mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Minister for Immigration and Multicultural and Indigenous Affairs v Yusuf [2001] HCA 30 ; (2001) 206 CLR 323
Outcome: referred to
The appellant also submitted that the Tribunal fell into jurisdictional error by failing to seek an updated opinion from the MOC, and relies on Minister for Immigration and Multicultural and Indigenous Affairs v Yusuf [2001] HCA 30 ; (2001) 206 CLR 323 at 351 to support this proposition. Given my finding above that the error in this case lies in the Tribunal's taking as correct an opinion of the MOC which, according to the Full Court's construction of reg 2.25A(3), should not have been taken as correct, it is not necessary to make a finding on the appellant's alternative submission. If it were necessary, however, I would observe that, in my view, a failure by the Tribunal to make further inquiries does not, per se and in the absence of a statutory directive to make further inquiries, constitute jurisdictional error: see Minister for Immigration and Multicultural and Indigenous Affairs v SGLB [2004] HCA 32 ; (2004) 207 ALR 12 at 21-22. Some extra element is needed to demonstrate that the decision of the Tribunal is affected by an erroneous interpretation or application of law. In this case, that element, and consequently the source of the Tribunal's error, is supplied by the circumstances I have discussed above.
Case: Barton v Minister for Foreign Affairs [1984] FCA 89 ; (1984) 2 FCR 463
Outcome: followed
One such factor is the ability to register a judgment for costs in the overseas jurisdiction. In resisting the Motion for security, the Applicants contend that the ability to register a judgment overseas has the consequence that such a judgment " will be as effective ... as it would be in the case of a plaintiff who did not ordinarily reside " overseas: Barton v Minister for Foreign Affairs [1984] FCA 89 ; (1984) 2 FCR 463. That was also an application for security and the case was said to raise " an important question as to the ambit of the discretion of the court to make an order for security for the payment of costs in a case where the applicant is ordinarily resident outside Australia ". Morling J reviewed the authorities, including the decision of Rath J in Connop v Varena Pty Ltd [1984] 1 NSWLR 71 and concluded at 469 70: In Connop v Varena Pty Ltd ... Rath J dealt with a somewhat similar case. In that case the plaintiff was ordinarily resident in New Zealand. There is legislation in force in New Zealand which makes it possible to enforce (by registration in that country) a judgment of the Supreme Court of New South Wales. His Honour said that an order for costs against the plaintiffs in that case could be register without difficulty in New Zealand, although there might be some delay inconvenience and expense arising from registration of the judgment. Having referred to those matters he said: "But apart from this I see no difference in regard to the costs of the first and second defendants between the circumstances of this case and those of a similar case where a plaintiff is not ordinarily resident outside this State. With only minor reservations, a judgment for costs will be as effective against the plaintiffs here as it would be in the case of a plaintiff who did not ordinarily reside outside this State: see Re Percy and Kelly (etc) Co (1876) 2 Ch D 531 , per Jessel MR, at 531." His Honour made an order for security for costs, fixing the amount of security at $750. This sum was apparently an estimate of the cost of registration and execution in New Zealand of a judgment for costs in the Supreme Court of New South Wales in favour of the defendants in the action before him. Particular reliance is placed by the Applicants upon the approach pursued by Rath J.
Case: Bryan E Fencott &amp; Associates v Eretta Pty Ltd (1987) 16 FCR 497
Outcome: followed
Estimates as to the totality of all costs from the outset and including future costs varied from $313,027.31 to $418,294.76. It may be accepted that an order for security could now be made extending to all costs, including costs incurred prior to the application for security being made: Bryan E Fencott &amp; Associates v Eretta Pty Ltd (1987) 16 FCR 497 at 515 per French J. It may further be accepted that considerable costs have been incurred to date in the preparation of this case for hearing. Indeed, with few exceptions, it is understood that the entirety of the evidence of the Applicants and the Respondent has been filed or is ready for filing. The case has been set down for hearing for two weeks commencing on 21 July 2008.
