mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Londish v Gulf Pacific Pty Ltd [1993] FCA 470 ; (1993) 45 FCR 128
Outcome: applied
power to allow the amendment is not in issue. Order 13 r 2 of the Federal Court Rules provides in part as follows: General (1) Subject to the following provisions of this rule, the Court may, at any stage of any proceeding, order that any document in the proceeding be amended, or that any party have leave to amend any document in the proceeding, in either case in such manner as the Court thinks fit. (2) All necessary amendments shall be made for the purpose of determining the real questions raised by or otherwise depending on the proceeding, or of correcting any defect or error in any proceeding, or of avoiding multiplicity of proceedings. Rule 2(1), it will be noted, permits the Court to grant leave to amend " at any stage of any proceeding ". The central principle is to do justice between the parties and, broadly speaking, amendments should be allowed unless the embarrassment or prejudice caused to the opposing party (if any) cannot be cured by an adjournment and costs: Londish v Gulf Pacific Pty Ltd [1993] FCA 470 ; (1993) 45 FCR 128. The object of the Court is not to punish parties for mistakes in presenting their case, unless fraudulent or intended to overreach, but to ensure a decision can be made on the real matters of controversy. Leave was given to withdraw the admission to para [4] and in its place, the defence was amended such that the Third Respondent admits that: at all material times he was a director of the First Respondent; and at all materials time he owed the duties of a director; but at all material times the arrangement as between himself and the Fourth Respondent was that those duties were to be discharged in accordance with the Joint Venture Agreement dated 21 July 2006. An amended Defence was filed pursuant to this leave on 19 June 2009. The Notice of Motion was otherwise dismissed. On the day the Motion was heard, the Applicants sought costs of the Motion and the question of costs was reserved. It is now concluded that the Third Respondent is to pay the costs of the Motion . AMI Australia Holdings Pty Limited ("AMI") was first registered in Australia in November 2000. It was originally named Advanced Medical Institute Pty Limited. There was a corporate restructure in November 2005 and, as a result, Advanced Medical Institute Pty Limited was renamed AMI Australia Holdings Pty Limited and a new wholly-owned subsidiary of this entity was incorporated under the name Advanced Medical Institute Pty Limited.
Case: Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443 , 156 FCR 158
Outcome: referred to
as joint tortfeasors arises where two or more persons act in concert in committing a tort: Thompson v Australian Capital Television Pty Limited [1996] HCA 38 ; (1996) 186 CLR 574. Brennan CJ, Dawson and Toohey JJ there observed at 580 to 581 (some citations omitted): The difference between joint tortfeasors and several tortfeasors is that the former are responsible for the same tort whereas the latter are responsible only for the same damage. As was said in The Koursk, ([1924] P 140 at 159-160), for there to be joint tortfeasors, "there must be a concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect cause damage". Principal and agent may be joint tortfeasors where the agent commits a tort on behalf of the principal, as master and servant may be where the servant commits a tort in the course of employment. Persons who breach a joint duty may also be joint tortfeasors. Otherwise, to constitute joint tortfeasors two or more persons must act in concert in committing the tort. Torts of all kinds may be joint ... Gummow J made like observations at 600. Applied: Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443 at [164] , [2006] FCA 1443 ; 156 FCR 158 at 196. See also: Baxter v Obacelo Pty Limited [2001] HCA 66 at [18] , [2001] HCA 66 ; 205 CLR 635 at 646 to 647 per Gleeson CJ and Callinan J.
Case: Macquarie Bank Ltd v Seagle [2008] FCA 1417 , 79 IPR 72
Outcome: applied
of a domain name may constitute conduct falling within s 52: e.g. CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 , 128 FCR 408 ; Macquarie Bank Ltd v Seagle [2008] FCA 1417 , 79 IPR 72. Indeed, as in the present proceeding, in intellectual property cases it is not uncommon for a plaintiff to contend that the conduct of a respondent in using a domain name or a business name constitutes not only a contravention of ss 52 and 53 of the Trade Practices Act and the tort of passing off, but also a contravention of the Trade Marks Act : Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 1) [2008] FCA 1760 , 79 IPR 454; SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 , 169 ALR 1.
