case_text: It is common ground that an assignee or donee of a ticket who became a holder otherwise than through a resale for profit by the original purchaser, is not bound by new condition 6 and that such a holder is free to resell for profit. There is an ambiguity in the words 're-sold for profit'. An original purchaser could resell and realise a profit without having been motivated to make a profit. The choice for construction of the expression is between the subjective motivation of the seller as opposed to the objective fact of a resale at a price greater than $120. (The cost may vary depending on the nature of the transaction including any applicable booking fee or postage costs. In these reasons I will refer to $120 as an illustration of the approximate cost to purchase a ticket.) The second sentence of new condition 6 prohibits two methods of sale, but must be read with the first sentence. The commercial purpose of new condition 6 is to prevent 'scalping' that is the purpose which reasonable persons in the position of Creative and original purchasers would have had in mind at the time of sale ( Zhu v Treasurer of NSW [2004] HCA 56 ; (2004) 218 CLR 530 at 559 [82] ). 39 It is necessary to construe new condition 6 so as to avoid it making commercial nonsense or working commercial inconvenience ( Zhu 218 CLR at 559 [82]). If the subjective intention of a vendor on eBay were relevant, new condition 6 would not operate automatically. There would be no readily ascertainable way of enforcing it without enquiry by Creative as to the subjective motivations of an original purchaser who resold. Accordingly, I am of opinion that the proper construction of 're-sold for profit' is that it operates on the objective fact of the price realised on resale being greater than $120. 40 When a purchaser wished to buy a ticket to Big Day Out from Ticketmaster online, he or she would go to a Ticketmaster webpage with a subheading 'Hot Tickets' on which the words 'Big Day Out 2007' appeared. Each webpage had a clause stating that by continuing past it the user agreed to abide by Ticketmaster's terms of use which included its purchase policy. At the top of that page it was stated that the tickets would be mailed in late November 2006. By clicking on 'Big Day Out 2007' the purchaser was then taken to a Ticketmaster webpage headed 'Big Day Out 2007' with the venues and dates marketed by Ticketmaster on it (being Sydney, Melbourne and Perth). This page was mainly a publicity or general information page. The purchaser then clicked on the 'Buy Tickets' button and an events search results page opened showing the three venues being marketed. Each had a button for 'Find Tickets'. By clicking on the button for the relevant event, a new webpage opened containing event information and indicating that the box office was open. 41 The purchaser was told that if they were already a Ticketmaster member and had their billing information pre-registered they could log in on the log in button. If not, they were then directed to complete the information needed to become such a member. It was a condition of establishing such a membership that the user of Ticketmaster's website accepted the terms of use on the website as governing the relationship. That provided that the purchase policy would govern the order or purchase of any tickets through the site. The purchaser had to agree by using the site to abide by the terms of that policy. The purchase policy contained the following terms and conditions: 'This Purchase Policy is subject to, and incorporates by this reference, the Terms of Use. Each ticket that you purchase is a licence to attend a particular event and is subject to the additional terms set forth on that ticket. ... Unlawful Resale of Tickets Commercial Purposes Unlawful resale of tickets (or attempt) is grounds for seizure and cancellation without compensation. A ticket shall not be used for advertising, promotions, contests, or sweepstakes unless formal written authorisation is given by the Event Provider, provided that even if such consent is obtained, use of Ticketmaster's trademarks and other intellectual properties are subject to Ticketmaster's consent.' 59 Again, whatever be the precise contractual analysis of the position, the very terms of the conditions of sale are calculated to convey to an ordinary reasonable person reading them that they cannot get out of the conditions. Ironically, it is Creative that has argued that the purchaser can eschew the conditions it wrote and imposed on the ticket telling the purchaser that they could not get a refund. This unattractive argument has no commercial morality about it. These are consumer transactions, mainly effected with young people who are not experienced in the commercial world. Creative used its own drafting of contractual terms and the representations they convey as to the efficacy of those contractual terms to assert that the purchaser cannot get a refund. It then had senior counsel argue that, applying classical contractual analysis, the purchaser could ignore its own ticket wording because the customer in fact had a right to a refund. The argument is less than meritorious. Creative's argument makes the very words condition of sale 3 commercial nonsense ( Zhu 218 CLR at 559 [82]). I reject the argument. 60 Before 16 November 2006, if a person went to a retailer, other than Ticketmaster, seeking to buy tickets over the counter, there was no material at the retailer's premises to indicate what conditions were sought to be imposed on the ticket other than those contained on the back of the ticket itself. I am of opinion that a similar analysis to that which applies to Ticketmaster's over the counter sales applies here.


case_outcome: followed

case_text: maximum penalty of 12 months' imprisonment reflects Parliament's view that "the provision of false information in response to a s 155 notice is a serious offence"; see Australian Competition and Consumer Commission v GIA Pty Ltd [2002] FCA 1298 at [19] per Heerey J, see also Australian Competition and Consumer Commission v Rana [2008] FCA 374 at [50] per North J. Considerations relevant to penalty Having regard to the importance of general deterrence, as stressed by Lindgren J in Neville , and the ameliorating factors referred to at [22] above, I consider that a monetary penalty between mid-range and high range should be imposed. The charge is too serious to warrant the imposition of a conditional discharge under s 19B(1) of the Crimes Act in respect of Mr Clarke. To do so would be inconsistent with the approach adopted by this Court in Neville, GIA and Rana . The disqualification of Mr Clarke from managing another corporation under s 206B of the Corporations Act 2001 (Cth) is a matter which Mr Clarke should have had regard to before committing the offence.


case_text: factors referred to in the preceding paragraph weigh in favour of a reduction in penalty from the high range to a range in excess of a mid-range penalty but below that of a high range penalty. However, as Lindgren J said in Australian Competition and Consumer Commission v Neville [2007] FCA 1583 at [43] : an important purpose of the penalty to be imposed in the present case is that of general deterrence. It is most important that persons furnishing information or giving evidence in response to a notice issued by the ACCC under s 155 of the TP Act do so frankly and honestly. It serves the public interest that the ACCC be enabled to carry out its investigations efficiently and effectively. Section 155 of the TP Act is directed to that end. If a person who is required to give evidence under s 155(1)(c) of the TP Act gives false or misleading evidence, not only does this have the immediate effect of obstructing and delaying the particular investigation: it also has the potential to direct the ACCC away from other sources of information and to draw human and financial resources away from its other work. The general public should know that conduct of that kind will be treated seriously by the Court. Specific deterrence is not a central consideration as I am confident that Mr Clarke will not re-offend. Having regard to the importance of general deterrence, as stressed by Lindgren J in Neville , and the ameliorating factors referred to at [22] above, I consider that a monetary penalty between mid-range and high range should be imposed. The charge is too serious to warrant the imposition of a conditional discharge under s 19B(1) of the Crimes Act in respect of Mr Clarke. To do so would be inconsistent with the approach adopted by this Court in Neville, GIA and Rana . The disqualification of Mr Clarke from managing another corporation under s 206B of the Corporations Act 2001 (Cth) is a matter which Mr Clarke should have had regard to before committing the offence.


