully in this regard.
Case: Djalic v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 151 ; (2004) 139 FCR 292
Outcome: referred to
There was in this case no obligation to make further inquiries concerning the children. There was nothing to create such an obligation: compare Djalic v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 151 ; (2004) 139 FCR 292 at 314 per Tamberlin, Sackville and Stone JJ; and Taylor v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 208 at [19] per Marshall, Mansfield and Siopis JJ. Although the information about the best interests of the children was limited, it made out Mr Yalniz's case, by explaining his relationship with them and the loss they would suffer if deported. Mr Yalniz might have provided more detailed information had he wished, but he did not do so. As I have said, the Minister plainly took account of the information that she had been given.
Case: Taylor v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 208
Outcome: referred to
There was in this case no obligation to make further inquiries concerning the children. There was nothing to create such an obligation: compare Djalic v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 151 ; (2004) 139 FCR 292 at 314 per Tamberlin, Sackville and Stone JJ; and Taylor v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 208 at [19] per Marshall, Mansfield and Siopis JJ. Although the information about the best interests of the children was limited, it made out Mr Yalniz's case, by explaining his relationship with them and the loss they would suffer if deported. Mr Yalniz might have provided more detailed information had he wished, but he did not do so. As I have said, the Minister plainly took account of the information that she had been given.
Case: Applicant A v Minister for Immigration and Ethnic Affairs [1997] HCA 4 ; (1997) 190 CLR 225
Outcome: applied
Earlier in its reasons the Tribunal had stated conformably with a line of authority adopting and endorsing observations of Brennan CJ in Applicant A v Minister for Immigration and Ethnic Affairs [1997] HCA 4 ; (1997) 190 CLR 225 at 233 that "the persecution must have an official quality, in the sense that it is official, or officially tolerated or uncontrollable by the authorities of the country of nationality": see SZDWR v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2006] FCAFC 36 at [18] .
Case: SZDWR v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2006] FCAFC 36
Outcome: cited
Earlier in its reasons the Tribunal had stated conformably with a line of authority adopting and endorsing observations of Brennan CJ in Applicant A v Minister for Immigration and Ethnic Affairs [1997] HCA 4 ; (1997) 190 CLR 225 at 233 that "the persecution must have an official quality, in the sense that it is official, or officially tolerated or uncontrollable by the authorities of the country of nationality": see SZDWR v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2006] FCAFC 36 at [18] .
Case: VDAU v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCAFC 32
Outcome: applied
Accepting that a jurisdictional error can be inferred from a conclusion reached despite factual findings, this is not a matter in which such an inference can be drawn. Before indicating why this is so it is appropriate to refer to some well accepted principles that are applied when challenging on grounds of jurisdictional error determinations that a person does not satisfy the definition of a refugee for the purposes of the Migration Act. (i) Whether particular conduct of which a person is shown to have a well-founded fear is sufficiently serious and significant as to constitute persecution properly understood, is a question of fact and degree for the Tribunal not the Court: VDAU v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCAFC 32 at [24] ; see also Raheem v Minister for Immigration &amp; Multicultural Affairs [2001] FCA 940 at [31] . (ii) Whether threats of future harm are genuine and are sufficiently serious as to be capable of amounting to persecution (if intended to be acted upon and not merely to intimidate) are likewise questions of fact and degree for the Tribunal: VBAS v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2005] FCA 212 ; (2005) 216 ALR 307 at [20] - [28] . (iii) Where the Tribunal has correctly formulated the test to be applied, a court should not take the view that the Tribunal did not apply the correct test unless this appears clearly from what it has written: Minister for Immigration and Ethnic Affairs v Wu Shan Liang [1996] HCA 6 ; (1996) 185 CLR 259 at 271. (iv) The ultimate question for the Tribunal looks to the future and requires it to consider whether the fear of persecution upon return to the country in question is well founded: M66 of 2002 v Minister for Immigration &amp; Multicultural &amp; Indigenous Affairs [2004] FCAFC 112 at [13] . (v) The Tribunal is not required, as an essential part of reaching its conclusion on whether a person has a well-founded fear of persecution, to characterise past acts complained of as persecution: Ratnayake v Minister for Immigration &amp; Multicultural Affairs [1998] FCA 1141. What has happened in the past may explain a present subjective fear and be a matter to be taken into account in the predictive exercise of determining whether there is a "real chance" of persecution for a Convention reason if that person is returned: Ratnayake ; Applicant A233 of 2003 v Refugee Review Tribunal [2004] FCA 666 at [20] .