Case: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 , 104 FCR 61
Outcome: cited
52 and 53 are found within Part V of the Trade Practices Act . They are provisions designed to protect members of the public who are consumers of goods and services from unfair trading practices: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 at [38] , [2000] FCA 1626 ; 104 FCR 61 at 72 per Beaumont, Tamberlin and Emmett JJ (citing Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216). They are not provisions specifically designed to protect traders, although the operation of those provisions may incidentally have that effect. As stated by Barwick CJ, with whom Aickin J agreed, in Hornsby Building Information Centre at 220: Section 52 is concerned with conduct which is deceptive of members of the public in their capacity as consumers of goods or services: it is not concerned merely with the protection of the reputation or goodwill of competitors in trade or commerce. In Mark Foys [2000] FCA 1626 , 104 FCR 61 , conduct was held to fall within s 53(c) and (d) in circumstances where a television sales company pursued a marketing strategy of associating itself with the defunct Mark Foys department store. See also: 10 th Cantanae (1987) 79 ALR 299. A breach of s 53(c) was made out in Australian Competition and Consumer Commission v Chen [2003] FCA 897 , 132 FCR 309 in circumstances where a person operating an internet web site falsely represented that the site had some affiliation with or association with the Sydney Opera House. See also Australian Competition and Consumer Commission v Wizard Mortgage Corporation Limited [2002] FCA 1317 , (2002) ATPR 41-903.
Case: Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231
Outcome: cited
reference to the " Performing Right Society test " is a reference to Performing Right Society Ltd v Ciryl Theatrical Syndicate Ltd [1924] 1 KB 1 at 15 where Atkin LJ said: If the directors themselves directed or procured the commission of the act they would be liable in whatever sense they did so, whether expressly or impliedly. In Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 243 to 244, Lindgren J said of this test: The "procured or directed" test, sometimes referred to as the "authorised, procured or directed" test, focuses attention on the relationship between the director's intention and the particular corporate conduct which the law characterises as tortious. What seems to underlie this test is the notion that, necessarily, companies can engage in tortious conduct only through human beings, and, at least ordinarily, where a particular human being involved and responsible to an appropriate extent can be identified, he should, as a matter of policy, be liable. After all, even if the aggrieved party did not sue him, apparently he would be liable to indemnify the company in respect of its liability to the aggrieved party. A director who " procures or directs " his company to perform a tortious act may thus be liable along with his company: The Architects (Australia) Pty Ltd [2002] QSC 139 at [51] per Chesterman J.
Case: Namol Pty Ltd v A W Baulderstone Pty Ltd (No 2) [1993] FCA 606 ; (1993) 47 FCR 388
Outcome: applied
the Fourth nor Fifth Respondents has shown any " good cause " not to make such order. The usual practice of this Court, which should be followed in the present proceeding, is to award interest at the rate applied in the Supreme Court of the State or Territory in which this Court is dealing with the matter: Namol Pty Ltd v A W Baulderstone Pty Ltd (No 2) [1993] FCA 606 ; (1993) 47 FCR 388 at 389 per Davies J. That is the usual practice unless it is shown that those rates are penal or not commercial ( GEC Marconi Systems Pty Ltd (t/as Easams Australia) v BHP Information Technology Pty Ltd [2003] FCA 688 at [7] , [2003] FCA 688 ; 201 ALR 55 at 58 per Finn J) and there is no such suggestion in the present proceeding. The Third Respondent, Dr Beaini, however, has not occasioned any delay. In such circumstances it is not considered appropriate that he be ordered to pay interest pursuant to s 51A for any period of time.
Case: Pacific Publications Pty Ltd v Next Publishing Pty Ltd [2005] FCA 625 , 222 ALR 127
Outcome: cited
off is a remedy for the invasion of a right of property in the business or goodwill likely to be injured by misrepresentations made by the passing off of one person's goods as those of another: Star Industrial Company Ltd v Yap Kwee Kor [1976] FSR 256 at 269; Pacific Publications Pty Ltd v Next Publishing Pty Ltd [2005] FCA 625 at [25] , [2005] FCA 625 ; 222 ALR 127 at 135 per Tamberlin J. It is not a remedy for the invasion of a right of property in a mark, name or get-up which has been improperly used. Nor is it, unlike s 52 of the Trade Practices Act , designed to protect consumers. There need not be any deliberate fraud or any intention on the part of a defendant to deceive: ConAgra (1992) 33 FCR at 344 per Lockhart J; Select Personnel Pty Ltd v Morgan &amp; Banks Pty Ltd (1998) 12 IPR 167 at 170 to 171 per McLelland J. There is no requirement that a respondent has been fraudulent, malicious or negligent: R &amp; C Products (1993) 42 FCR at 192 per Davies J. But the presence or lack of any conscious intent can be relevant as a matter of evidence in establishing whether there has been any unlawful passing off: Pacific Publications [2005] FCA 625 at [88] , [2005] FCA 625 ; 222 ALR 127 at 148 per Tamberlin J.
