mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Applicant M47/2004 v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 176
Outcome: referred to
Indeed, although it is unnecessary to decide the point, unlike his Honour, I would not accept that the substantive case that the appellants desire to make is a tenable one. The appellants' submission that they were denied procedural fairness because the Tribunal did not put all the inconsistencies mentioned in its reasons to them for comment before deciding the case against them does not disclose an arguable case. This is tolerably clear when regard is had to the well-recognized principles referred to in the first respondent's submissions: see [16] above and authorities such as Commissioner for ACT Revenue v Alphaone Pty Ltd (1994) 49 FCR 576 (" Alphaone "); Pilbara Aboriginal Land Council v Minister for Aboriginal and Torres Strait Islander Affairs [2000] FCA 1113 ; (2000) 103 FCR 539 (" Pilbara Aboriginal Land Council "); and Re Minister for Immigration and Multicultural and Indigenous Affairs; ex parte Cassim [2000] HCA 50 ; (2000) 175 ALR 209 (" Cassim "). It is well established that there will be no breach of procedural fairness when the Tribunal acts on information of which applicants should be aware: see Cassim at 214 [22]. It is apparent from the Tribunal's reasons that the appellants' legal representative was present throughout the hearing and was or should have been aware of the evidence that gave rise to the inconsistencies to which the Tribunal referred in its reasons. Further, the rules of procedural fairness do not require the Tribunal to notify an applicant of its mental processes or to provide an opportunity for it to comment on its findings before they are made: Alphaone at 591-592; also Pilbara Aboriginal Land Council at 555-557 [63]-[73]; and Applicant M47/2004 v Minister for Immigration and Multicultural and Indigenous Affairs [2006] FCA 176 at [14] - [16] . The suggested obligation for which the appellants would contend amounts in substance to saying that the Tribunal was under obligations of a kind that the authorities have rejected.
Case: Wong v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722
Outcome: referred to
Accordingly, nothing has been established that discloses relevant error in his Honour's finding (as to which see BC at [30]) that in this case there were no special circumstances of the kind that would prevent the estoppel: compare Wong v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 204 ALR 722 at [49], [61]-[64], [149].
Case: Anheuser-Busch v Bud&#283;jovick[yacute] Budvar (2002) 56 IPR 182
Outcome: cited
Natural Waters relies on the reputation of the 2003 and 2005 get-ups. The reputation that is relevant to the determination of liability in these proceedings is the reputation in the get-up that existed as at mid December 2005, the commencement of the conduct complained of ( Pub Squash Co at 861; Anheuser-Busch v Bud&#283;jovick[yacute] Budvar (2002) 56 IPR 182 at [237]). The vast majority of sales and promotional activities prior to mid December 2005 related to the 2003 get-up. It follows that, as at the relevant date, absent any evidence to the contrary and absent evidence of reputation specific to the 2005 get-up, Natural Waters' reputation in the 2005 get-up subsists in the features in common between the two versions and the overall impression that they both convey.
Case: Apand Pty Ltd v Kettle Chip Company Pty Ltd (1994) 52 FCR 474
Outcome: cited
Intent is not a necessary element of passing off or contravention of s 52 or s 53 of the Act although it may be relevant if it is shown that there was an intention to deceive ( Apand Pty Ltd v Kettle Chip Company Pty Ltd (1994) 52 FCR 474 at 496). This may give rise to an inference that the attempt succeeded and that consumers will be deceived ( Sydneywide at [117]). Where there is an intention to copy all or part of a competitor's get-up to obtain a market benefit, differences in get-up may have reduced significance. 33 As Weinberg and Dowsett JJ said in Sydneywide at [117]: ' [W] here a trader, having knowledge of a particular market, borrows aspects of a competitor's get-up, it is a reasonable inference that he or she believes that there will be a market benefit in so doing. Often, the obvious benefit will be the attraction of custom which would otherwise have gone to the competitor. It is an available inference from those propositions that the trader, with knowledge of the market, considered that such borrowing was "fitted for the purpose and therefore likely to deceive or confuse...". Of course, the trader may explain his or her conduct in such a way as to undermine the availability of that inference. Obviously, this reasoning will only apply where there are similarities in get-up which suggest borrowing .' (my emphasis) 34 Further, powerful though the inference that their Honours identified in Sydneywide may be, ' mere proof of the fact that a person has deliberately copied the name or get-up of a trade rival does not of itself establish a contravention of s 52 or a passing off of goods or services ' ( Apand at 496). The Court must still be satisfied that the consequence is a likelihood of deception or a passing off of one product for another.