Case: CBS Records Australia Ltd v Telmark Teleproducts (Aust) Pty Ltd (1987) 72 ALR 270
Outcome: followed
But, as that Rule makes apparent, the fact that an applicant is ordinarily resident outside Australia is but one matter which the Court may take into account when exercising the discretion and the fact of overseas residence is not in itself decisive as to the manner in which the discretion is to be exercised. Bowen CJ in CBS Records Australia Ltd v Telmark Teleproducts (Aust) Pty Ltd (1987) 72 ALR 270 at 284 5 has thus observed: Counsel for the respondent also asked for an order for security for costs to be made against CBS (UK), CBS Inc and Mindbangles Inc in accordance with O 28, r 3(1)(a). This rule certainly gives a discretion to the court to make an order for security. However, it appears to me that it is a discretion to be exercised upon rational grounds and any party applying for security carries the onus of establishing a case showing that security should be granted. The fact that an applicant is ordinarily resident outside Australia is a precondition to an application under that part of the rule but is not sufficient in itself, in my view, to induce the court to exercise its discretion to make an order...
Case: Connop v Varena Pty Ltd (1984) 1 NSWLR 71
Outcome: followed
One such factor is the ability to register a judgment for costs in the overseas jurisdiction. In resisting the Motion for security, the Applicants contend that the ability to register a judgment overseas has the consequence that such a judgment " will be as effective ... as it would be in the case of a plaintiff who did not ordinarily reside " overseas: Barton v Minister for Foreign Affairs [1984] FCA 89 ; (1984) 2 FCR 463. That was also an application for security and the case was said to raise " an important question as to the ambit of the discretion of the court to make an order for security for the payment of costs in a case where the applicant is ordinarily resident outside Australia ". Morling J reviewed the authorities, including the decision of Rath J in Connop v Varena Pty Ltd [1984] 1 NSWLR 71 and concluded at 469 70: In Connop v Varena Pty Ltd ... Rath J dealt with a somewhat similar case. In that case the plaintiff was ordinarily resident in New Zealand. There is legislation in force in New Zealand which makes it possible to enforce (by registration in that country) a judgment of the Supreme Court of New South Wales. His Honour said that an order for costs against the plaintiffs in that case could be register without difficulty in New Zealand, although there might be some delay inconvenience and expense arising from registration of the judgment. Having referred to those matters he said: "But apart from this I see no difference in regard to the costs of the first and second defendants between the circumstances of this case and those of a similar case where a plaintiff is not ordinarily resident outside this State. With only minor reservations, a judgment for costs will be as effective against the plaintiffs here as it would be in the case of a plaintiff who did not ordinarily reside outside this State: see Re Percy and Kelly (etc) Co (1876) 2 Ch D 531 , per Jessel MR, at 531." His Honour made an order for security for costs, fixing the amount of security at $750. This sum was apparently an estimate of the cost of registration and execution in New Zealand of a judgment for costs in the Supreme Court of New South Wales in favour of the defendants in the action before him. Particular reliance is placed by the Applicants upon the approach pursued by Rath J.