case_outcome: referred to

case_text: a fine of $5,600 will be imposed on Narnia and fine of $1,400 will be imposed on Mr Clarke. I would have ordinarily imposed a penalty of $7,000 on Narnia but have reduced that amount by $1,400 to reflect the penalty imposed on Mr Clarke. I have done so given that Narnia was, in practical terms, Mr Clarke's alter ego. One must be careful to avoid what is, in effect, double punishment of a sole director of a company; see Australian Competition and Consumer Commission v Commercial and General Publications Pty Ltd (No 2) [2002] FCA 1349 at [27] [29] per Heerey J. The penalties are to be paid into the Consolidated Revenue Fund on or before 20 May 2009. It is agreed that the defendants should pay the prosecutor's costs of the proceeding. I certify that the preceding twenty-seven (27) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Marshall. Associate: Dated: 23 April 2009 Counsel for the Prosecutor: Mr I Faulkner SC with Mr I Arendt Solicitor for the Prosecutor: Commonwealth DPP Counsel for the Defendants: Mr D Barclay Solicitor for the Defendants: Page Seager Date of Hearing: 22 April 2009 Date of Judgment: 22 April 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/395.html


case_text: maximum penalty of 12 months' imprisonment reflects Parliament's view that "the provision of false information in response to a s 155 notice is a serious offence"; see Australian Competition and Consumer Commission v GIA Pty Ltd [2002] FCA 1298 at [19] per Heerey J, see also Australian Competition and Consumer Commission v Rana [2008] FCA 374 at [50] per North J. Considerations relevant to penalty In GIA , Heerey J considered that a mid-range penalty was appropriate because the relevant conduct was "more a matter of minimisation and evasion than denial or the laying of a false trail"; at [19]. In the current case, the conduct was in the nature of denial and the laying of a false trail. The nature and circumstances of each offence make it a serious transgression for Narnia and Mr Clarke respectively; see s 16A(2)(a) of the Crimes Act which requires the Court to take into account the "nature and circumstances of the offence". On the face of the conduct, the offence by each defendant should attract a high range monetary penalty. I accept that it would not be appropriate in all the circumstances to imprison Mr Clarke, especially given that he has pleaded guilty and has no prior convictions. The applicable considerations in amelioration of penalty in the current circumstances include the following:


case_outcome: applied

case_text: Insofar as the application by the Receiver is made under s 424 of the Corporations Act , the relevant principles are not in dispute: see Re One.Tel Networks Holdings Pty Ltd (Hall as rec and mgr) [2001] NSWSC 1065 ; (2001) 40 ACSR 83 at 90. Moreover, in so far as the Receiver makes the application under O 26 r 7 of the Rules, the Court has power to approve the Receiver entering into the Deed: University of Western Australia v Gray (No 6) [2006] FCA 1825 at [66] ; Australian Securities and Investments Commission v Ludgates Corporate and Advisory Services Pty Ltd [2003] FCA 1368 at [23] .


case_outcome: cited

case_title: Bell Group Ltd (in liq), Re [2009] WASC 235

case_text: By reason of the issues raised in the underlying substantive proceedings, I accept the submission of the Receiver that it was appropriate for him to bring the matter before the Court: Re Bell Group Ltd (in liq) [2009] WASC 235. First, the Receiver trading the Business at the Premises itself is contentious. However, the approval does not determine the disputed issues in the underlying substantive proceedings, which primarily relate to the entitlement to the assets and undertaking of the Company: cf MTM Funds Management Ltd v Cavalane Holdings Pty Ltd [2000] NSWSC 922 ; (2000) 158 FLR 121 at [17] ; Re Bell Group Ltd (in liq) [2009] WASC 235 ; Re Mento Developments (Aust) Pty Ltd (ACN 005 862 457) (in liq) (2009) 73 ACSR 622 at [49]. As the Receiver submitted, if the Receiver is permitted to trade and does so successfully, the assets and undertaking of the Company will be protected or preserved and possibly enhanced: s 57 of the Federal Court of Australia Act 1976 (Cth) and Martyniuk v King [2000] VSC 319 at [15] .


case_text: Accordingly, if a liquidator, or in this case the Receiver, wishes to enter into a longer term agreement on behalf of a company, they must seek the Court's approval before entering into such an agreement: Empire (Aust) Nominees Pty Ltd v Vince (2000) 18 ACLC 738 at 741.


case_title: Martyniuk v King [2000] VSC 319


case_title: Mento Developments (Aust) Pty Ltd (ACN 005 862 457) (in liq), Re (2009) 73 ACSR 622


case_title: Mineral Securities Australia Ltd (in liq), Re [1973] 2 NSWLR 207

case_text: The Receiver has exercised his own commercial judgment in deciding whether to enter into the Deed. The Receiver does not seek, and the Court will not provide, advice on the question of his own commercial judgment: Re Mineral Securities Australia Ltd (in liq) [1973] 2 NSWLR 207 at 231-2; Re One.Tel Networks Holdings Pty Ltd (Hall as rec and mgr) [2001] NSWSC 1065 ; (2001) 40 ACSR 83 at 91.


case_title: MTM Funds Management Ltd v Cavalane Holdings Pty Ltd [2000] NSWSC 922 ; (2000) 158 FLR 121


case_title: One.Tel Networks Holdings Pty Ltd (Hall as rec and mgr), Re [2001] NSWSC 1065 ; (2001) 40 ACSR 83

case_text: Insofar as the application by the Receiver is made under s 424 of the Corporations Act , the relevant principles are not in dispute: see Re One.Tel Networks Holdings Pty Ltd (Hall as rec and mgr) [2001] NSWSC 1065 ; (2001) 40 ACSR 83 at 90. Moreover, in so far as the Receiver makes the application under O 26 r 7 of the Rules, the Court has power to approve the Receiver entering into the Deed: University of Western Australia v Gray (No 6) [2006] FCA 1825 at [66] ; Australian Securities and Investments Commission v Ludgates Corporate and Advisory Services Pty Ltd [2003] FCA 1368 at [23] . 13 The Receiver has exercised his own commercial judgment in deciding whether to enter into the Deed. The Receiver does not seek, and the Court will not provide, advice on the question of his own commercial judgment: Re Mineral Securities Australia Ltd (in liq) [1973] 2 NSWLR 207 at 231-2; Re One.Tel Networks Holdings Pty Ltd (Hall as rec and mgr) [2001] NSWSC 1065 ; (2001) 40 ACSR 83 at 91.