Case: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2006) 228 ALR 719
Outcome: cited
Dayals criticises the absence of expert evidence concerning the reputation of Natural Waters or Fiji Water and, in particular, the absence of survey evidence as to the reputation in, and public recognition of, the "constellation of features" relied upon by Natural Waters. There is no suggestion that such survey evidence was obtained and not adduced; the evidence is that Natural Waters has not engaged market research in this area. Natural Waters has adduced evidence of the sales, marketing and promotion of Fiji Water. Natural Waters submits, with reference to Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2006) 228 ALR 719 at [11] [12] that expert evidence of reputation or consumer association would be unhelpful and inadmissible as it could amount to no more than an opinion on a matter that is not outside the experience of ordinary persons. As a general proposition, evidence as to the reputation of an applicant's packaging or get-up in the mind of the consumer may be adduced ( Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 at 387 per Gummow J with whom Black CJ and Lockhart J agreed). The evidence ruled inadmissible in Cadbury seemed to concern the likelihood of deception rather than reputation (at [5]) and evidence of consumer recognition, in the form of a "chocolate sensory study" was admitted ( Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136 at [69]).
Case: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136
Outcome: cited
Dayals criticises the absence of expert evidence concerning the reputation of Natural Waters or Fiji Water and, in particular, the absence of survey evidence as to the reputation in, and public recognition of, the "constellation of features" relied upon by Natural Waters. There is no suggestion that such survey evidence was obtained and not adduced; the evidence is that Natural Waters has not engaged market research in this area. Natural Waters has adduced evidence of the sales, marketing and promotion of Fiji Water. Natural Waters submits, with reference to Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (2006) 228 ALR 719 at [11] [12] that expert evidence of reputation or consumer association would be unhelpful and inadmissible as it could amount to no more than an opinion on a matter that is not outside the experience of ordinary persons. As a general proposition, evidence as to the reputation of an applicant's packaging or get-up in the mind of the consumer may be adduced ( Interlego AG v Croner Trading Pty Limited (1992) 39 FCR 348 at 387 per Gummow J with whom Black CJ and Lockhart J agreed). The evidence ruled inadmissible in Cadbury seemed to concern the likelihood of deception rather than reputation (at [5]) and evidence of consumer recognition, in the form of a "chocolate sensory study" was admitted ( Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 4) (2006) 229 ALR 136 at [69]).
Case: Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851
Outcome: cited
The fact that Natural Waters may establish reputation in the Fiji Water get-up does not mean that it has a monopoly over each aspect of that get-up. The goods are ordinary articles of consumption. By their nature, goods of different manufacturers will bear some resemblance to each other. Water is sold in bottles, frequently in transparent bottles and commonly with blue caps. The marks, brands and labels play an important part in distinguishing the goods of one manufacturer from those of another ( Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 at 200 per Gibbs CJ). Whether the reason for the distinctiveness of Fiji Water is one or more particular aspects of its packaging or the totality of its get-up, the offending product will only mislead or deceive consumers where it has taken the distinctive aspect(s) or so much of the totality of the get-up that the overall impression or the "gestalt" of the Fiji Water brand ([38] above) is adopted. If Dayals adopted an aspect of the get-up for its product, that fact alone does not dictate a finding of passing off ( Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 867; Cadbury (No 4) at [83]). 57 Natural Waters relies on the reputation of the 2003 and 2005 get-ups. The reputation that is relevant to the determination of liability in these proceedings is the reputation in the get-up that existed as at mid December 2005, the commencement of the conduct complained of ( Pub Squash Co at 861; Anheuser-Busch v Bud&#283;jovick[yacute] Budvar (2002) 56 IPR 182 at [237]). The vast majority of sales and promotional activities prior to mid December 2005 related to the 2003 get-up. It follows that, as at the relevant date, absent any evidence to the contrary and absent evidence of reputation specific to the 2005 get-up, Natural Waters' reputation in the 2005 get-up subsists in the features in common between the two versions and the overall impression that they both convey.
Case: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45
Outcome: applied
The parties agree that the principles in Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (2000) 202 CLR 45 apply in ascertaining whether there has been misleading or deceptive conduct in contravention of the Act or the Fair Trading Act . The subject matter of this litigation is bottled water. The conduct is tested as against the ordinary or reasonable member of the class of prospective purchasers of this product ( Campomar at [103]). A potential purchaser does not come to a decision with the benefit of argument as to the similarities and differences between two get-ups but is likely to make his or her decision in a relatively short period of time and in conditions which may vary ( Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 at [133]). 44 Section 52 and its equivalent provision in the Fair Trading Act provide wider protection from deception ( Campomar at [97]) but neither party has sought to rely on the distinction between the elements necessary to establish a contravention of s 52 and those to establish passing off. The question is what Island Chill would convey to a hypothetical ordinary and reasonable member of the class constituted by prospective purchasers of bottled water and whether that person would be mislead or deceived, or be likely to be misled or deceived, to conclude that Island Chill had sponsorship, association, approval or connection with Fiji Water or Natural Waters that it does not have ( Campomar at [102] [105]).