Case: In re Powell's Trade-Mark [1893] 2 Ch 388
Outcome: cited
" trade mark " is defined by s 17 of the Trade Marks Act as being: ... a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Registration of a trade mark confers " exclusive rights ". Section 20(1) provides as follows: If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered. The function of a trade mark is " to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods &#8212; to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market ": In re Powell's Trade-Mark [1893] 2 Ch 388 at 403 to 404 per Bowen LJ. Use " as a trade mark " in s 120(1) is use of the mark as a " badge of origin " in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19] , 96 FCR 107 at 115 per Black CJ, Sundberg and Finkelstein JJ; Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 at [45] , [2008] FCA 605 ; 76 IPR 161 at 171 per Sundberg J; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 at [19] , [2008] FCA 934 ; 77 IPR 69 at 73 to 74. Noted: Andreazza A, "Barefoot Gets the Boot: Trade Mark Infringement and Removal for Non-Use" (2008) 21(5) IPLB 85. For subsequent proceedings, see E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.
Case: Quinlivan v Australian Competition and Consumer Commission [2004] FCA 175 , 160 FCR 1
Outcome: applied
not expressly pleaded, reliance is placed by the Applicants upon s 75B(1) of the Trade Practices Act , which relevantly provides as follows: (1) A reference in this Part to a person involved in a contravention of a provision of Part ...V ... shall be read as a reference to a person who: (a) has aided, abetted, counselled or procured the contravention; (b) has induced, whether by threats or promises or otherwise, the contravention; (c) has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or (d) has conspired with others to effect the contravention. In order to fall within s 75B(1)(a) it is necessary to prove that a person was aware or ought to have been aware of the facts that gave rise to the contravention and to prove that he intentionally participated in the contravention. But it is not necessary to prove that the person knew that his participation was a breach of the Act: Quinlivan v Australian Competition and Consumer Commission [2004] FCA 175 , 160 FCR 1; Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661 at 666 to 669 per Mason ACJ, Wilson, Deane and Dawson JJ.
Case: R &amp; C Products Pty Ltd v SC Johnson &amp; Sons Pty Ltd [1993] FCA 198 ; (1993) 42 FCR 188
Outcome: applied
these different objectives, it is not uncommon for a plaintiff to place reliance upon both s 52 of the Trade Practices Act and the tort of passing off: e.g. The Architects (Australia) Pty Ltd v Witty Consultants Pty Ltd [2002] QSC 139. There are " close similarities " between the two causes of action: Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd [2004] FCA 1394 at [80] , [2004] FCA 1394 ; 213 ALR 153 at 167 per Weinberg J. Indeed, authorities which have considered the common law tort of passing off provide guidance by analogy as to the type of conduct which would be likely to mislead or deceive the public for the purposes of s 52: R &amp; C Products Pty Ltd v SC Johnson &amp; Sons Pty Ltd [1993] FCA 198 ; (1993) 42 FCR 188 at 192 per Davies J. There need not be any deliberate fraud or any intention on the part of a defendant to deceive: ConAgra (1992) 33 FCR at 344 per Lockhart J; Select Personnel Pty Ltd v Morgan &amp; Banks Pty Ltd (1998) 12 IPR 167 at 170 to 171 per McLelland J. There is no requirement that a respondent has been fraudulent, malicious or negligent: R &amp; C Products (1993) 42 FCR at 192 per Davies J. But the presence or lack of any conscious intent can be relevant as a matter of evidence in establishing whether there has been any unlawful passing off: Pacific Publications [2005] FCA 625 at [88] , [2005] FCA 625 ; 222 ALR 127 at 148 per Tamberlin J.
Case: Readymix Holdings International Pty Ltd v Wieland Process Equipment Pty Ltd (No 2) [2008] FCA 1480
Outcome: referred to
can be no doubt that the primary driving force behind both the Bade Medical Institute and World Wide Internet Services was the Fourth Respondent, Mr David Wade. No relevant distinction can be drawn between the conduct of the First and Second Respondents and the conduct of the Fourth Respondent: cf Readymix Holdings International Pty Ltd v Wieland Process Equipment Pty Ltd (No 2) [2008] FCA 1480 at [111] . Mr Wade accepted that it was in 2006 that he " met Dr Buddy Beaini and we created Bade Medical Institute. ... We employed a webmaster and that webmaster was Andre Nader who was experienced in HTML ". He further maintained that " [t]he company, Bade Medical Institute, had spent something like $70,000 or thereabouts registering all names and trade marking certain names that we made up and phrases to put into the keywords so we could use them on Google. These names, trade marks, business names, phrases, were all in the source code and could not be seen; they were totally invisible and could only be ascertained by the Google scrawler ".