case_text: There are a number of principles relevant to the exercise of the Court's power under s 477(2B). These principles were set out in Stewart, in the matter of Newtronics Pty Ltd [2007] FCA 1375 as follows (at [26]): (1) the court does not simply "rubber stamp" whatever is put forward by a liquidator. As Giles J said in Re Spedley Securities Ltd (In liq) [1991] HCA 58 ; (1992) 10 ACLC 1 ,742 at 1,745 in relation to the powers of a liquidator to compromise claims: "[T]he Court is necessarily confined in attempting to second guess the liquidator in the exercise of his powers, and generally will not interfere unless there can be seen to be some lack of good faith, some error in law or principle, or real and substantial grounds for doubting the prudence of the liquidator's conduct. The same restraint must apply when the question is whether the liquidator should be authorised to enter into a particular transaction the benefits and burdens of which require assessment on a commercial basis. Of course, the compromise of claims will involve assessment on a legal basis, and a liquidator will be expected (as was made plain in Re Chase Corporation (Australia) Equities Ltd ) to obtain advice and, as a prudent person would in the conduct of his own affairs, advice from practitioners appropriate to the nature and value of the claims. But in all but the simplest case, and demonstrably in the present case, commercial considerations play a significant part in whether a compromise will be for the benefit of creditors." (2) a court will not approve an agreement if its terms are unclear: Re United Medical Protection (No 4) [2001] FCA 1402 ; (2002) 20 ACLC 1 ,647; (3) the role of the Court is to grant or deny approval to the liquidator's proposal. Its role is not to develop some alternative proposal which might seem preferable: Corporate Affairs Commission v ASC Timber Pty Ltd (1998) 16 ACLC 1,642; (4) in reviewing the liquidator's proposal, the task of the Court is: "[not] to reconsider all of the issues which have been weighed up by the liquidator in developing the proposal, and to substitute its determination for his in ... a hearing de novo [but] ... simply to review the liquidator's proposal, paying due regard to his or her commercial judgment and knowledge of all of the circumstances of the liquidation, satisfying itself there is no error of law or ground for suspecting bad faith or impropriety, and weighing up whether there is any good reason to intervene in terms of the "expeditious and beneficial administration" of the winding up." See ASC Timber at 1,650; see also Re Gate Gourmet Australia Pty Ltd (in liq) (2005) 23 ACLC 834 at [10] and Warne v GDK Financial Solutions; Peridon Village Nominees [2005] FCAFC 265 ; (2006) 24 ACLC 1 ,019 at [60]. The Court's approval is not an endorsement of the proposed agreement but is merely a permission for the liquidator to exercise his or her own commercial judgment in the matter; (5) further, in judging whether or not a liquidator should be given permission to enter into a funding agreement (whether retrospective or not), it is important to ensure, inter alia, that the entity or person providing the funding is not given a benefit disproportionate to the risk undertaken in light of the funding that is promised or a "grossly excessive profit": Anstella Nominees Pty Ltd v St George Motor Finance Ltd [2003] NSWCA 131 ; (2003) 21 ACLC 1 ,347 at [11] and Re ACN 076 673 875 Ltd [2001] FCA 1402 ; (2002) 20 ACLC 1 ,551 at [28]; (6) generally, the Court grants approval under s 477(2B) of the Act only where the transaction is the proper realisation of the assets of the company or otherwise assists in the winding up of the company: GDK Financial Solutions at [58] and the cases cited therein.


case_title: University of Western Australia v Gray (No 6) [2006] FCA 1825


case_text: Counsel have referred me to the decision of Hodgson J in George Ward Steel Pty Ltd v Kizkot Pty Ltd (1989) 15 ACLR 464 as providing an example of the use of a provision such as O 35 r 7 in circumstances such as the present. It is also submitted that the factors which his Honour took into account in a passage on page 465 in making the order in that case are all present here. The order was made in the absence of the defendant. The application has been brought promptly. The liquidator is here and represented, as is the petitioning creditor. Australian Securities & Investments Commission has no opposition, although in reality it adopts a neutral stance. A statement of affairs has been tendered and there has been evidence led from one of the directors, from the company's bookkeeper and from an external accountant or financial adviser which indicates that the company is solvent. Most particularly, the financial fate of the company in the short to medium term depends upon its relationship with its bankers, St George Bank, and there is in evidence a letter from that company which, in effect, undertakes to permit payments to be made to satisfy the amount of the demand by the Deputy Commissioner and the costs incurred by the Deputy Commissioner and the liquidator. 4 As I indicated in the course of argument, there is a question in my mind about the preferred method of dealing with this situation because the appointment of a liquidator has consequences which can be likened to those in rem rather than simply being an inter partes order. However, Hodgson J's approach is a clear precedent for what is sought. I am disposed to follow it, including the grant of leave to the directors to bring the proceedings. 5 The practical result of this order is that the proceeding will be restored as a defended matter and then adjourned to a later date. The liquidator ceases to hold office and of course, on one view, apart from the de facto consequences, was never properly appointed. In an endeavour to secure the position, all I can do is to order as a term of granting the application that the company pay the costs both of the Deputy Commissioner and of the liquidator arising out of the making of the order and the making of this application. I also take note of the undertakings to the Court given by counsel on behalf of two of the directors of the company to procure various payments to be made when St George Bank makes the funds available. I stand the matter over until 9.45 am tomorrow for orders to be made on the bases that I have indicated. I grant liberty to apply in the meantime. I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles. Associate: Dated: 8 June 2006 Counsel for the Applicants on the interlocutory process: Mr D Robertson Solicitor for the Applicants on the interlocutory process: Atkinson Vinden Heazlewoods Counsel for the Plaintiff/Respondent on the interlocutory process: Mr D Crompton Solicitor for the Plaintiff/ Respondent on the interlocutory process: Church & Grace Solicitor for the Liquidator: Mr PG Cutler Date of Hearing: 25 May 2006 Date of Judgment: 25 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/714.html


case_text: The Debtor swore an affidavit in support of his application. Leaving aside some grounds which were dismissed by the learned Magistrate and not raised on appeal, the Debtor deposed that he was solvent and that any creditor's petition against him would amount to an abuse of process in view of the fact that any such sequestration orders would be "foredoomed to failure based upon my solvency". He deposed that he had "assets which exceed $1 million in value and my liabilities are far less than that figure". The affidavit continued: "11. Further I believe that the Bankruptcy Notice also amounts to an abuse of process by reason of the fact that the assignor of the relevant debt previously filed another Bankruptcy Notice against me in this Court arising out of another proceeding filed in the County Court and has not pursued any bankruptcy proceedings against me on the basis of that principal judgment debt. I believe it has not done so because it knows that I am a solvent person. 12. The appeal proceedings brought against the assignor arose out of that principal County Court proceeding. The purported assignor of the debt was my previous solicitor in Family law proceedings, Messrs. Lennon Settle, and they know full well that I am a solvent person with ample assets. I believe that the Bankruptcy Notice has been filed as an illegitimate attempt to cause me stress and vexation, knowing full well that I am a solvent person. It smacks of an abuse of process designed to persecute me and designed to ulitise this Court s a debt collector when there are ample alternative remedies available to any judgment credit or assignee thereof to collect any judgment debt owed by me." The Debtor's speculation about the beliefs and motives of the Assignor and the Creditor would seem to be inadmissible. No objection was taken. However, as this is an appeal by way of rehearing, the judgment appealed from can be set aside where there is legal, factual or discretionary error: Allesch v Maunz [2000] HCA 40 ; (2000) 203 CLR 172 at [23] (a case which concerned the Family Court but is equally applicable to appeals in the Federal Court: Minister for Immigration and Multicultural Affairs v Jia Legeng [2001] HCA 17 ; (2001) 205 CLR 507 at [75] ). It is not clear whether his Honour relied on this evidence, but if and to the extent that he did there would be an error of fact-finding: CSR Ltd v Della Maddalena [2006] HCA 1 ; (2006) 224 ALR 1 at [16] . Unsupported speculation of this kind has no probative value.


