mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Bristol-Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524
Outcome: discussed
As counsel for the Territory recognised, there is an apparent difference in the views of the Full Court in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 ( Rescare ) on the one hand and in Bristol-Myers Squibb Company v FH Faulding &amp; Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 ( Bristol-Myers ) on the other, as to the construction of s 117(1). 20 The contrast with Bristol-Myers can be seen from the remarks of Black CJ and Lehane J at 559 [95] where their Honours said: "We may say, with all the advantages of hindsight, that the drafting of s 117 is less than felicitous ... it is perhaps a pity that the drafter chose to use the phrase 'use of a product', which contains such a clear reference to the terminology of para (a) of the definition of 'exploit'. But s 117 provides its own dictionary, in subs (2). And our paraphrase of s 117(1), incorporating subs(2)(c), shows, in our view, that the construction urged by the appellant is not only a possible construction but a literal one. That literal construction being consistent with the apparent purpose of the provision, it is, in our view, plainly to be preferred." The reference to the construction of the appellant is to the contention that the use of an input to the process would amount to contributory infringement of the process patent then in suit by the supplier of the input. 21 It is correct, as counsel for the Territory contended, that Bristol-Myers was decided on the ground of want of novelty, so that strictly speaking those observations are obiter dicta. 22 As I have decided this matter on another basis in any event, I think it is preferable simply to note the Territory's contention that I should follow the decision in Rescare , and not to decide the issue as between those two lines of authority. If I were to accept the Territory's contention, it would follow that s 117(1) did not apply to the "supply" of the timber to ACOC by the Territory in any event, because ACOC's use of the product supplied (the timber) did not itself infringe the patent, and that to conclude otherwise would extend the protection afforded a patentee beyond that provided for by s 13(1) of the Act. 23 The additional contention of the Territory on this topic is that, in any event, it was the trees or the timber which was "supplied", and that the relevant product used by ACOC (if Bristol-Myers is to be followed) is not the timber itself but the selected bark and wood from that timber. 24 In my view, that alternative contention draws attention to the further submission of the Territory that it did not supply any product at all by the grant of the licences referred to.
Case: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205
Outcome: discussed
In Rescare , Lockhart J (with whom Wilcox J agreed) at 24 said: "The lasts remaining point is whether the primary judge erred in holding that s 117 of the 1990 Act did not apply in relation to the alleged infringement of claims 9 and 11 in that he held that it was a precondition to the operation of that section in relation to a method claim that there be a product the use of which would infringe that method claim. In my opinion his Honour decided that question correctly." The other member of the Full Court, Sheppard J, did not address the issue. In the decision at first instance, Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 Gummow J at 243, concluded: "As I have indicated, where the invention relevantly claims a method or process, exploitation occurs, other than by use of the method or process, only by the doing of an act mentioned in para (a) of the definition of 'exploit'. There must be an act done 'in respect of a product resulting from such use'. Here, the respondent urges, and I agree, there is no such product with the result that, in a case such as the present, s 117 has no operation." Gummow J in Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 495 repeated that view.
Case: Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479
Outcome: referred to
In Rescare , Lockhart J (with whom Wilcox J agreed) at 24 said: "The lasts remaining point is whether the primary judge erred in holding that s 117 of the 1990 Act did not apply in relation to the alleged infringement of claims 9 and 11 in that he held that it was a precondition to the operation of that section in relation to a method claim that there be a product the use of which would infringe that method claim. In my opinion his Honour decided that question correctly." The other member of the Full Court, Sheppard J, did not address the issue. In the decision at first instance, Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 Gummow J at 243, concluded: "As I have indicated, where the invention relevantly claims a method or process, exploitation occurs, other than by use of the method or process, only by the doing of an act mentioned in para (a) of the definition of 'exploit'. There must be an act done 'in respect of a product resulting from such use'. Here, the respondent urges, and I agree, there is no such product with the result that, in a case such as the present, s 117 has no operation." Gummow J in Sartas No 1 Pty Ltd v Koukourou &amp; Partners Pty Ltd (1994) 30 IPR 479 at 495 repeated that view.
Case: The Queen v Toohey; Ex parte Meneling Station Pty Ltd [1982] HCA 69 ; (1982) 158 CLR 327
Outcome: referred to
I have referred briefly to the licences to ACOC above. They were permissive, as ACOC was not obliged to enter upon the Howard Springs land and lop or clear any trees and remove any timber. ACOC was permitted, but not obliged, to enter upon the Howard Springs land and to harvest the trees and remove the timber from that land. Similar characteristics of an arrangement under a statutory licence were described by Wilson J in The Queen v Toohey; Ex parte Meneling Station Pty Ltd [1982] HCA 69 ; (1982) 158 CLR 327 at 352 as the grant of rights under a statutory scheme (in that case, grazing rights) rather than as a supply of fodder. See also per Brennan J in Harper v Minister for Sea Fisheries [1989] HCA 47 ; (1989) 168 CLR 314 at 334 (in that case, with respect to fishing rights).