Case: East Grace Corp v Xing (No 1) [2005] FCA 219
Outcome: followed
Any order is discretionary but must be an exercise of discretion that takes into account the usual practice of the Court and the particular circumstances of the proceedings in which the order is sought. And there is no mathematical certainty as to the quantum. The quantification of an appropriate amount by way of security is " certainly not an exact science ": East Grace Corp v Xing (No 1) [2005] FCA 219 at [6] per French J. An order for security in the present proceedings for an appropriate amount provides the Respondent with some certainty that there is in Australia an available fund from which costs may be paid if ordered. 23 In the present proceedings, it is considered that security should be ordered in the sum of $85,000 and should be provided within 21 days. 24 The orders of the Court are: 1. Leave be granted to file the Further Amended Application and Further Amended Statement of Claim , including liberty to join as the Second Respondent Stuart Mitchell Wieland. 2. The Applicants to provide security for costs in the sum of $85,000 within 21 days. 3. The costs of both Notices of Motion be reserved. I certify that the preceding twenty-four (24) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick. Associate: Dated: 20 March 2008 Counsel for the Applicants: M Lee, J McDonald Solicitors for the Applicants: TressCox Lawyers Counsel for the Respondent: R K Weaver Solicitors for the Respondent: Rodd Peters Date of Hearing: 12 March 2008 Date of Judgment: 20 March 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/373.html
Case: Energy Drilling Inc v Petroz NL [1989] ATPR 50 ,418
Outcome: followed
The purpose of ordering security for costs in such circumstances is to ensure that a respondent has available to it funds within the jurisdiction against which it can enforce any judgment for costs which may ultimately be made in their favour: Energy Drilling Inc v Petroz NL [1989] ATPR 50 ,418. Gummow J there said: [24] The purpose of ordering security for costs against an applicant ordinarily resident outside the jurisdiction is to ensure that a successful respondent will have a fund available within the jurisdiction of this Court against which it can enforce the judgment for costs, so that the respondent does not bear the risk as to the certainty of enforcement in the foreign country and as to the time and complexity of the action there which might be necessary to effect enforcement... On the other hand, the mere circumstance that an applicant is resident outside the jurisdiction does not necessarily invite an exercise of discretion in favour of ordering security, the question being how justice will best be served in the particular case... Cited: Thai Silk Co Ltd v Aser Nominees Pty Ltd (Unreported, Federal Court of Australia, Hill J, 31 May 1989).
Case: James v ANZ Banking Group Ltd (No 1) (1985) 9 FCR 442
Outcome: followed
An application for security should also be made promptly: KP Cable Investments Pty Ltd v Meltglow Pty Ltd (1995) 56 FCR 189 at 196 8 per Beazley J; James v ANZ Banking Group Ltd (No 1) (1985) 9 FCR 442 at 446 per Toohey J.
Case: KP Cable Investments Pty Ltd v Meltglow Pty Ltd (1995) 56 FCR 189
Outcome: followed
An application for security should also be made promptly: KP Cable Investments Pty Ltd v Meltglow Pty Ltd (1995) 56 FCR 189 at 196 8 per Beazley J; James v ANZ Banking Group Ltd (No 1) (1985) 9 FCR 442 at 446 per Toohey J.
Case: Logue v Hansen Technologies Ltd [2003] FCA 81 , 125 FCR 590
Outcome: followed
Indeed, it may be accepted for present purposes that the practice of this Court and other Superior Courts has been to order such a party to provide security unless that party can point to other factors which overcome the weight of the circumstance that that person is resident out of and has no assets within the jurisdiction: Logue v Hansen Technologies Ltd [2003] FCA 81 at [38] [40], [2003] FCA 81 ; 125 FCR 590 at 600 1 per Weinberg J; Ogawa v University of Melbourne [2004] FCA 491 at [23] [24] per Marshall J; Worldwide Australia LLC v Jacobsen Platinum Pty Ltd [2005] NSWSC 846 at [3] per Einstein J.
Case: News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410
Outcome: considered
Whatever be the reason for the joinder of Mr Wieland at this stage, it is considered that he should be joined as the Second Respondent. Especially in the absence of any prejudice to the Respondent occasioned by the proposed amendment, he is a person against whom relief can properly be claimed and it is clearly in the interests of the administration of justice that all issues be resolved in the one set of proceedings. The power to join an additional party is a power which calls for a " flexibility of approach " and a power which should be exercised to prevent injustice: cf News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410 (citing Pegang Mining Co Ltd v Choong Sam [1969] 2 MLJ 52 at 55 6 per Lord Diplock).
Case: Ogawa v University of Melbourne [2004] FCA 491
Outcome: followed
Indeed, it may be accepted for present purposes that the practice of this Court and other Superior Courts has been to order such a party to provide security unless that party can point to other factors which overcome the weight of the circumstance that that person is resident out of and has no assets within the jurisdiction: Logue v Hansen Technologies Ltd [2003] FCA 81 at [38] [40], [2003] FCA 81 ; 125 FCR 590 at 600 1 per Weinberg J; Ogawa v University of Melbourne [2004] FCA 491 at [23] [24] per Marshall J; Worldwide Australia LLC v Jacobsen Platinum Pty Ltd [2005] NSWSC 846 at [3] per Einstein J.