case_title: Minister for Immigration and Multicultural Affairs v Jia Legeng [2001] HCA 17 ; (2001) 205 CLR 507


case_title: CSR Ltd v Della Maddalena [2006] HCA 1 ; (2006) 224 ALR 1


case_text: His Honour referred to statements of principle including those in Maxwell-Smith v S & E Hall Pty Ltd [2006] FCA 825 when Jacobson J cited a number of propositions including at [43]: "If it is apparent to the Court that the purpose of a bankruptcy notice is to put pressure on a debtor to pay a debt, rather than to invoke the Court's insolvency jurisdiction, the issue of the bankruptcy notice will be an abuse of process." [Authorities cited] 15 The learned Magistrate at [56] found the evidence of the Debtor's solvency "clearly deficient". This aspect has not been pursued on the appeal.


case_title: Etl v Settle [2004] FMCA 718

case_text: His Honour at [57] thought that the Creditor had been "less than frank" with the Court in divulging the true circumstances leading up to the execution of the assignment. He noted that the assignment itself had not been produced and there might have been formal defects in it. His Honour continued: "58. In any event, applying the authorities to which reference has been made, I am satisfied that the bankruptcy notice has been issued as a means to secure payment of the debt and further that it has a collateral purpose. On that basis, I am satisfied it is an abuse of process and should be set aside. 59. It is clear on the evidence before me that the Creditor has issued the bankruptcy notice solely for the purpose of securing payment of the debt and has failed to take any appropriate action to otherwise recover the debt or even make demand upon the Debtor for payment of the debt. The demand made on the Debtor was a demand made by the assignor prior to the assignment of the debt. 60. The collateral purpose in my view having regard to the history set out in the court's earlier decision in Etl v Settle [[2004] FMCA 718] was to circumvent the operation of s.44 of the Bankruptcy Act . I am satisfied that the close relationship between the Creditor and the assignor illustrates that this procedure undertaken for the first time by the Creditor was a procedure which had as its collateral purpose a benefit to the Creditor's friend and professional colleague of avoiding the operation against the assignor of s.44 of the Bankruptcy Act . 61. I am satisfied on the material before me, including the history set out in the Court's earlier judgment to which I have already referred, that there was a benefit to the assignor of 'syphoning off' a small part of the total debt allegedly owed by the Debtor to the assignor in a manner that would enable the current Creditor to pursue a sequestration order after the issue of a bankruptcy notice in a manner which would not attract the operation of s.44 of the Bankruptcy Act to the detriment of the assignor. 62. The use of bankruptcy proceedings in this contrived manner in my view is an abuse of process, as it has clearly been undertaken at least in part to satisfy [the] collateral purpose of obtaining a benefit to the assignor of becoming a Creditor without sacrificing security. This contrived arrangement is an inappropriate use of bankruptcy proceedings and a blatant attempt to avoid the consequences of the operation of s.44 of the Bankruptcy Act ."


case_text: There was no evidence to base the finding in [59] that the Creditor issued the notice "solely" for the purpose of securing payment of the debt. Even if the Magistrate did not find him a credible witness, disbelief of him could not found a positive conclusion as to the existence of the relevant purpose, proof whereof lay on the Debtor: Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18 ; (2000) 200 CLR 121 at [53] , King v Collins [2007] NSWCA 122 at [42] .


case_title: King v Collins [2007] NSWCA 122


case_title: Permanent Custodians Limited v ARMA Pty Limited [2006] FCA 640


case_title: B luescope Steel Ltd (ACN 000 011 058) v Kelly [2007] FCA 517

case_text: I should note that, even if the Kabi Kabi #2 Applicant had been joined as a party as at 3 May 2007, in my view it is unlikely that it would have been entitled to recovery of its costs in connection with preparation of the relevant affidavits given that these were costs incurred prior to joinder (cf Bluescope Steel Ltd (ACN 000 011 058) v Kelly [2007] FCA 517 at [192] and Bray v F Hoffman-La Roche Ltd [2003] FCA 1505 at [40] ). THE COURT ORDERS THAT: 1. The native title determination application Edna Van Hemmen and Ors on behalf of the Kabi Kabi People #3 v State of Queensland and Ors QUD136 of 2006 filed 7 April 2006 be dismissed pursuant to s 84C Native Title Act 1993 (Cth). 2. There be no order as to costs in respect of the collation and preparation of those affidavits filed in this matter on 20 April 2007 by the applicant in the proceedings known as Lance Hill and Ors on behalf of the Kabi Kabi People #2 v State of Queensland and Ors QUD65 of 2006. I certify that the preceding forty-nine (49) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier. Associate: Dated: 9 August 2007 Counsel for the Applicant: P Poynton and D Topp Solicitor for the Applicant: Bernice Anning Solicitors Solicitor for the First Respondent: Crown Law Counsel for the Second and Third Respondents: D Rangiah Solicitor for the Second Respondent: Gurang Land Council Solicitor for the Third Respondent: Queensland South Native Title Services Counsel for Kabi Kabi #2: A Preston Date of Hearing: 3 May 2007 Date of Judgment: 9 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1185.html


case_text: To the extent that there is overlap with respect to the operation of s 84C and O 20 r 2 in the context of native title cases, I note that: • unlike O 20 r 2 which applies generally, s 84C is clearly limited to native title determination applications under the Act • section 84C applies where an application does not comply with ss 61 , 61A or 62 , whereas O 20 r 2 is only enlivened if no reasonable cause of action is disclosed, the proceeding is frivolous or vexatious, or the proceeding is an abuse of process • the Courts have tended to equate the consequences of strike-out under s 84C with those of summary dismissal under O 20 r 2: Williams v Grant [2004] FCAFC 178 at [48] - [49] . Accordingly the Courts approach such matters with caution, and on the basis that no court proceeding should be summarily dismissed except in a very clear case: Bodney v Bropho [2004] FCAFC 226 ; (2004) 140 FCR 77 at 89.