Case: Harper v Minister for Sea Fisheries [1989] HCA 47 ; (1989) 168 CLR 314
Outcome: cited
I have referred briefly to the licences to ACOC above. They were permissive, as ACOC was not obliged to enter upon the Howard Springs land and lop or clear any trees and remove any timber. ACOC was permitted, but not obliged, to enter upon the Howard Springs land and to harvest the trees and remove the timber from that land. Similar characteristics of an arrangement under a statutory licence were described by Wilson J in The Queen v Toohey; Ex parte Meneling Station Pty Ltd [1982] HCA 69 ; (1982) 158 CLR 327 at 352 as the grant of rights under a statutory scheme (in that case, grazing rights) rather than as a supply of fodder. See also per Brennan J in Harper v Minister for Sea Fisheries [1989] HCA 47 ; (1989) 168 CLR 314 at 334 (in that case, with respect to fishing rights).
Case: Americana International Limited v Suyen Corporation [2008] ATMO 4
Outcome: cited
respondent in written submissions referred to comments of the delegate in Americana International Limited v Suyen Corporation [2008] ATMO 4 at [28] - [29] . The respondent contended that the decision in Health World Ltd [2008] FCA 100 ; (2008) 75 IPR 478 is distinguishable from the facts in these proceedings, in that in Health World [2008] FCA 100 ; (2008) 75 IPR 478 while the relevant companies had the same directors they had different shareholders, whereas in these proceedings there was not only a formal assignment and licence but Mr Lawrence was the sole shareholder and managing director of both the respondent and The Food Channel Pty Ltd. The respondent also referred to Oakley, Inc (2003) 58 IPR 452 at [30], as already set out in this judgment.
Case: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391
Outcome: cited
is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user ( Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.
Case: Blount v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50
Outcome: cited
is well-established that applications of this kind, which involve an exercise of the original jurisdiction of the Court and are subject to the powers of the Court under s 197 of the Act, are conducted as re-hearings and are not strictly "appeals": Blount v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 ; Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525.
Case: Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 ; (1994) 31 IPR 375)
Outcome: cited
addition to the contention that, on the face of the application, the respondent is the owner of the trade mark and there is no evidence that anyone other than the respondent was ever the owner of the trade mark, the respondent also submits, in summary: At the time of the application on 28 August 2003 the owner of the trade mark was The Food Channel Pty Ltd. The applicant can apply for a trade mark even if it does not intend to use it provided it has authorised or intends to authorise another person to use it, or if it intends to assign it to another. On 15 January 2004 the application for the trade mark was formally assigned by The Food Channel Pty Ltd to the respondent (cf respondent's written submissions p 17). Mr Lawrence as the sole shareholder and managing director of The Food Channel Pty Ltd and the respondent and author of the trade mark properly authorised his companies first The Food Channel Pty Ltd and then upon assignment the respondent to use the trade mark with a licence back to The Food Channel Pty Ltd from the respondent after the assignment with the intention to use the mark on the goods being printed matter in this case printed recipes (cf respondent's written submissions p 19). "It may be fair to say Mr Lawrence sees the business as his own and sometimes confuses the distinction between himself and his companies, as might be seen from the nature of his affidavits where he defines the Respondent as the 'Food Channel' and (sic) then talks generally about the business of Food Channel meaning his business generally being himself and both of his companies. This is understandable as he is not a lawyer and it appears on the face of the affidavit that he did not have legal representation or advice at the time of drawing and filing of his main affidavit. As the sole shareholder and director of both companies he looks upon them both as his business. He did however obtain legal advice at the time of the assignment and formally transferred the trade mark application from The Food Channel Pty Ltd to Food Network Pty Ltd and formally lodged the assignment with the Trade Marks Office where the assignment was formally recorded, with Food Channel network as the new owner" (respondent's written submissions pp 19-20). In order to establish its opposition under s 58 an opponent must show that: the respective trade marks of applicant and opponent be either identical or substantially identical ( Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 ; (1994) 31 IPR 375) ; and the respective goods or services of the parties be the "same kind of thing" ( Re Hicks' Trade Mark (1897) 22 VLR 636 ; and a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant ( Settef SpA (1987) 10 IPR 402 at 413 and Re Hicks' Trade Mark (1897) 22 VLR 636) ; the respondent contends that the applicant cannot show any of these elements and therefore must fail under s 58.
Case: Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127
Outcome: cited
is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user ( Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.