Case: Pegang Mining Co Ltd v Choong Sam [1969] 2 MLJ 52
Outcome: cited
Whatever be the reason for the joinder of Mr Wieland at this stage, it is considered that he should be joined as the Second Respondent. Especially in the absence of any prejudice to the Respondent occasioned by the proposed amendment, he is a person against whom relief can properly be claimed and it is clearly in the interests of the administration of justice that all issues be resolved in the one set of proceedings. The power to join an additional party is a power which calls for a " flexibility of approach " and a power which should be exercised to prevent injustice: cf News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410 (citing Pegang Mining Co Ltd v Choong Sam [1969] 2 MLJ 52 at 55 6 per Lord Diplock).
Case: Readymix Holdings International Pte Ltd v Wieland Process Equipment Pty Ltd [2006] FCA 1297
Outcome: cited
These proceedings were first commenced by way of an Application and Statement of Claim filed on 15 March 2004. The proceedings had been listed for hearing before Conti J on 4 September 2006 but that hearing was vacated. The history of the proceedings up to that date have been recounted by his Honour ( Readymix Holdings International Pte Ltd v Wieland Process Equipment Pty Ltd [2006] FCA 1297) and need not be now repeated. 2 Presently before the Court are two Notices of Motion , being: (a) a Notice of Motion filed on behalf of the Applicants on 30 May 2007 seeking leave to amend; and (b) a Notice of Motion filed on behalf of the Respondent on 16 May 2007 seeking security for costs. 3 The amendments proposed by the draft Further Amended Application and Further Amended Statement of Claim relevantly seek to join as a Second Respondent Stuart Mitchell Wieland, being the Managing Director of the present Respondent. Other amendments are also sought.
Case: Worldwide Australia LLC v Jacobsen Platinum Pty Ltd [2005] NSWSC 846
Outcome: followed
Indeed, it may be accepted for present purposes that the practice of this Court and other Superior Courts has been to order such a party to provide security unless that party can point to other factors which overcome the weight of the circumstance that that person is resident out of and has no assets within the jurisdiction: Logue v Hansen Technologies Ltd [2003] FCA 81 at [38] [40], [2003] FCA 81 ; 125 FCR 590 at 600 1 per Weinberg J; Ogawa v University of Melbourne [2004] FCA 491 at [23] [24] per Marshall J; Worldwide Australia LLC v Jacobsen Platinum Pty Ltd [2005] NSWSC 846 at [3] per Einstein J. 19 In all of the circumstances it is considered that an order for security should be made but that that order should be confined to the future costs to be incurred. Confining the order in that way effects an appropriate balance between the fact that, as at present, the Respondent has incurred costs without the benefit of any order for security, but should have the benefit of such an order for the future conduct of the proceedings. Notwithstanding the ability to register a judgment in Singapore, it is nevertheless considered of importance that the Respondent has available to it funds within Australia against which it can enforce any order for costs which may ultimately be made in its favour. Also of importance is the " great weight " which has long been given to the fact that the Applicants are resident outside Australia: Worldwide Australia LLC v Jacobsen Platinum Pty Ltd , supra , at [3] per Einstein J. Whether or not that factor should be given such " great weight " when there is the ability to register a judgment overseas may be left to one side; the fact of overseas residence remains a matter to which weight may be given. 20 Various estimates have been provided quantifying those costs, the estimates varying between $83,449.40 to $120,347.00. Included with those estimates are costs incurred in respect to both the Amended Application and the application for security. Those sums, it has been submitted, should not be included in any order. Excluding those costs, the Applicants quantify the future costs to be $72,549.40. The ability to register a judgment of this Court in Singapore has been taken into account, together with the further evidence of Mr Sreenivasan that the First Applicant has a paid up capital of SGD1,200,000. Nothing is known as to the financial position of the Second Applicant.