case_text: Mr Preston for the Kabi Kabi #2 Applicant, in supporting the notice of motion to dismiss Kabi Kabi #3, submitted in summary as follows: • The Kabi Kabi #3 Application produces no evidence that the alleged decision-making process resulting in that native title determination application was a mandatory traditional process involving traditional laws and customs which needed to be followed. • In terms of s 251B of the Act , an agreed process of decision-making is applicable if there is no mandatory traditional process of decision-making under traditional laws and customs. Where a native title determination application is based upon an agreed process, the applicant must identify how the process was agreed upon, and how it was put into practice. • It is open to the Court to infer that the Kabi Kabi #3 Applicant cannot identify such a process in relation to that application, in that the Kabi Kabi #3 Applicant did not produce relevant evidence to the Court in response to the notice of motion to dismiss the application, and that it is also unlikely that any new material of relevance could be produced to the Tribunal. • There has been no consultation process in the case of Kabi Kabi #3 involving invitations, notice or discussions with people relevant to any native title claim concerning the Kabi Kabi people, and no evidence has been produced to establish eldership in relation to those people in Kabi Kabi #3 who assert eldership. Accordingly, the decision-making process is, on the Kabi Kabi #3 Applicant's own material, seriously defective to the point of being incurable. State of Queensland 18 Mr Prowse for the State of Queensland submitted: • there cannot be valid authorisation of both claims in Kabi Kabi #2 and Kabi Kabi #3 • the material filed by the Kabi Kabi #3 Applicant does not sufficiently address the authorisation issue • if the current situation continued, with competing claims, the view of the State was that more time and money would be wasted in fruitless interlocutory applications. Kabi Kabi #3 Applicant 19 Mr Poynton, for the Kabi Kabi #3 Applicant, opposed the dismissal application. In summary, his submissions were as follows: • it was accepted that the Kabi Kabi #3 claim had failed the registration test of the Tribunal on the basis of failure of correct authorisation • the Act was amended at the beginning of 2007 • as sworn by Ms Bernice Anning, solicitor for the Kabi Kabi #3 Applicant, in an affidavit of 2 May 2007, the Kabi Kabi #3 Applicant had been contacted by the Tribunal on the basis that, although Kabi Kabi #3 had failed the registration test on 31 August 2006, the changes to the Act meant that the Tribunal was required to test the application again, and had assigned a case manager to help with any questions • accordingly, it would be premature for the Court to "close the administrative window of opportunity" opened by the legislature and the Tribunal by dismissing the Kabi Kabi #3 Application • an alternative way forward would be for the Court to order an adjournment until later in 2007, to allow the Kabi Kabi #3 Applicant time to have their material prepared, submitted to the Tribunal, and be allowed to take advantage of the legislature's change of the law • it would be unfair to strike out the Kabi Kabi #3 Application, and not the Kabi Kabi #2 Application. 27 Third, as I have already noted, Ms MacDonald also deposed that a majority decision arrived at during a meeting held in accordance with Australian meeting rules and conventions conforms to the traditional values associated with Kabi Kabi decision meeting in appropriate conditions (cf similar comments of Mr Alexander Davidson in his affidavit of 11 October 2004 (para 11)). However in the absence of more precise evidence, I am not prepared to accept at this stage that majority vote is a method of decision-making in accordance with traditional Aboriginal law and custom in relation to the Kabi Kabi people. Mr Niblett in his report makes no reference to majority voting as conforming to traditional decision-making processes. Further, to paraphrase comments of Tamberlin J in similar circumstances in Booth v State of Queensland [2003] FCA 418 , there is no other evidence, oral or written, before me as to the constitution of the group or the basis on which it is claimed that a majority vote would be sufficient, or indeed as to who and how many persons are entitled to vote and precisely what is meant by the expression "majority vote" ( Booth [2003] FCA 418 at [11] ). 28 Fourth, if the authorisation process concerning the Kabi Kabi #3 claim was not in conformity with traditional law and customs, it is not clear to me on the evidence that the native title claim group agreed to and adopted any particular decision-making process in relation to authorising the Kabi Kabi #3 Applicant to make the Kabi Kabi #3 Application. I note and accept the submissions of Mr Rangiah for QSNTS in this regard concerning the lack of evidence or detail as to the authorisation process in that case. 29 Finally, I note that the submissions of Mr Poynton for the Kabi Kabi #3 Applicant in this matter are not that the application is authorised and in accordance with s 61 , but are confined to a request for more time to allow it to, in the words of Mr Poynton, take advantage of "an administrative window of opportunity" offered by the Tribunal in relation to testing the application. In my view this submission does not address the key issues before the Court in relation to the current notice of motion. In particular: • notwithstanding the formal offer by the Tribunal to test the application again, the applicant provides no explanation to this Court as to how or why, as a result of amendments to the Act , it is possible that the Tribunal may view the claim as authorised whereas previously it had not • no additional evidence was produced by the Kabi Kabi #3 Applicant to the Court in response to the notice of motion to have the Kabi Kabi #3 Application struck out demonstrating that the Kabi Kabi #3 Application was in fact authorised • the written submissions of QSNTS in relation to flaws in the alleged authorisation process in Kabi Kabi #3 have not been addressed by the Kabi Kabi #3 Applicant • I fail to understand how extra time allowed to the Kabi Kabi #3 Applicant in these circumstances will address a key issue raised by Mr Rangiah, namely that there are currently two applications allegedly authorised by Kabi Kabi people, covering a very similar area of land and involving eleven common apical ancestors, however both applications cannot be authorised, and either one or both of the applications must not be authorised in accordance with s 61(1) of the Act . 30 Mr Poynton has also submitted that it would be unfair to strike out the Kabi Kabi #3 Application and not the Kabi Kabi #2 Application. However in my view this submission is of little weight, as I note from the undertaking of Mr Preston on behalf of his client that the effect of striking-out the Kabi Kabi #3 Application is that the Kabi Kabi #2 Application will be discontinued. 31 It is unnecessary in these circumstances that I deal with O 20 r 2 Federal Court Rules . The Kabi Kabi #3 Application does not comply with s 61 of the Act and accordingly should be struck out pursuant to s 84C.


case_text: Mr Topp for the Kabi Kabi #3 Applicant submitted in summary: • the notice of motion of 29 June 2006 was an interlocutory step in the proceeding. Costs of interlocutory proceedings should be costs in the cause and not taxed until the end of the proceedings: O 62 r 3(3) Federal Court Rules , Brasington v Overton Investments Pty Ltd [2001] FCA 57 • as a consequence of s 85A, in relation to native title applications there is no expectation that costs will follow the event • persons, entities or groups other than the respondents should not be entitled to any form of costs order in respect of the 29 June 2006 notice of motion, whether a deemed costs in their cause order or at all. The directions made on 9 March 2007, where the Kabi Kabi #3 Applicant was ordered to serve the Kabi Kabi #2 Applicant with the relevant documents, did not require or otherwise oblige the Kabi Kabi #2 Applicant to file affidavits, outlines of argument or any other material, nor to do anything else at all. 46 I note the submission of Mr Preston that the 29 June 2006 notice of motion had been on foot for almost a year at the time of the hearing of 3 May 2007, and that the Kabi Kabi #3 Applicant had known since at least late April 2006 that authorisation was an issue in the proceedings. In this respect advancement of the Kabi Kabi #3 Application appears to have been afflicted by some ennui. 47 However, I also note that, while not determinative of the claim of the Kabi Kabi #2 Applicant, no orders have been sought by State of Queensland, Gurang Land Council or QSNTS, which were parties to the proceedings, for costs against the Kabi Kabi #3 Applicant in relation to its discontinuance of the 29 June 2006 notice of motion.


case_title: Bray v F Hoffman-La Roche Ltd [2003] FCA 1505


case_text: In my view the following points are relevant in considering the issue of costs: • first, the policy of the Act with respect to costs as articulated in s 85A is that parties should bear their own costs unless there are such circumstances as specified in s 85A(2): De Rose [2005] FCAFC 137. Logically, it follows that this policy is equally applicable to non-parties - such as the Kabi Kabi #2 Applicant - who incur costs in respect of litigation under the Act • second, the Kabi Kabi #2 Applicant requested at the directions hearing of 9 March 2007 that it be served with such material as the Kabi Kabi #3 Applicant should file and serve on the respondents to the Kabi Kabi #3 Application, and that it should be entitled to be heard at the hearing on 3 May 2007. In my view the position of the Kabi Kabi #2 Applicant is analogous to that of an intervener in this case, and I note that as a general rule the Court tends not to apply conventional rules as to recovery of costs to interveners: Wilcox J in CFMEU v Queensland Coal and Oil Shale Mining Industry (Superannuation) Ltd [2003] FCA 1174 at [11] - [12] • third, as Mr Topp submitted, the directions made on 9 March 2007 did not require or otherwise oblige the Kabi Kabi #2 Applicant to file affidavits, outlines of argument or any other material, nor to do anything else at all. Indeed, the Kabi Kabi #2 Applicant is not a party to the proceedings. While the Kabi Kabi #2 Applicant has an interest in the proceedings for obvious reasons, I can identify no requirement of reason or justice which entitles the Kabi Kabi #2 Applicant to recover its costs against the Kabi Kabi #3 Applicant with respect to preparation of material for the hearing of the 29 June 2006 notice of motion • in these circumstances, and taking into account the principle that an order for payment of costs in favour of a non-party will be exceptional and therefore must be treated with considerable caution, in my view it is not appropriate to order the costs sought by the Kabi Kabi #2 Applicant to be paid by the Kabi Kabi #3 Applicant.


