case_text: assessing whether the marks are deceptively similar, it is relevant to consider the context in which customers are likely to form their impressions of the marks: Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 at 658 per Dixon and McTiernan JJ; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595 per Kitto J; Anheuser-Busch Inc [2002] FCA 390 at [153] , [2002] FCA 390 ; 56 IPR 182 at 218 per Allsop J.


case_outcome: cited

case_title: Baxter v Obacelo Pty Limited [2001] HCA 66 , 205 CLR 635

case_text: 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_outcome: applied

case_text: summary form, there is a need to establish goodwill or reputation attaching to the relevant goods in the mind of the purchasing public, misrepresentation and damage or a likelihood of damage: Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) 41 IPR 347 at 356 to 357 per Goldberg J. The misrepresentation relied upon need only be likely to lead the public to believe that the goods are those of the plaintiff — proof of actual deception is not required: Osgaig [2004] FCA 1394 at [85] , 213 ALR at 168 per Weinberg J.


case_text: 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. There remain, however, a number of differences of potential significance between each of the causes of action. Where consideration is being given to passing off, there may be a requirement of some exclusive reputation — but there is no such requirement in relation to Part V: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 at [99] , [2007] FCAFC 70 ; 159 FCR 397 at 418 to 419 per Black CJ, Emmett and Middleton JJ. For the purposes of the Trade Practices Act , the question is not whether an applicant has shown a sufficient reputation in a particular get-up or name; the question is whether a respondent's use of the particular get-up or name is likely to mislead or deceive persons familiar with the applicant's product to believe that the two products are associated: Bing! Software Pty Ltd [2008] FCA 1760 at [71] , 79 IPR at 475 per Collier J.


case_title: CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 , 52 IPR 42

case_text: way of contrast, whether a mark is " deceptively similar " is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark: Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390 at [143] [2002] FCA 390 ; , 56 IPR 182 at 216. Allsop J there observed (citations omitted): [143] The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of ... See also: E & J Gallo Winery [2008] FCA 934 at [53] to [55], 77 IPR at 79 to 80. It is not appropriate when making this comparison to undertake a wider enquiry of the kind undertaken in a passing off action or in a proceeding in which a contravention of Part V of the Trade Practices Act is alleged: CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [44] , [2000] FCA 1539 ; 52 IPR 42 at 62 per Ryan, Branson and Lehane JJ.


case_title: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 , 159 FCR 397

case_text: remain, however, a number of differences of potential significance between each of the causes of action. Where consideration is being given to passing off, there may be a requirement of some exclusive reputation — but there is no such requirement in relation to Part V: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 at [99] , [2007] FCAFC 70 ; 159 FCR 397 at 418 to 419 per Black CJ, Emmett and Middleton JJ. For the purposes of the Trade Practices Act , the question is not whether an applicant has shown a sufficient reputation in a particular get-up or name; the question is whether a respondent's use of the particular get-up or name is likely to mislead or deceive persons familiar with the applicant's product to believe that the two products are associated: Bing! Software Pty Ltd [2008] FCA 1760 at [71] , 79 IPR at 475 per Collier J.


case_text: precise definition of the elements of the tort of passing off remains elusive: ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355 per Gummow J; Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259 ; (1993) 26 IPR 261 at 268 per Gummow, French and Hill JJ. For present purposes, however, it may be accepted that the elements of the modern law of passing off were summarised in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742 by Diplock LJ as follows: My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. His Lordship continued: In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader's wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial "puffing" which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result. Lord Fraser of Tullybelton expressed perhaps a narrower statement of the cause of action: [1979] AC at 755 to 756. Lord Diplock's statement as to the five " characteristics " of the cause of action for passing off has been adopted in Australia: Moorgate Tobacco (1984) 156 CLR at 443 to 444 per Deane J; ConAgra (1972) 33 FCR at 308 to 309 per Lockhart J; Osgaig [2004] FCA 1394 at [83] to [85], 213 ALR at 167 to 168 per Weinberg J; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [29] to [30] [2005] FCA 471 ; , 143 FCR 479 at 487 per Merkel J. The " declarations of principle " of Diplock and Fraser LLJ were also accepted by the Privy Council on appeal from the Supreme Court of New South Wales in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 856 as being of " general application ".


case_title: Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12 , 202 CLR 45

case_text: does not fall within ss 52 or 53 merely because a member of the public is caused to wonder whether goods may come from the same source: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375. Lockhart J there observed at 377: Conduct does not contravene s 52 merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source or two services are provided by the same source or two business names suggest that they come from the same stable. The purpose of Pt V of the Trade Practices Act 1974 is to protect consumers by eliminating unfair trade practices. The object of s 52 is to prevent misleading or deceptive conduct which will affect the identification of goods or services. Conduct which merely causes some uncertainty in the minds of the public does not infringe s 52. Beaumont J there further observed that a likelihood of deception will readily be inferred where the parties are engaged in " allied or related " fields of activity: (1986) 12 FCR at 392. And in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12 at [105] , [2000] HCA 12 ; 202 CLR 45 at 87, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ observed that: [105] ... The initial question which must be determined is whether the misconceptions or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. These were the decisions Siopis J had in mind when considering claims for contravention of ss 52 and 53 (d) in Cash Converters Pty Ltd v Tallut Pty Ltd [2005] FCA 939 , (2005) ATPR 42-074. The essence of the action in passing off, it may thus be noted, is the protection of a plaintiff's goodwill attaching to a business or commercial venture. In Campomar [2000] HCA 12 at [108] , 202 CLR at 88, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ thus observed that "... passing-off, at least so far as concerns equitable relief, protects against injury to the goodwill built up by the activities of the plaintiff ". It is not concerned with an invasion of privacy: 10 th Cantanae (1987) 79 ALR at 317 per Gummow J.