Case: Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1
Outcome: cited
is also clear from the cases that ownership of a trade mark can vest in another without formal assignment, for example in a corporate alter ego of the creator of the trade mark. Examples of the application of this principle are Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318. I shall consider these cases later in this judgment. However, the respondent relies in its written submissions on Revlon Inc v Cripps &amp; Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? It may very well be the case that Mr Lawrence initially considered that The Food Channel Pty Ltd should apply for registration of trade mark 967804, but later considered a more appropriate trade mark applicant would be the respondent with the result that the trade mark application were assigned to the respondent. Commercially, this is perfectly acceptable. However from the perspective of the Act, this approach would only be acceptable if The Food Channel Pty Ltd were also the owner at the filing date (s 58). If The Food Channel Pty Ltd was not the owner at the filing date, as indeed the evidence suggests, but Mr Lawrence subsequently considered that the appropriate trade mark applicant should be the respondent, then Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 supports the proposition that the trade mark application should have been withdrawn and a fresh trade mark application lodged ( Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 at [130] - [131] ). I have already considered evidence from Mr Lawrence that the respondent was the owner at the filing date, and substantial conflicting evidence as to who the owner has been throughout the application process. The respondent's submissions as to s 27(1) do not clarify this matter. I do not consider that reliance on s 27(1) assists the respondent in discharging its evidentiary onus under s 58.
Case: Erven Warnink Besloten Vennootschop v J. Townend and Sons (Hull) Ltd (1979) AC 731
Outcome: cited
order to substantiate a claim in passing off the applicant must show: A misrepresentation Made by a trader in the course of trade To its prospective customers or ultimate consumers of goods or services supplied Which is calculated to injure the business or goodwill of the applicant (in the sense that this is a reasonably foreseeable consequence) and Which causes actual damage to a business or goodwill of the applicant or will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742, cf re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)
Case: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 ; (2008) 76 IPR 161
Outcome: distinguished
has been observed elsewhere, s 58 is conventionally used as a ground of opposition where disputing parties have had a business or contractual relationship, and are in dispute as to which of those parties is the true owner of the mark ( Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) p 380, cf Elkington B, Hall M, Kell D, Trade Mark Law in Australia (Butterworths, 2000) p 77). However s 58 does not confine opposition to registration of a trade mark to a party itself claiming ownership of that trade mark. Examples of cases in which claims albeit unsuccessful were made by a third party against the registered owner of a trade mark pursuant to s 58 are Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 ; (2008) 76 IPR 161 and Mobileworld Communications Pty Ltd v Q &amp; Q Global Enterprise [2003] FCA 1404 ; (2003) 61 IPR 98. Indeed in this case the respondent has not disputed the standing of the applicant to oppose registration of trade mark 967804 on the ground of s 58. I shall return to these cases later in this judgment. Onus Whether the act of making an application to register a trade mark in the name of a party other than the owner is a fatal defect in that application was given some consideration in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161. The decision in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 was delivered after my judgment in this case was reserved. The Court in Global Brand Marketing [2008] FCA 605 ; 2008) 76 IPR 161 also considered the decision in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98. So far as is relevant in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the cross-claimant in that case claimed that the validity of registration of a trade mark was to be determined at the filing date. The trial judge in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 referred to Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 where the trial judge had noted the innocent error in registering the wrong applicant. Further, in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the trial judge was satisfied that the company to which the application for registration was eventually assigned was the owner of the trade mark in question (at [135]-[136]). Both Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 are distinguishable from this case because in both cases the ownership position was clear. In contrast, I do not accept that the Act sanctions a position in which an application can be made where ownership of a trade mark is not capable of identification during the application process, and a finding cannot be made that the applicant was the owner, as is the case in these proceedings.
Case: Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14
Outcome: followed
principles articulated in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 are not in issue in these proceedings. Contrary to the submission of the respondent, I find that there is no inconsistency between these principles and the concept of shift of the evidentiary onus of proof referred to by Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478. I note in passing that an appeal against the decision of Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478 was recently dismissed by the Full Court ( Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14) , although the Full Court did not consider the evidentiary issue raised by the respondent in this case. I accept the submission of the applicant that, once the opposer to registration makes a prima facie case, the evidentiary onus as to ownership shifts to the applicant for registration. The respondent in written submissions referred to comments of the delegate in Americana International Limited v Suyen Corporation [2008] ATMO 4 at [28] - [29] . The respondent contended that the decision in Health World Ltd [2008] FCA 100 ; (2008) 75 IPR 478 is distinguishable from the facts in these proceedings, in that in Health World [2008] FCA 100 ; (2008) 75 IPR 478 while the relevant companies had the same directors they had different shareholders, whereas in these proceedings there was not only a formal assignment and licence but Mr Lawrence was the sole shareholder and managing director of both the respondent and The Food Channel Pty Ltd. The respondent also referred to Oakley, Inc (2003) 58 IPR 452 at [30], as already set out in this judgment.
Case: Levi Strauss &amp; Co v Shah [1985] RPC 371
Outcome: cited
key issue in considering s 7(1) in this context is whether, notwithstanding the similarities between the two marks, the additions or alterations are such as to "substantially affect the identity" of trade mark 967804. This is clearly a question of fact in each case. Although there are decisions in which the court or relevant administrative body has considered whether, in the particular circumstances, alterations or embellishments have affected the identity of a trade mark (for example Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D), 131 (CA); Levi Strauss &amp; Co v Shah [1985] RPC 371 ; QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553) I do not find these decisions of assistance in the present proceedings.