Case: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365
Outcome: applied
the absence of any statutory definition of the phrase " substantially identical ", the meaning of that phrase is to be determined by its ordinary or usual meaning, namely that which is " in substance " the same or " essentially " the same: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 at [70] [1999] FCAFC 1020 ; , 93 FCR 365 at 387 per Branson J. Whether marks are " substantially identical " requires a side by side comparison and depends on the Court's own judgment: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414. Windeyer J there observed (some citations omitted): In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co [(1951) 68 R.P.C. 103 , at p. 106]. Whether there is substantial identity is a question of fact ... In order to determine whether marks are " substantially identical ", they should thus be compared side by side with their similarities and differences noted: Coca-Cola Co [1999] FCA 1721 at [38], 96 FCR at 121 per Black CJ, Sundberg and Finkelstein JJ. See also: E &amp; J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.
Case: Rosebanner Pty Ltd v EnergyAustralia [2009] NSWSC 43 , 223 FLR 406
Outcome: cited
advancing the present submission as to the non-production of documents, the Applicants rely upon the following observations of Ward J in Rosebanner Pty Ltd v EnergyAustralia [2009] NSWSC 43 , 223 FLR 406: [454] Where particular evidence (or types of evidence) can be identified as having been deliberately or recklessly lost, or destroyed, or not disclosed, this gives rise to a presumption at least that the contents of that evidence would have been entirely against the defaulting party in accordance with the maxim omnia praesumuntur contra spoliatorem (which has been translated as "all things are presumed against the wrongdoer" per Mozley and Whitley's Law Dictionary as cited in NWR FM t/as North West Radio v Broadcasting Commission of Ireland [2004] IEHC 109). (It is difficult to find a use of spoliator as "wrongdoer" in any except the most recent authorities, many of which cite Mozley . A more precise translation of the Latin word might be "robber, pillager, plunderer or spoiler" which accords with the maxim's usage in the older authorities.) [455] The High Court in Allen v Tobias [1958] HCA 13 ; (1958) 98 CLR 367 at 375, adopted the statement of this maxim given in The Ophelia [1916] 2 AC 206: If any one by a deliberate act destroys a document which, according to what its contents may have been, would have told strongly either for him or against him, the strongest possible presumption arises that if it had been produced it would have told against him; and even if the document is destroyed by his own act, but under circumstances in which the intention to destroy evidence may fairly be considered rebutted, still he has to suffer. He is in the position that he is without the corroboration which might have been expected in his case. Her Honour there went on to observe at [457] that there is a divergence as to the amount of " wrongdoing " or fault required to enliven the maxim &#8212; namely, whether it is necessary to establish some malus animus or mala fide or whether it is sufficient to establish that it cannot be shown that the destruction of evidence was proper or justifiable. The written submissions filed on behalf of the Third Respondent deny that the non-production of documents was as great or as flagrant as contended by the Applicants. The non-production of documents assumes perhaps most relevance when attention is focussed upon the manner in which the Applicants sought to quantify their loss or damage or lost profits. That evidence was self-evidently less than what may have been desirable. But the evidence was sufficient to make out the case and to support the findings sought by the Applicants. It was thus unnecessary to resolve any submission as to documents which may have been available but not produced. Mr Gambell and his Evidence
Case: RPS v The Queen [2000] HCA 3 , 199 CLR 620
Outcome: applied
competing submissions invoked the following observations of Kitto J in Jones v Dunkel [1959] HCA 8 ; (1959) 101 CLR 298 at 308: ... any inference favourable to the plaintiff for which there was ground in the evidence might be more confidently drawn when a person presumably able to put the true complexion on the facts relied on as the ground for the inference has not been called as a witness by the defendant and the evidence provides no sufficient explanation of his absence. The rule is one of common sense reasoning. An unexplained failure by a party to call a witness may, in appropriate circumstances, lead to an inference that the uncalled evidence would not have assisted the case of the party who might have been expected to call the witness: Ghazal v Government Insurance Office of New South Wales (1992) 29 NSWLR 336 at 343 per Kirby P. A court must see that a person who has not given evidence not only could shed light on a matter, but also would ordinarily be expected to do so: RPS v The Queen [2000] HCA 3 at [25] , [2000] HCA 3 ; 199 CLR 620 at 632 per Gaudron ACJ, Gummow, Kirby and Hayne JJ.