case_text: does not fall within ss 52 or 53 merely because a member of the public is caused to wonder whether goods may come from the same source: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375. Lockhart J there observed at 377: Conduct does not contravene s 52 merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source or two services are provided by the same source or two business names suggest that they come from the same stable. The purpose of Pt V of the Trade Practices Act 1974 is to protect consumers by eliminating unfair trade practices. The object of s 52 is to prevent misleading or deceptive conduct which will affect the identification of goods or services. Conduct which merely causes some uncertainty in the minds of the public does not infringe s 52. Beaumont J there further observed that a likelihood of deception will readily be inferred where the parties are engaged in " allied or related " fields of activity: (1986) 12 FCR at 392. And in Campomar Sociedad Limitada v Nike International Limited [2000] HCA 12 at [105] , [2000] HCA 12 ; 202 CLR 45 at 87, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ observed that: [105] ... The initial question which must be determined is whether the misconceptions or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers. These were the decisions Siopis J had in mind when considering claims for contravention of ss 52 and 53 (d) in Cash Converters Pty Ltd v Tallut Pty Ltd [2005] FCA 939 , (2005) ATPR 42-074.


case_title: Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375


case_title: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 , 96 FCR 107

case_text: " 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 — 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 & 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 & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180. In 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 & J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.


case_text: precise definition of the elements of the tort of passing off remains elusive: ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355 per Gummow J; Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259 ; (1993) 26 IPR 261 at 268 per Gummow, French and Hill JJ. For present purposes, however, it may be accepted that the elements of the modern law of passing off were summarised in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742 by Diplock LJ as follows: My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. His Lordship continued: In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader's wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial "puffing" which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result. Lord Fraser of Tullybelton expressed perhaps a narrower statement of the cause of action: [1979] AC at 755 to 756. Lord Diplock's statement as to the five " characteristics " of the cause of action for passing off has been adopted in Australia: Moorgate Tobacco (1984) 156 CLR at 443 to 444 per Deane J; ConAgra (1972) 33 FCR at 308 to 309 per Lockhart J; Osgaig [2004] FCA 1394 at [83] to [85], 213 ALR at 167 to 168 per Weinberg J; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [29] to [30] [2005] FCA 471 ; , 143 FCR 479 at 487 per Merkel J. The " declarations of principle " of Diplock and Fraser LLJ were also accepted by the Privy Council on appeal from the Supreme Court of New South Wales in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 856 as being of " general application ". 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 & 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 & 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_outcome: discussed

case_text: however, there have emerged two lines of authority such that the path to be followed remains unclear. In Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 , 156 FCR 380 , Kenny J expressed these two lines of authority as follows: [160] The law concerning the liability of directors and other officers for corporate wrongdoings is unclear: see Allen Manufacturing Company Pty Ltd v McCallum & Company Pty Ltd (2001) 53 IPR 400 at 409 411 per Wilcox, French and Dowsett JJ (" Allen Manufacturing "). There are two relevant lines of authority, each supportive of a different test. As the Full Court said in Allen Manufacturing 53 IPR at 409: One line supported ... the " Performing Right Society test": whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". [161] No Full Court of this Court has settled which of these two tests is to be preferred: see Allen Manufacturing 53 IPR at 410 411 and Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 at [160] [161] per Weinberg and Dowsett JJ (" Sydneywide "). In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 (" Root Quality "), Finkelstein J discussed both tests and concluded at [46] that "[t]he director's conduct must be such that it can be said of him that he was so personally involved in the commission of the unlawful act that it is just that he should be rendered liable." I tend to agree with his Honour's approach: compare also Universal Music [2005] FCA 972 ; 150 FCR 1 at [134]. Branson J did not express a preference for either test and the remaining member of the Court, French J, simply agreed with the conclusion of Branson and Kenny JJ that the appeal should be dismissed.


case_text: 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_title: Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259 ; (1993) 26 IPR 261


case_text: 52 has been discussed and applied in innumerable authorities. In Domain Names Australia Pty Ltd v .au Domain Administration Ltd [2004] FCAFC 247 , 139 FCR 215 , Wilcox, Heerey and RD Nicholson JJ outlined some of the matters to be proved and the manner of proof as follows (citations omitted): [17] It has long been established that: When the question is whether conduct has been likely to mislead or deceive it is unnecessary to prove anyone was actually misled or deceived ... Evidence of actual misleading or deception is admissible, and may be persuasive, but is not essential ... The test is objective and the Court must determine the question for itself ... Conduct is likely to mislead or deceive if that is a real or not remote possibility, regardless of whether it is less or more than 50% ... [18] The likelihood of recipients of a representation being misled or deceived is not a matter to be proved by evidence (testimony, documents or things), or by judicial notice or its statutory equivalent ... The existence or otherwise of such a likelihood is a jury question for the trier of fact ... It is not necessary to prove an intention to mislead or deceive but proof of such an intention has a very strong evidentiary value: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 39 FCR 348 at 389.