Case: Collins Debden Pty Ltd v Cumberland Stationery Co Pty Ltd (No 2) [2005] FCA 1398
Outcome: cited
The reputation which must be proved in a case such as this is that the get-up, packaging, shape, or trade dress relied upon is associated by consumers with the applicant's product. It takes a strong case to establish a reputation of this nature ( Interlego at 386) as consumers will not necessarily associate a get-up with the applicant's product ( Collins Debden Pty Ltd v Cumberland Stationery Co Pty Ltd (No 2) [2005] FCA 1398 at [33] to [34] per Lindgren J). The requisite reputation will more readily be found where the get-up is unique or striking rather than descriptive, mundane, merely functional, or in common use.
Case: Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298
Outcome: cited
The evidence of the design evolution of the Island Chill get-up was addressed in detail during the cross-examination of Mr Dayal. There is little direct documentary evidence of the way in which that evolution took place. Natural Waters draws attention to the lack of evidence of instructions to the designers, including evidence as to the use or otherwise to be made of the 2003 get-up of which Mr Dayal was aware and the absence of email communication over the relevant time between Mr Dayal and the designers. Particular criticism is made of the absence of additional witnesses and of the adequacy of Dayals' discovery. In these circumstances, Natural Waters submits that the inference should be drawn that none of this evidence would have assisted Dayals' case ( Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298). 72 Mr Dayal's evidence is that he was responsible for the get-up of Island Chill. While I accept that others made suggestions, the responsibility to "sign-off" on the get-up was his. I accept his evidence as to the events which occurred. No application for further and better discovery was made and I do not accept that Dayals failed to discover all relevant documents in their possession or failed to comply with their obligations of discovery. 73 Natural Waters and Dayals promote their products on the internet. Natural Waters invites the Court to draw inferences from the similarities between Island Chill's website (www.islandchill.com) and the Fiji Water website (www.fijiwater.com).
Case: Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152
Outcome: cited
The determination of passing off and of contravention of the Act and the Fair Trading Act is assessed as a matter of impression based on recollection of the Fiji Water get-up and the Island Chill get-up. Whether a get-up so nearly resembles another as to be deceptive or likely to deceive is a question for the Court ( Interlego at 387). The packaging must be viewed as a whole ( Sterling Winthrop Pty Limited v R &amp; C Products Pty Ltd (1994) ATPR 41,308 at 42,126). It is not a question of comparing the bottles side by side and engaging in a minute and detailed analysis of the similarities and differences. The observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1963) 109 CLR 407 at 415 as to the assessment of deceptive similarity in a trade mark context are apposite. The goods in question are inexpensive consumer goods: bottled water, where the item is purchased for a relatively small price without long consideration and where the consumer is unlikely to engage in lengthy or detailed comparison of the respective get-ups ( Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152 at 161). A consumer choosing between bottles of water on display would be likely to base the choice of purchase of his or her favoured bottled water product largely on recognition of the packaging.
Case: McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102
Outcome: cited
In McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102 at [81] to [88], Kenny J discussed the evidence necessary or sufficient to establish reputation in a trade mark. Her Honour pointed out that evidence of sales and advertising may be sufficient to establish reputation despite the absence of any direct evidence of consumer appreciation of the mark, as opposed to the product: ' public awareness of and regard for a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by sales volume, among other things ' (at [86]). Such factors may also establish the reputation necessary to found a case for passing off and contravention of s 52 of the Act (for example, Pacific Publications Pty Ltd v Next Publishing Pty Ltd (2005) 222 ALR 127 at [12] to [14]).
Case: Pacific Publications Pty Ltd v Next Publishing Pty Ltd (2005) 222 ALR 127
Outcome: cited
In McCormick &amp; Co Inc v McCormick (2000) 51 IPR 102 at [81] to [88], Kenny J discussed the evidence necessary or sufficient to establish reputation in a trade mark. Her Honour pointed out that evidence of sales and advertising may be sufficient to establish reputation despite the absence of any direct evidence of consumer appreciation of the mark, as opposed to the product: ' public awareness of and regard for a mark tends to correlate with appreciation of the products with which the mark is associated, as evidenced by sales volume, among other things ' (at [86]). Such factors may also establish the reputation necessary to found a case for passing off and contravention of s 52 of the Act (for example, Pacific Publications Pty Ltd v Next Publishing Pty Ltd (2005) 222 ALR 127 at [12] to [14]).