Case: Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: referred to
passage refers to what appears to be the competitor's get-up. It was referred to with approval by a Full Court of this Court in Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 371 per Beaumont, Branson and Lindgren JJ. However, I do not think that too much should be read into that for three reasons. First , it is apparent that in Reckitt Lord Oliver was only restating a test he had formulated two pages before at 17 IPR 7. That more detailed formulation of the test makes plain that the question is whether the defendant has made a representation to the public, not whether it has a get-up. Secondly , the Full Court in Vieright referred to both passages with approval: 31 IPR 361 at 369, 371. Thirdly , several other Full Courts have referred with approval to Lord Oliver's first formulation of the test which lacks the reference to the respondent's get-up: TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 at 50 [25] per Wilcox, Kiefel and Emmett JJ; Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 327 per Lockhart J, 355 per Gummow J and 361 per French J. In those circumstances, neither authority nor common sense require the identification of the Malt Balls get-up which, so it seems to me, is a sterile exercise the resolution of which will confer no benefit on anyone. The first passing off claim representations about source and origin
Case: de Cordova v Vick Chemical Co (1951) 68 RPC 103
Outcome: referred to
this area it is impermissible to take into account any matter added to the respondent's mark or any differences in get-up. The marks must be understood in their entirety. Both parties placed reliance upon the reasons given by Lord Radcliffe in de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106. I will not set them out. Lord Radcliffe's reasons were examined by a Full Court of this Court in Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at 231 [84]. For present purposes Crazy Ron's establishes a number of principles: The question of deceptive similarity is not to be judged by a side by side comparison. Instead what is involved is a comparison, on the one hand, of the impression based on recollection of an applicant's mark that persons of ordinary intelligence would have and the impression such persons would get from the respondent's mark (at 227 [73]). In that regard it is important to consider the "idea of the mark" (at 228 [74]). In assessing deceptive similarity, questions of aural impression may be important (at 228 [75]). In that context I regard the aural similarity between Malt Balls and Maltesers as negligible. The risk of deception must be tangible but it is enough if an ordinary person entertains a reasonable doubt (at 228 [76]). Allowance must be made for imperfect recollections in considering whether a mark so nearly resembles another mark that it is likely to cause confusion or deception (at 228-229 [77]-[78]). That principle extends even to marks which are not just invented words. If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark (at 229-230 [79]).
Case: Reckitt &amp; Colman Products Ltd v Borden Inc (1990) 17 IPR 1
Outcome: applied
that, there is some support for the idea that the identification of a respondent's get-up might be a useful endeavour. In Reckitt &amp; Colman Products Ltd v Borden Inc (1990) 17 IPR 1 Lord Oliver restated (at 8) his previous explication of the relevant test in terms which included this statement: (2) If the answer to that question is in the affirmative, does the get-up under which the appellants proposed to market their lemon juice in all or any of the Mark I, Mark II or Mark III versions amount to a representation by the appellants that the juice which they sell is Jif lemon juice?
Case: TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43
Outcome: referred to
passage refers to what appears to be the competitor's get-up. It was referred to with approval by a Full Court of this Court in Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 371 per Beaumont, Branson and Lindgren JJ. However, I do not think that too much should be read into that for three reasons. First , it is apparent that in Reckitt Lord Oliver was only restating a test he had formulated two pages before at 17 IPR 7. That more detailed formulation of the test makes plain that the question is whether the defendant has made a representation to the public, not whether it has a get-up. Secondly , the Full Court in Vieright referred to both passages with approval: 31 IPR 361 at 369, 371. Thirdly , several other Full Courts have referred with approval to Lord Oliver's first formulation of the test which lacks the reference to the respondent's get-up: TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 at 50 [25] per Wilcox, Kiefel and Emmett JJ; Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 327 per Lockhart J, 355 per Gummow J and 361 per French J. In those circumstances, neither authority nor common sense require the identification of the Malt Balls get-up which, so it seems to me, is a sterile exercise the resolution of which will confer no benefit on anyone. The first passing off claim representations about source and origin