case_title: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 934 , 77 IPR 69

case_text: " 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 — 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 & 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 & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180. In 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 & J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78. By way of contrast, whether a mark is " deceptively similar " is not to be determined by a side by side comparison, but rather by reference to whether there is a likelihood of deception or confusion from a recollection or impression of the registered mark: Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390 at [143] [2002] FCA 390 ; , 56 IPR 182 at 216. Allsop J there observed (citations omitted): [143] The question of deceptive similarity must be judged by a comparison different from the side by side comparison undertaken to assess substantial identity; the question being the likelihood of deception or confusion from a recollection or impression of the registered mark. Thus, a side by side comparison is inadequate, and too narrow a test. The comparison is between, on the one hand, the impression based on recollection of the registered mark used in a normal or fair manner that persons of ordinary intelligence and memory would have, and, on the other hand, the impressions that such persons would get from the impugned mark as it appears in the use complained of ... See also: E & J Gallo Winery [2008] FCA 934 at [53] to [55], 77 IPR at 79 to 80. It is not appropriate when making this comparison to undertake a wider enquiry of the kind undertaken in a passing off action or in a proceeding in which a contravention of Part V of the Trade Practices Act is alleged: CA Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539 at [44] , [2000] FCA 1539 ; 52 IPR 42 at 62 per Ryan, Branson and Lehane JJ.


case_text: " 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 — 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 & 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 & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.


case_outcome: referred to

case_title: E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180


case_text: determining whether a plaintiff has established distinctiveness in the name or names with which it contends that the goodwill which it seeks to protect has become associated, useful guidance is provided by the following observations of Hill J in Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431 at 448: Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between, names that contain ordinary English words that are in some way or other at least partly descriptive. The further along the continuum towards the fancy name one goes, the easier it will be for a plaintiff to establish that the words used are descriptive of the plaintiff's business. The closer along the continuum one moves towards a merely descriptive name the more a plaintiff will need to show that the name has obtained a secondary meaning, equating it with the products of the plaintiff (if the name admits of this — a purely descriptive name probably will not) and the easier it will be to see a small difference in names as adequate to avoid confusion. There need not be an exact or even substantial similarity in the nature of the two businesses: The Architects (Australia) [2002] QSC 139 at [27] to [28] per Chesterman J.


case_title: Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731


case_text: 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.


case_title: Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 , 76 IPR 161


case_text: general principles applicable to s 51A have been helpfully summarised by Finn J in HK Frost Holdings Pty Ltd (in liq) v Darvall McCutcheon (a firm) [1999] FCA 795 at [6] to [11] as follows (citations omitted): [6] (1) It is well settled that the objective of provisions of this type is to compensate an applicant for the loss it suffers in being kept out of its money or damages ... [7] (2) The award of interest under s 51A(1) is mandatory "unless good cause is shown to the contrary" ... Ordinarily it will be for the respondent to establish such "good cause" ... Furthermore, it is open to the court, for example, to take into account such considerations of public policy as may be relevant in the circumstances ... [8] (3) Though the matter is and remains one of judicial discretion, it is the usual practice of this Court in applying s 51A(1) to adopt the rates of interest applied by the Supreme Court of the State or Territory in which this Court is dealing with the matter ... though, no less so than a State court, the Court may then depart from those rates as a matter of discretion given the circumstances of the case ... A justification for this practice is that it helps to ensure that damages are awarded on the same basis at least as to rates of interest whether a proceeding is instituted in this Court or in a Supreme Court. Parity in the making of interest awards will, though, often be unattainable because the legislation of a particular State may prescribe varying periods for which pre-judgment interest may be awarded (depending upon the nature of the cause of action in question) that differ from what is allowable under s 51A(1) ... [9] (4) Given the variations in the language and structure of the pre-judgment interest provisions of the various Australian States, care must be taken in using the decisions of State courts on their own statutes to elucidate the meaning of s 51A(1). For example, for the purposes of s 51A(1) the formula "good cause to the contrary" would appear on its proper construction to mean only good cause for not allowing interest at all ... The subsection itself otherwise provides discretions as to the rate and the period of an interest award. In contrast, the same formula as used in s 58 of the Supreme Court Act 1986 (Vic) has been interpreted to mean good cause for allowing interest otherwise than in accordance with the terms of that section ... But s 58 , notably, does not provide the same discretions as does s 51A(1). [10] (5) It is neither possible nor desirable to define what will constitute "good cause" disentitling a party to interest under s 51A(1) ; each case must be considered by reference to its own circumstances ... [11] (6) There is considerable diversity in judicial opinion as to the extent to which, if at all, the rate or (more usually) the period selected for an interest award should as a discretionary matter be moulded adversely to a party that delays in the prosecution or defence of a claim where no resultant detriment to the other party is shown ... Nonetheless, insofar as concerns a successful applicant who has been guilty of unreasonable delay, the view I am prepared to follow in the absence of binding authority is that the period for which the interest award is made can properly be adjusted if to allow interest for the whole period for which it could otherwise be ordered would work an injustice to the respondent in the circumstances ... Such would seem to be consistent with the policy of the [sic] s 51A(1) in that an applicant that has been held out of the benefit of its money because of its own unreasonable actions should not be allowed as of course to cast the effects of a 'self-inflicted burden' onto the respondent ... Cited: Hanave Pty Limited v LFOT Pty Ltd (formerly Jagar Products Pty Ltd) (in liq) [2003] FCA 1154 at [31] .