case_text: This section was considered by Lee J in Ward v Western Australia [1999] FCA 580 ; (1999) 93 FCR 305, whose comments were subsequently adopted and summarised by the Full Court of the Federal Court in De Rose v State of South Australia (No 3) [2005] FCAFC 137 at [8] in the following terms: • section 85A(1) is intended to remove any ground for anticipation or expectation that unless cause is shown for another order, costs will follow the event • nonetheless, s 85A acknowledges that the Court has an overriding discretion as to costs and does not expressly impose a limit on the scope of the discretion • there is no requirement that a threshold condition be met before the Court is empowered to make a costs order. It follows that the exercise of the discretion is not conditional upon a finding of fact or the formation of an opinion as to the occurrence of unreasonable conduct or the existence of special circumstances • section 85A(2) of the Act puts beyond doubt the extent of the Court's discretion in cases where a party acts unreasonably, but s 85A(2) does not control or limit the discretion available to the Court under s 85A(1) • the matters to be taken into account in making a costs order are left to the Court's discretion, which must be exercised judicially. However, the starting point is that each party will bear their own costs unless the Court determines that it is appropriate in the circumstances to make an order for costs. Costs in favour of non-parties 43 Mr Preston for the Kabi Kabi #2 Applicant submitted in summary: • any consideration of an award of costs on the discontinuance of the 29 June 2006 notice of motion must occur in light of s 85A of the Act • as made clear in Ward [1999] FCA 580 ; 93 FCR 305 and De Rose [2005] FCAFC 137 o the starting point is that each party will bear their own costs unless the Court determines that it is appropriate in the circumstances to make an order for costs o there is no requirement that a threshold condition be met before the Court is empowered to make a costs order under s 85A(2) o section 85A(2) does not control or limit the discretion available to the Court under s 85A(1). • the conduct of the parties in the matter and the reasons for the discontinuance of a matter can bear heavily on the exercise of the discretion as to costs, so that if the discontinuance can be said to be an acknowledgement of likely defeat or no objective circumstance provides reasons for the discontinuance, a costs order in favour of the other party will ordinarily be made (Finn J in O'Neill v Mann [2000] FCA 1680 at [13] ) • a significant number of circumstances exist which would justify an award of costs against the Kabi Kabi #3 Applicant in this case • it is an underlying policy in the Federal Court Rules that the discontinuing party should be liable for the other party's costs unless the Court orders otherwise • the Kabi Kabi #3 Applicant did not comply with the directions of 9 March 2007 and file material, and did not inform the Kabi Kabi #2 Applicant of the decision to discontinue the application to amend until after the due date had passed to file material • the Kabi Kabi #2 Applicant filed material by the due date and has thrown away costs as a result • the Kabi Kabi #3 Applicant should be ordered to pay those costs of the Kabi Kabi #2 Applicant. 48 In my view the following points are relevant in considering the issue of costs: • first, the policy of the Act with respect to costs as articulated in s 85A is that parties should bear their own costs unless there are such circumstances as specified in s 85A(2): De Rose [2005] FCAFC 137. Logically, it follows that this policy is equally applicable to non-parties - such as the Kabi Kabi #2 Applicant - who incur costs in respect of litigation under the Act • second, the Kabi Kabi #2 Applicant requested at the directions hearing of 9 March 2007 that it be served with such material as the Kabi Kabi #3 Applicant should file and serve on the respondents to the Kabi Kabi #3 Application, and that it should be entitled to be heard at the hearing on 3 May 2007. In my view the position of the Kabi Kabi #2 Applicant is analogous to that of an intervener in this case, and I note that as a general rule the Court tends not to apply conventional rules as to recovery of costs to interveners: Wilcox J in CFMEU v Queensland Coal and Oil Shale Mining Industry (Superannuation) Ltd [2003] FCA 1174 at [11] - [12] • third, as Mr Topp submitted, the directions made on 9 March 2007 did not require or otherwise oblige the Kabi Kabi #2 Applicant to file affidavits, outlines of argument or any other material, nor to do anything else at all. Indeed, the Kabi Kabi #2 Applicant is not a party to the proceedings. While the Kabi Kabi #2 Applicant has an interest in the proceedings for obvious reasons, I can identify no requirement of reason or justice which entitles the Kabi Kabi #2 Applicant to recover its costs against the Kabi Kabi #3 Applicant with respect to preparation of material for the hearing of the 29 June 2006 notice of motion • in these circumstances, and taking into account the principle that an order for payment of costs in favour of a non-party will be exceptional and therefore must be treated with considerable caution, in my view it is not appropriate to order the costs sought by the Kabi Kabi #2 Applicant to be paid by the Kabi Kabi #3 Applicant.


case_text: The courts have recognised that there is no absence of jurisdiction to order costs against non-parties in the strict sense and that the jurisdiction could be exercised against persons who were considered to be the "real parties" to the litigation, such as where a party to the litigation is insolvent, and a non-party has played an active part in the conduct of litigation and has an interest in the subject of the litigation: Mason CJ and Deane J (Gaudron J agreeing) in Knight v FP Special Assets Ltd [1992] HCA 28 ; (1992) 174 CLR 178 at 188 and 193. This does not mean however that the categories of third parties who may be made liable for the costs of litigation are limited to those articulated by their Honours in Knight : Gore v Justice Corporation [2002] FCA 354 ; (2002) 119 FCR 429 at 437. 40 The order sought by the Kabi Kabi #2 Applicant in this case may be distinguished however from such cases as Knight [1992] HCA 28 ; 174 CLR 178 and Gore [2002] FCA 354 ; 119 FCR 429 in that, in this case, costs are sought by a non-party against a party to the litigation. While claims by non-parties seeking costs in their favour against parties to litigation are rare, they are not unknown: for example Re Pan Pharmaceuticals; Selim v McGrath [2004] NSWSC 129 and O'Keefe v Hayes Knight GTO Pty Ltd [2005] FCA 1559. In O'Keefe [2005] FCA 1559 Nicholson J said in the context of such claims in the Federal Court: "17 The jurisdiction of the Court to award costs is found in s 43 of the Federal Court of Australia 1976 (Cth) ('the Act '). It follows from the terms of that section that the jurisdiction is conditioned by there being 'costs' and those costs being in 'proceedings before the Court'. Section 4 of the Act defines 'proceeding' to mean 'a proceeding in a court, whether between parties or not, and includes an incidental proceeding in the course of, or in connexion with, a proceeding...'. In Knight v FP Special Assets Limited [1992] HCA 28 ; (1992) 174 CLR 178 it was held by Mason CJ, Deane, Dawson and Gaudron JJ, McHugh J dissenting, that the discretion to award costs under O 91 r 1 of the Rules of the Supreme Court of Queensland was not confined to the parties in the proceedings. That rule provided for the costs of and incidental to all proceedings in the court to be in the discretion of the court or judge. Gaudron J at 205 stated that it was contrary to long-established principle and wholly inappropriate that a grant of power to a court should be construed as subject to a limitation not appearing in the words of the grant; that is, the words used should be given their full meaning unless there is something to indicate to the contrary. Therefore, her Honour stated the necessity for the power to be exercised judicially tends in favour of the most liberal construction. 18 In O'Keeffe Nominees Pty Ltd v BP Australia Ltd (1995) 55 FCR 591 at 597 Spender J stated that, in the absence of any express restriction on the orders for costs that may be made concerning intervention or associated with it, the unfettered discretion conferred on the Federal Court by s 43 of the Act applied in the context of awarding costs in favour of a non-party intervener. 19 In King v GIO Australia Holdings Limited [2001] FCA 1773 ; (2001) 116 FCR 509 at 515, after referring to what was stated by Spender J in O'Keeffe , Moore J said he was prepared to assume that s 43 of the Act is cast in sufficiently wide terms as to enable the Court to make an order for costs in the proceeding for the benefit of a non-party. 20 This line of authority, although not greatly developed, would support a conclusion that there is power in the Court pursuant to s 43 to make an order for costs in favour of a non-party."