Case: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191
Outcome: cited
The fact that Natural Waters may establish reputation in the Fiji Water get-up does not mean that it has a monopoly over each aspect of that get-up. The goods are ordinary articles of consumption. By their nature, goods of different manufacturers will bear some resemblance to each other. Water is sold in bottles, frequently in transparent bottles and commonly with blue caps. The marks, brands and labels play an important part in distinguishing the goods of one manufacturer from those of another ( Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 at 200 per Gibbs CJ). Whether the reason for the distinctiveness of Fiji Water is one or more particular aspects of its packaging or the totality of its get-up, the offending product will only mislead or deceive consumers where it has taken the distinctive aspect(s) or so much of the totality of the get-up that the overall impression or the "gestalt" of the Fiji Water brand ([38] above) is adopted. If Dayals adopted an aspect of the get-up for its product, that fact alone does not dictate a finding of passing off ( Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 867; Cadbury (No 4) at [83]).
Case: Reckitt &amp; Colman Products Ltd v Borden Inc (1990) 17 IPR 1
Outcome: cited
Whether Dayals is passing off its goods as those of Natural Waters depends on the reputation attached to Fiji Water's identifying get-up so that it is distinctive of bottled water sold by Natural Waters; a representation by Dayals leading or likely to lead consumers to believe that Island Chill is the product of Natural Waters; and actual or probable damage ( Reckitt &amp; Colman Products Ltd v Borden Inc (1990) 17 IPR 1 at 7 per Lord Oliver; TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 at [25]; Sydneywide at [60]). Where a get-up of a product is distinctive of that product and its trade source, there may be passing off and contravention of the Act and the Fair Trading Act even though the products bear different brands or labels.
Case: Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) 53 IPR 481
Outcome: cited
The primary judge concluded that Sydneywide had intentionally adopted the Red Bull get-up for its packaging for the purpose of appropriating part of its trade or reputation and that it had selected a get-up which would "sail as close to the wind" as it thought expedient ( Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) 53 IPR 481 at [47]). That finding formed an important basis for his Honour's conclusion that there was passing off and breach of s 52 of the Act as it led to the finding that there was scope for a purchaser to believe that both products emanated from the same "manufacturing stable", especially where the different brand names were not readily discernible ( Red Bull at [69], cited in Sydneywide at [47]). 40 Weinberg and Dowsett JJ, with whom Branson J agreed discussed, at [55] and following, the elements of passing off and the relevance of the intent of the party accused. Their Honours concluded (at [62]) that there is no requirement that there be an actual, subjective intention to mislead; the misrepresentation need only be likely to lead the public to believe that the goods are those of the applicant. 41 There were differences in the get-up and the brand name. The relevance of the differences depended on the opportunity which a potential purchaser would have to observe those distinctions (at [72]). The parties adduced expert evidence before the primary judge of the likely behaviour of shoppers or consumers with respect to the products there in dispute. The evidence, as well as "experience and common sense", suggested that relatively little attention would be given to the choice of a particular item for removal from the refrigerator for purchase (at [74]). 42 Weinberg and Dowsett JJ considered at [107] the difference between and prominence of the brand names. The brand names were said to have similar associated connotations. Their Honours said that, where the purchaser may have in mind the connotations of the name rather than the name itself, such similarities may tend to undermine what might otherwise be a basis for clear distinction. Similar colour combinations and the diagonal thrust of design, notwithstanding the fact that other minor players in the market traded under similar colours, affected the Court's conclusion that there was a capacity to deceive. 43 Natural Waters' case as pleaded against Artesian Waters alleges contraventions of ss 52 , 53 (c) and 53 (d) of the Act and passing off. A separate case for s 53(c) and (d) was not pursued in submissions. It is alleged against Mr Dayal and Mr Pranesh Dayal that they have: &#8226; been knowingly concerned, within the meaning of s 75B of the Act, in the alleged contraventions of the Act by Artesian Waters; &#8226; contravened the equivalent provisions of the Fair Trading Act (ss 42, 44(e) and 44(f)); and &#8226; engaged in passing off as joint tortfeasors with Artesian Waters.
Case: Sterling Winthrop Pty Limited v R &amp; C Products Pty Ltd (1994) ATPR 41,308
Outcome: cited
The determination of passing off and of contravention of the Act and the Fair Trading Act is assessed as a matter of impression based on recollection of the Fiji Water get-up and the Island Chill get-up. Whether a get-up so nearly resembles another as to be deceptive or likely to deceive is a question for the Court ( Interlego at 387). The packaging must be viewed as a whole ( Sterling Winthrop Pty Limited v R &amp; C Products Pty Ltd (1994) ATPR 41,308 at 42,126). It is not a question of comparing the bottles side by side and engaging in a minute and detailed analysis of the similarities and differences. The observations of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75 ; (1963) 109 CLR 407 at 415 as to the assessment of deceptive similarity in a trade mark context are apposite. The goods in question are inexpensive consumer goods: bottled water, where the item is purchased for a relatively small price without long consideration and where the consumer is unlikely to engage in lengthy or detailed comparison of the respective get-ups ( Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152 at 161). A consumer choosing between bottles of water on display would be likely to base the choice of purchase of his or her favoured bottled water product largely on recognition of the packaging.