case_text: general principles applicable to s 51A have been helpfully summarised by Finn J in HK Frost Holdings Pty Ltd (in liq) v Darvall McCutcheon (a firm) [1999] FCA 795 at [6] to [11] as follows (citations omitted): [6] (1) It is well settled that the objective of provisions of this type is to compensate an applicant for the loss it suffers in being kept out of its money or damages ... [7] (2) The award of interest under s 51A(1) is mandatory "unless good cause is shown to the contrary" ... Ordinarily it will be for the respondent to establish such "good cause" ... Furthermore, it is open to the court, for example, to take into account such considerations of public policy as may be relevant in the circumstances ... [8] (3) Though the matter is and remains one of judicial discretion, it is the usual practice of this Court in applying s 51A(1) to adopt the rates of interest applied by the Supreme Court of the State or Territory in which this Court is dealing with the matter ... though, no less so than a State court, the Court may then depart from those rates as a matter of discretion given the circumstances of the case ... A justification for this practice is that it helps to ensure that damages are awarded on the same basis at least as to rates of interest whether a proceeding is instituted in this Court or in a Supreme Court. Parity in the making of interest awards will, though, often be unattainable because the legislation of a particular State may prescribe varying periods for which pre-judgment interest may be awarded (depending upon the nature of the cause of action in question) that differ from what is allowable under s 51A(1) ... [9] (4) Given the variations in the language and structure of the pre-judgment interest provisions of the various Australian States, care must be taken in using the decisions of State courts on their own statutes to elucidate the meaning of s 51A(1). For example, for the purposes of s 51A(1) the formula "good cause to the contrary" would appear on its proper construction to mean only good cause for not allowing interest at all ... The subsection itself otherwise provides discretions as to the rate and the period of an interest award. In contrast, the same formula as used in s 58 of the Supreme Court Act 1986 (Vic) has been interpreted to mean good cause for allowing interest otherwise than in accordance with the terms of that section ... But s 58 , notably, does not provide the same discretions as does s 51A(1). [10] (5) It is neither possible nor desirable to define what will constitute "good cause" disentitling a party to interest under s 51A(1) ; each case must be considered by reference to its own circumstances ... [11] (6) There is considerable diversity in judicial opinion as to the extent to which, if at all, the rate or (more usually) the period selected for an interest award should as a discretionary matter be moulded adversely to a party that delays in the prosecution or defence of a claim where no resultant detriment to the other party is shown ... Nonetheless, insofar as concerns a successful applicant who has been guilty of unreasonable delay, the view I am prepared to follow in the absence of binding authority is that the period for which the interest award is made can properly be adjusted if to allow interest for the whole period for which it could otherwise be ordered would work an injustice to the respondent in the circumstances ... Such would seem to be consistent with the policy of the [sic] s 51A(1) in that an applicant that has been held out of the benefit of its money because of its own unreasonable actions should not be allowed as of course to cast the effects of a 'self-inflicted burden' onto the respondent ... Cited: Hanave Pty Limited v LFOT Pty Ltd (formerly Jagar Products Pty Ltd) (in liq) [2003] FCA 1154 at [31] . Of particular relevance to the present proceeding is the significance to be given to the delay that has been experienced. As noted by Finn J in HK Frost Holdings [1999] FCA 795 , delay may be relevant to both the rate at which interest is awarded and the period of time during which interest is to be paid. See also: ICT Pty Ltd v Sea Containers Ltd [2006] NSWSC 1280 at [15] .


case_text: 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. The entitlement to loss or damages springs from s 82(1) of the Trade Practices Act , which provides as follows: ... a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of Part ... V ... may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention. In order to obtain relief under s 82 , a person must have suffered loss or damage " by " conduct in contravention of (relevantly) Part V: Wardley Australia Ltd v The State of Western Australia [1992] HCA 55 ; (1992) 175 CLR 514. Mason CJ, Dawson, Gaudron and McHugh JJ there observed at 525: By virtue of s. 82(2) of the Act, the period of limitation begins to run at the time when the cause of action under s. 82(1) accrues. As loss or damage is the gist of the statutory cause of action for which s. 82(1) provides [ Elna Australia Pty. Ltd. v. International Computers (Australia) Pty. Ltd. [No. 2] [1987] FCA 230 ; (1987), 16 F.C.R. 410 , at p. 418], the cause of action does not accrue until actual loss or damage is sustained. The statutory cause of action arises when the plaintiff suffers loss or damage "by" contravening conduct of another person. "By" is a curious word to use. One might have expected "by means of", "by reason of", "in consequence of" or "as a result of". But the word clearly expresses the notion of causation without defining or elucidating it. In this situation, s. 82(1) should be understood as taking up the common law practical or common-sense concept of causation recently discussed by this Court in March v. Stramare (E. & M. H.) Pty. Ltd. [(1991) [1991] HCA 12 ; 171 CLR 506] , except in so far as that concept is modified or supplemented expressly or impliedly by the provisions of the Act. Had Parliament intended to say something else, it would have been natural and easy to have said so.