case_outcome: considered

case_title: Knight v FP Special Assets Ltd [1992] HCA 28 ; (1992) 174 CLR 178


case_text: I note that the fact that the group comprising the applicant does not include all possible members of the group would not in itself mean that the authority of the applicant was absent if it was in fact a representative body, however as pointed out by Wilcox J in Moran v Minister for Land & Water Conservation for the State of New South Wales [1999] FCA 1637 at [34] : a person who wishes to rely on a decision by a representative or other collective body needs to prove that such a body exists under customary law recognised by the members of the group, the nature and extent of the body's authority to make decisions binding the members of the group and that the body has authorised the making of the application. 25 I am not satisfied that such a representative body exists in this case as contemplated by his Honour in Moran [1999] FCA 1637. 26 Second, although it is asserted in the Kabi Kabi #3 Application that the authorisation of the application in this case was pursuant to a process of decision-making in accordance with traditional laws and customs, it does not appear to be in dispute that a traditional decision-making process involves, inter alia , appropriate consultation, and consensus of relevant persons in the group (Niblett affidavit paras 11-19, MacDonald affidavit paras 7- 8). Even if the decision-making process in Kabi Kabi #3 had elements of traditional law and customs, I note comments of Mr Niblett that the processes of decision-making referred to in affidavits of persons comprising the Kabi Kabi #3 Applicant did not appear to have had the level of collective interaction and discussion to be expected in the "traditional" context, nor may all relevant parties have been adequately consulted. In this respect I note from Ms MacDonald's affidavit that she predicated her comments concerning majority decision-making on adequate consultation of relevant persons, which is in serious dispute in this case as is clear from evidence of, for example, Mr Niblett, Ms Bond, Mr Dalton and Ms Yavu-Kama-Harathunian.


case_text: The order sought by the Kabi Kabi #2 Applicant in this case may be distinguished however from such cases as Knight [1992] HCA 28 ; 174 CLR 178 and Gore [2002] FCA 354 ; 119 FCR 429 in that, in this case, costs are sought by a non-party against a party to the litigation. While claims by non-parties seeking costs in their favour against parties to litigation are rare, they are not unknown: for example Re Pan Pharmaceuticals; Selim v McGrath [2004] NSWSC 129 and O'Keefe v Hayes Knight GTO Pty Ltd [2005] FCA 1559. In O'Keefe [2005] FCA 1559 Nicholson J said in the context of such claims in the Federal Court: "17 The jurisdiction of the Court to award costs is found in s 43 of the Federal Court of Australia 1976 (Cth) ('the Act '). It follows from the terms of that section that the jurisdiction is conditioned by there being 'costs' and those costs being in 'proceedings before the Court'. Section 4 of the Act defines 'proceeding' to mean 'a proceeding in a court, whether between parties or not, and includes an incidental proceeding in the course of, or in connexion with, a proceeding...'. In Knight v FP Special Assets Limited [1992] HCA 28 ; (1992) 174 CLR 178 it was held by Mason CJ, Deane, Dawson and Gaudron JJ, McHugh J dissenting, that the discretion to award costs under O 91 r 1 of the Rules of the Supreme Court of Queensland was not confined to the parties in the proceedings. That rule provided for the costs of and incidental to all proceedings in the court to be in the discretion of the court or judge. Gaudron J at 205 stated that it was contrary to long-established principle and wholly inappropriate that a grant of power to a court should be construed as subject to a limitation not appearing in the words of the grant; that is, the words used should be given their full meaning unless there is something to indicate to the contrary. Therefore, her Honour stated the necessity for the power to be exercised judicially tends in favour of the most liberal construction. 18 In O'Keeffe Nominees Pty Ltd v BP Australia Ltd (1995) 55 FCR 591 at 597 Spender J stated that, in the absence of any express restriction on the orders for costs that may be made concerning intervention or associated with it, the unfettered discretion conferred on the Federal Court by s 43 of the Act applied in the context of awarding costs in favour of a non-party intervener. 19 In King v GIO Australia Holdings Limited [2001] FCA 1773 ; (2001) 116 FCR 509 at 515, after referring to what was stated by Spender J in O'Keeffe , Moore J said he was prepared to assume that s 43 of the Act is cast in sufficiently wide terms as to enable the Court to make an order for costs in the proceeding for the benefit of a non-party. 20 This line of authority, although not greatly developed, would support a conclusion that there is power in the Court pursuant to s 43 to make an order for costs in favour of a non-party." 42 Ultimately in O'Keefe [2005] FCA 1559 his Honour did not need to decide the issue. In Pan Pharmaceuticals [2004] NSWSC 129 Barrett J took the view that "some very special factor outside the ordinary and expected course of events and engendering a justifiable expectation of compensation in the mind of the non-party would have to be found before any relevant aspect of the comprehensive jurisdiction with respect to costs might be regarded as properly and regularly invoked in favour of a non-party as against a party. In other words, such an award, if ever appropriate, will be extraordinary and exceptional" (at [20]). His Honour in that case declined to make an order in favour of the non-parties seeking costs. Kabi Kabi #2 Applicant


case_title: O'Neill v Mann [2000] FCA 1680

case_text: Mr Preston for the Kabi Kabi #2 Applicant submitted in summary: • any consideration of an award of costs on the discontinuance of the 29 June 2006 notice of motion must occur in light of s 85A of the Act • as made clear in Ward [1999] FCA 580 ; 93 FCR 305 and De Rose [2005] FCAFC 137 o the starting point is that each party will bear their own costs unless the Court determines that it is appropriate in the circumstances to make an order for costs o there is no requirement that a threshold condition be met before the Court is empowered to make a costs order under s 85A(2) o section 85A(2) does not control or limit the discretion available to the Court under s 85A(1). • the conduct of the parties in the matter and the reasons for the discontinuance of a matter can bear heavily on the exercise of the discretion as to costs, so that if the discontinuance can be said to be an acknowledgement of likely defeat or no objective circumstance provides reasons for the discontinuance, a costs order in favour of the other party will ordinarily be made (Finn J in O'Neill v Mann [2000] FCA 1680 at [13] ) • a significant number of circumstances exist which would justify an award of costs against the Kabi Kabi #3 Applicant in this case • it is an underlying policy in the Federal Court Rules that the discontinuing party should be liable for the other party's costs unless the Court orders otherwise • the Kabi Kabi #3 Applicant did not comply with the directions of 9 March 2007 and file material, and did not inform the Kabi Kabi #2 Applicant of the decision to discontinue the application to amend until after the due date had passed to file material • the Kabi Kabi #2 Applicant filed material by the due date and has thrown away costs as a result • the Kabi Kabi #3 Applicant should be ordered to pay those costs of the Kabi Kabi #2 Applicant.