case_text: particular relevance to the present proceeding is the significance to be given to the delay that has been experienced. As noted by Finn J in HK Frost Holdings [1999] FCA 795 , delay may be relevant to both the rate at which interest is awarded and the period of time during which interest is to be paid. See also: ICT Pty Ltd v Sea Containers Ltd [2006] NSWSC 1280 at [15] .


case_title: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 39 FCR 348


case_title: Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd [2003] VSC 291 , 9 VR 171

case_text: may, of course, be held liable as joint tortfeasors with their company: Johnson Matthey (Aust) Ltd v Dascorp Pty Ltd [2003] VSC 291 at [102] , 9 VR 171 at 201 per Redlich J. However, liability as a joint tortfeasor is not confined to the potential liability of a director or officer of a corporation for a corporate tort.


case_text: number of miscellaneous matters should be briefly addressed lest it be thought that they have been overlooked, namely: (i) a number of Jones v Dunkel submissions advanced on behalf of both the Applicants and the Third Respondent, Dr Beaini; (ii) a submission advanced on behalf of the Applicants as to the non-production of documents; (iii) the use that could be made of the evidence of Mr Gambell; (iv) the need to address the manner in which the evidence given by the Fourth and Fifth Respondent should be assessed; and (v) an application made by the Applicants for the waiver of hearing fees otherwise payable pursuant to reg 7 of the Federal Court of Australia Regulations 2004 (Cth) (the " Regulations "). Jones v Dunkel Both the Applicants and the Third Respondent made submissions founded upon the failure to call available witnesses. These 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. But reliance upon Jones v Dunkel , it is considered, is of limited assistance to either the Applicants or the Third Respondent. The Applicants are correct in their submission that one or both of the two daughters could have been called to give evidence as to their involvement in the business of the Bade Medical Institute and that the accountant for that business could also have been called. Indeed, the accountant may have been able to assist in the calculation of (for example) the profits earned by that business. But it is considered that little significance is to be attached to the failure to call such witnesses. All Respondents were represented at the outset of the proceeding — but only the Third Respondent was represented at the hearing itself. The Fourth and Fifth Respondents were unrepresented and both experienced their own medical disabilities, especially the Fourth Respondent. The Fourth and Fifth Respondents conducted their cases with as much care and skill as they were able to muster. It is not considered an appropriate course to pursue — in the present case — to proceed to draw inferences based solely upon the fact that one or other possible witness was not called. Some limited significance has been attributed to the failure to call one or other of the daughters. But the preferable course, and the course in fact pursued, has been to assess what each witness said by reference to the available documentary evidence. A failure to call the " compounding pharmacist " attracts potentially different considerations. It may have been expected that the Third Respondent, being a party who was represented by both Counsel and instructing solicitors for a large part of the hearing, may have called this witness. He, again, may have been a witness who could have provided assistance as to the calculation of profits of the Bade Medical Institute. The failure of the Applicants to call Dr Vaisman also attracts different considerations. The Applicants were at all material times represented by both solicitors and Counsel. The prospect of the Third Respondent himself calling Dr Vaisman was raised during the course of a Directions hearing shortly prior to the commencement of the June 2009 hearing. The Applicants undertook to make Dr Vaisman available to give evidence upon the Third Respondent providing an outline of the facts sought to be established. Such an outline was sought so that agreement could be reached, if possible, as to those facts which were not in dispute. Even short of such an undertaking, a course available to the Third Respondent was to issue a subpoena seeking his attendance. It remained a matter for the Third Respondent to decide whether he wished to: rely upon Jones v Dunkel and seek to gain such assistance as was possible from whatever inferences may have been available; attempt to secure agreement with the Applicants as to uncontentious facts; or simply seek leave to serve a subpoena for the attendance of Dr Vaisman. If called by the Third Respondent, Dr Vaisman could not ordinarily be cross-examined by that Respondent. But no outline of the facts sought to be established was provided. The Applicants were released from the undertaking and (as events transpired) no subpoena was sought by the Third Respondent to secure Dr Vaisman's attendance. Submissions were nevertheless invited at the outset of the hearing as to the " inferences favourable " to the Respondents which it was said were available and which should be drawn by reason of the failure to call Dr Vaisman. There may perhaps be no need for a party to foreshadow at the outset of a hearing what particular inferences the Court may ultimately be invited to draw at the conclusion of the hearing. There is no necessity for a party to in effect provide at the outset an " advice on evidence " to his opponent. There may be no necessity for a party to even foreshadow that a submission will be made founded upon Jones v Dunkel . In the case where both the Applicants and the Third Respondent were represented by Counsel, the manner in which each sought to run its own case may safely be left in their hands. But the skirmish over whether Dr Vaisman was to be called or by which party ultimately assumed little relevance. Although it remained unclear what inferences the Third Respondent wanted the Court to draw by reason of the Applicants' failure to call this witness, at the end of the day it is not considered that the state of the evidence was affected by the fact that he did not give any evidence.


case_title: LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 , 80 IPR 85

case_text: the acknowledgment that there are these two distinct lines of authority, the Full Court has suggested that the differences may be more apparent than real. In Allen Manufacturing Co Pty Ltd v McCallum & Co Pty Ltd [2001] FCA 1838 , 53 IPR 400 Wilcox, French and Dowsett JJ concluded: [43] The difference between the two tests may be more apparent than read [sic]. We are not aware of any case in which it has been held that a director or officer of a company directed or procured the company's infringing act, yet that person escaped liability because he or she did not deliberately, wilfully or knowingly pursue a course of conduct that was likely to constitute infringement or that reflected indifference to the risk of infringement. This may be because, in practice, an act of direction or procurement will generally meet the Mentmore test. It is notable that, in Mentmore itself, the Canadian Federal Court of Appeal declined (at 204) to "go so far as to hold that the director or officer must know or have reason to know that the acts which he directs or procures constitute infringement". The court declined to do this because that "would be to impose a condition of liability that does not exist for patent infringement generally". The same conclusion was reached by Gordon J in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 at [171] to [175] [2008] FCA 1941 ; , 80 IPR 85 at 128 to 129.


case_text: 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_title: Louis Vuitton Malletier SA v Toea Pty Ltd [2006] FCA 1443 , 156 FCR 158

case_text: 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_title: Macquarie Bank Ltd v Seagle [2008] FCA 1417 , 79 IPR 72


case_title: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 , 104 FCR 61

case_text: 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_outcome: considered

case_text: 53 provides as follows: False or misleading representations A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: (a) falsely represent that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; (aa) falsely represent that services are of a particular standard, quality, value or grade; (b) falsely represent that goods are new; (bb) falsely represent that a particular person has agreed to acquire goods or services; (c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have; (d) represent that the corporation has a sponsorship, approval or affiliation it does not have; (e) make a false or misleading representation with respect to the price of goods or services; (ea) make a false or misleading representation concerning the availability of facilities for the repair of goods or of spare parts for goods; (eb) make a false or misleading representation concerning the place of origin of goods; (f) make a false or misleading representation concerning the need for any goods or services; or (g) make a false or misleading representation concerning the existence, exclusion or effect of any condition, warranty, guarantee, right or remedy. Reliance in the present proceeding is placed upon s 53(a) , (aa), (c) and (d). There is no reason to give these provisions anything other than their normal meaning. In McDonald's Systems of Australia Pty Ltd v McWilliams Wines Pty Ltd (1979) 28 ALR 236 at 247, Franki J considered the meaning of the terms " sponsorship " and " approval ". His Honour there concluded as to the meaning of these two terms as follows: In Weitmann v Katies Ltd (1977) 29 FLR 336 at 344, I had occasion to consider the meaning of the word "sponsorship" in s 53(c) and I said: "The word 'sponsorship' in connection with trade marks or trade names seems to envisage something more along the lines of a certification mark." I see no reason to change this view and I consider that the word "sponsorship" in s 53(c) should be construed in a way appropriate to the construction of such a word in a section creating a criminal offence. ... The next question is whether there was a representation by the respondent that its wine had "approval" which it did not have. ... The Oxford Dictionary defines "approval" as "the action of approving; sanctioning, approbation". The most appropriate meanings of "approve" in the Oxford Dictionary are, in my opinion, "to confirm authoritatively; to sanction; to pronounce to be good; commend". ... It has, however, been questioned whether these definitions place " too narrow a meaning upon these terms, attached as they are to the verb 'represent'... ": 10 th Cantanae Pty Ltd v Shoshana Pty Ltd (1987) 79 ALR 299 at 325 per Gummow J. Nor should any constrained meaning be placed upon the term " affiliation " as used in s 53(d).


case_text: Full Court of this Court revisited the decision in Yorke [1985] HCA 65 ; (1985) 158 CLR 661 and reviewed the previous decision of this Court as to the extent of the knowledge required to make a person " knowingly concerned " in a contravention: Medical Benefits Fund of Australia Ltd v Cassidy [2003] FCAFC 289 , 135 FCR 1. There in issue was s 12GD(1)(e) of the then Australian Securities and Investments Commission Act 1989 (Cth), a provision comparable to s 75B(1)(c) of the Trade Practices Act . The Court there heard two appeals, one in which the Medical Benefits Fund was the appellant; the other in which an advertising agency, Bevins, was the appellant. The primary judge accepted that Bevins did not subjectively appreciate that the advertisements involved were false, misleading or deceptive but found Bevins liable pursuant to s 12GD(1). This conclusion was reversed on appeal. Moore J reviewed the authorities on the analogous provision here in issue, s 75B , and concluded: [14] ... It follows, on his Honour's findings, that Bevins (through its officers and employees) was not aware of the second of the matters, as I earlier described them, constituting the contravening conduct of MBF. That is, while Bevins was aware of what the advertisements contained (necessarily so given that it created them) it was not aware that the advertisements might lead members of the public to believe that certain benefits would be enjoyed or rights conferred by taking out insurance with MBF. Accordingly, in my opinion, his Honour erred in concluding that Bevins was liable as an accessory under s 12GD(1). [15] I should add that, in my opinion, liability as an accessory (in circumstances where the contravening conduct of the principal was making false or misleading representations) does not depend on an affirmative answer to the question whether the alleged accessory knew the representations were false or misleading. All that would be necessary would be for the accessory to know of the matters that enabled the representations to be characterised in that way. ... Mansfield J agreed with Moore J. In a separate judgment, Stone J similarly concluded: [80] It is well established that neither knowledge nor intention is necessary for there to be a contravention of s 52 of the TPA or of s 12GA of the ASIC Act. It is sufficient (and necessary) that the conduct in question can be accurately described as "misleading or deceptive" or "likely to mislead or deceive". This misleading or deceptive character is a question of fact that must be decided in the context of all the surrounding circumstances; Taco Co of Australia Inc v Taco Bell Pty Ltd [1982] FCA 136 ; (1982) 42 ALR 177 at 202. That "fact" is an essential element of the contravention. It follows that to be liable as an accessory one must have knowledge of the misleading and deceptive character of the relevant conduct. ... [82] This is not to say that to be liable as an accessory to a strict liability breach of s 52 it is necessary to know that the conduct of the principal is unlawful, or indeed to have any knowledge of the provisions of the TPA or the ASIC Act. But it is necessary to know the essential elements of the contravention, by which I understand that one must know that which makes the conduct a contravention; in this case, its misleading and deceptive character. Only then can one form the intention to participate in conduct of that character. Liability of Directors and Joint Tortfeasors


case_text: 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_text: tort includes "... circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality or endorsement which belongs or would belong to goods or services of, or associated with, another or others ... ": Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414 at 445 per Deane J. The tort is not confined to cases where loss consists in the diversion of trade: Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 at 368 per Dixon J. The tort extends to those cases where a plaintiff and defendant are not engaged in a " common field of activity " and where a defendant is not in direct competition with a plaintiff: Totalizator Agency Board v Turf News Pty Ltd [1967] VR 605 at 608 to 609 per Smith J; 10 th Cantanae (1987) 79 ALR at 324 per Gummow J. But precise definition of the elements of the tort of passing off remains elusive: ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355 per Gummow J; Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259 ; (1993) 26 IPR 261 at 268 per Gummow, French and Hill JJ. For present purposes, however, it may be accepted that the elements of the modern law of passing off were summarised in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742 by Diplock LJ as follows: My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. His Lordship continued: In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader's wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial "puffing" which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result. Lord Fraser of Tullybelton expressed perhaps a narrower statement of the cause of action: [1979] AC at 755 to 756. Lord Diplock's statement as to the five " characteristics " of the cause of action for passing off has been adopted in Australia: Moorgate Tobacco (1984) 156 CLR at 443 to 444 per Deane J; ConAgra (1972) 33 FCR at 308 to 309 per Lockhart J; Osgaig [2004] FCA 1394 at [83] to [85], 213 ALR at 167 to 168 per Weinberg J; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [29] to [30] [2005] FCA 471 ; , 143 FCR 479 at 487 per Merkel J. The " declarations of principle " of Diplock and Fraser LLJ were also accepted by the Privy Council on appeal from the Supreme Court of New South Wales in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 856 as being of " general application ".


case_text: 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_title: Osgaig Pty Ltd v Ajisen (Melbourne) Pty Ltd [2004] FCA 1394 , 213 ALR 153

case_text: 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 & C Products Pty Ltd v SC Johnson & Sons Pty Ltd [1993] FCA 198 ; (1993) 42 FCR 188 at 192 per Davies J. But precise definition of the elements of the tort of passing off remains elusive: ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355 per Gummow J; Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd [1993] FCA 259 ; (1993) 26 IPR 261 at 268 per Gummow, French and Hill JJ. For present purposes, however, it may be accepted that the elements of the modern law of passing off were summarised in Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731 at 742 by Diplock LJ as follows: My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. His Lordship continued: In seeking to formulate general propositions of English law, however, one must be particularly careful to beware of the logical fallacy of the undistributed middle. It does not follow that because all passing off actions can be shown to present these characteristics, all factual situations which present these characteristics give rise to a cause of action for passing off. True it is that their presence indicates what a moral code would censure as dishonest trading, based as it is upon deception of customers and consumers of a trader's wares but in an economic system which has relied on competition to keep down prices and to improve products there may be practical reasons why it should have been the policy of the common law not to run the risk of hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares. The market in which the action for passing off originated was no place for the mealy mouthed; advertisements are not on affidavit; exaggerated claims by a trader about the quality of his wares, assertions that they are better than those of his rivals even though he knows this to be untrue, have been permitted by the common law as venial "puffing" which gives no cause of action to a competitor even though he can show that he has suffered actual damage in his business as a result. Lord Fraser of Tullybelton expressed perhaps a narrower statement of the cause of action: [1979] AC at 755 to 756. Lord Diplock's statement as to the five " characteristics " of the cause of action for passing off has been adopted in Australia: Moorgate Tobacco (1984) 156 CLR at 443 to 444 per Deane J; ConAgra (1972) 33 FCR at 308 to 309 per Lockhart J; Osgaig [2004] FCA 1394 at [83] to [85], 213 ALR at 167 to 168 per Weinberg J; Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471 at [29] to [30] [2005] FCA 471 ; , 143 FCR 479 at 487 per Merkel J. The " declarations of principle " of Diplock and Fraser LLJ were also accepted by the Privy Council on appeal from the Supreme Court of New South Wales in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 at 856 as being of " general application ". In summary form, there is a need to establish goodwill or reputation attaching to the relevant goods in the mind of the purchasing public, misrepresentation and damage or a likelihood of damage: Betta Foods Australia Pty Ltd v Betta Fruit Bars Pty Ltd (1998) 41 IPR 347 at 356 to 357 per Goldberg J. The misrepresentation relied upon need only be likely to lead the public to believe that the goods are those of the plaintiff — proof of actual deception is not required: Osgaig [2004] FCA 1394 at [85] , 213 ALR at 168 per Weinberg J.


case_title: Pacific Publications Pty Ltd v Next Publishing Pty Ltd [2005] FCA 625 , 222 ALR 127

case_text: 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 & 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 & 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_text: terms of s 52 are well-known but bear repetition. The section provides as follows: Misleading or deceptive conduct (1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. (2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1). Principles relevant to the construction and application of s 52 are well settled. For present purposes it is sufficient to note that conduct will be " misleading or deceptive " if it induces or is capable of inducing error: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 at 198. Gibbs CJ there further observed that " [t]he words 'likely to mislead or deceive' ... add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone ". The function of a trade mark is to identify the source of goods. By way of contrast, " the purpose of s 52 [of the Trade Practices Act ] is to prohibit misleading or deceptive conduct which will affect the recognition or identification of goods ": Parkdale Custom Built Furniture (1982) 149 CLR at 210 per Mason J. Section 120 of the Trade Marks Act provides as follows: When is a registered trade mark infringed? (1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. (2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods ( registered goods ) in respect of which the trade mark is registered; or (b) services that are closely related to registered goods; or (c) services of the same description as that of services ( registered services ) in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. (3) A person infringes a registered trade mark if: (a) the trade mark is well known in Australia; and (b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (i) goods ( unrelated goods ) that are not of the same description as that of the goods in respect of which the trade mark is registered ( registered goods ) or are not closely related to services in respect of which the trade mark is registered ( registered services ); or (ii) services ( unrelated services ) that are not of the same description as that of the registered services or are not closely related to registered goods; and (c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and (d) for that reason, the interests of the registered owner are likely to be adversely affected. (4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia , one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason.


case_text: however, there have emerged two lines of authority such that the path to be followed remains unclear. In Cooper v Universal Music Australia Pty Ltd [2006] FCAFC 187 , 156 FCR 380 , Kenny J expressed these two lines of authority as follows: [160] The law concerning the liability of directors and other officers for corporate wrongdoings is unclear: see Allen Manufacturing Company Pty Ltd v McCallum & Company Pty Ltd (2001) 53 IPR 400 at 409 411 per Wilcox, French and Dowsett JJ (" Allen Manufacturing "). There are two relevant lines of authority, each supportive of a different test. As the Full Court said in Allen Manufacturing 53 IPR at 409: One line supported ... the " Performing Right Society test": whether the director had "directed or procured" the company's infringement. The other line supported "the Mentmore test": whether the director had engaged in "the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it". [161] No Full Court of this Court has settled which of these two tests is to be preferred: see Allen Manufacturing 53 IPR at 410 411 and Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 157 ; (2002) 55 IPR 354 at [160] [161] per Weinberg and Dowsett JJ (" Sydneywide "). In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 ; (2000) 177 ALR 231 (" Root Quality "), Finkelstein J discussed both tests and concluded at [46] that "[t]he director's conduct must be such that it can be said of him that he was so personally involved in the commission of the unlawful act that it is just that he should be rendered liable." I tend to agree with his Honour's approach: compare also Universal Music [2005] FCA 972 ; 150 FCR 1 at [134]. Branson J did not express a preference for either test and the remaining member of the Court, French J, simply agreed with the conclusion of Branson and Kenny JJ that the appeal should be dismissed. The 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_text: " 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 — 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 & 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 & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 , 175 FCR 386 ; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] HCATrans 180.


case_text: 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_text: 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 & C Products Pty Ltd v SC Johnson & 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 & 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 & 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_text: 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_title: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 , 93 FCR 365

case_text: 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 & J Gallo Winery [2008] FCA 934 at [41] to [43], 77 IPR at 78.


case_text: 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 — 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_title: RPS v The Queen [2000] HCA 3 , 199 CLR 620

case_text: 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.