case_title: Re Pan Pharmaceuticals; Selim v McGrath [2004] NSWSC 129


case_text: This section was considered by Lee J in Ward v Western Australia [1999] FCA 580 ; (1999) 93 FCR 305, whose comments were subsequently adopted and summarised by the Full Court of the Federal Court in De Rose v State of South Australia (No 3) [2005] FCAFC 137 at [8] in the following terms: • section 85A(1) is intended to remove any ground for anticipation or expectation that unless cause is shown for another order, costs will follow the event • nonetheless, s 85A acknowledges that the Court has an overriding discretion as to costs and does not expressly impose a limit on the scope of the discretion • there is no requirement that a threshold condition be met before the Court is empowered to make a costs order. It follows that the exercise of the discretion is not conditional upon a finding of fact or the formation of an opinion as to the occurrence of unreasonable conduct or the existence of special circumstances • section 85A(2) of the Act puts beyond doubt the extent of the Court's discretion in cases where a party acts unreasonably, but s 85A(2) does not control or limit the discretion available to the Court under s 85A(1) • the matters to be taken into account in making a costs order are left to the Court's discretion, which must be exercised judicially. However, the starting point is that each party will bear their own costs unless the Court determines that it is appropriate in the circumstances to make an order for costs. Costs in favour of non-parties 43 Mr Preston for the Kabi Kabi #2 Applicant submitted in summary: • any consideration of an award of costs on the discontinuance of the 29 June 2006 notice of motion must occur in light of s 85A of the Act • as made clear in Ward [1999] FCA 580 ; 93 FCR 305 and De Rose [2005] FCAFC 137 o the starting point is that each party will bear their own costs unless the Court determines that it is appropriate in the circumstances to make an order for costs o there is no requirement that a threshold condition be met before the Court is empowered to make a costs order under s 85A(2) o section 85A(2) does not control or limit the discretion available to the Court under s 85A(1). • the conduct of the parties in the matter and the reasons for the discontinuance of a matter can bear heavily on the exercise of the discretion as to costs, so that if the discontinuance can be said to be an acknowledgement of likely defeat or no objective circumstance provides reasons for the discontinuance, a costs order in favour of the other party will ordinarily be made (Finn J in O'Neill v Mann [2000] FCA 1680 at [13] ) • a significant number of circumstances exist which would justify an award of costs against the Kabi Kabi #3 Applicant in this case • it is an underlying policy in the Federal Court Rules that the discontinuing party should be liable for the other party's costs unless the Court orders otherwise • the Kabi Kabi #3 Applicant did not comply with the directions of 9 March 2007 and file material, and did not inform the Kabi Kabi #2 Applicant of the decision to discontinue the application to amend until after the due date had passed to file material • the Kabi Kabi #2 Applicant filed material by the due date and has thrown away costs as a result • the Kabi Kabi #3 Applicant should be ordered to pay those costs of the Kabi Kabi #2 Applicant.


case_title: Williams v Grant [2004] FCAFC 178


case_text: leave of this Court is therefore required before reliance can be placed upon an argument on appeal that has not previously been raised for resolution. In considering whether or not to grant leave, it is necessary to give some consideration to the merits of the issues sought to be raised — but it is not necessary to " enter upon a full consideration of the grounds ". To do otherwise would " make the requirement for leave meaningless ": Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 1788 at [24] per Heerey, Moore and Goldberg JJ. See also: MZXEN v Minister for Immigration and Citizenship [2007] FCA 829 at [10] , [2007] FCA 829 ; 240 ALR 582 at 584 to 585 per Jessup J. In Iyer their Honours also cited with approval the following observations of Branson and Katz JJ in H v Minister for Immigration and Multicultural Affairs [2000] FCA 1348: [8] In our view, the readiness with which appeal courts have in the past been satisfied that it is expedient in the interests of justice to allow a fresh point to be argued and determined on appeal is unlikely to continue into the future. The volume and complexity of the cases presently required to be heard and determined by the intermediate appellate courts of Australia is such that it is increasingly important that such courts are able to devote their time to the genuine review of first instance decisions. It is becoming increasingly difficult, in our view, to establish that it is expedient in the interests of justice that the time of three or more judges should be spent giving original consideration to issues that ought to have been raised before the primary judge. The interests of justice in this sense extend beyond the interests of the parties to the appeal to encompass the interests of other litigants whose appeals require hearing and determination, and the broad public interest in efficient judicial administration. These comments were obviously made prior to the 2005 amendments to the Federal Court of Australia Act 1976 (Cth) to permit appeals from migration decisions of the Federal Magistrates Court to be entertained by a single Judge or a Full Court: s 25(1AA). Many migration appeals to this Court from the Federal Magistrates Court are now resolved by a single Judge. But there remains the relevance of their Honours' observations as to the interests of other appellants. See also: Gomez v Minister for Immigration and Multicultural Affairs [2002] FCA 480 at [18], 190 ALR 543 at 548 to 549 per Hill, O'Loughlin and Tamberlin JJ; Lansen v Minister for Environment and Heritage [2008] FCAFC 189 at [3] to [5], 174 FCR 14 at 18 to 19 per Moore and Lander JJ. It matters not, in the present context, that the appeal is an appeal from a decision of the Federal Magistrate rather than a single Judge of this Court — which would, of course, require a Full Court.


case_text: leave of this Court is therefore required before reliance can be placed upon an argument on appeal that has not previously been raised for resolution. In considering whether or not to grant leave, it is necessary to give some consideration to the merits of the issues sought to be raised — but it is not necessary to " enter upon a full consideration of the grounds ". To do otherwise would " make the requirement for leave meaningless ": Iyer v Minister for Immigration and Multicultural Affairs [2000] FCA 1788 at [24] per Heerey, Moore and Goldberg JJ. See also: MZXEN v Minister for Immigration and Citizenship [2007] FCA 829 at [10] , [2007] FCA 829 ; 240 ALR 582 at 584 to 585 per Jessup J. In Iyer their Honours also cited with approval the following observations of Branson and Katz JJ in H v Minister for Immigration and Multicultural Affairs [2000] FCA 1348: [8] In our view, the readiness with which appeal courts have in the past been satisfied that it is expedient in the interests of justice to allow a fresh point to be argued and determined on appeal is unlikely to continue into the future. The volume and complexity of the cases presently required to be heard and determined by the intermediate appellate courts of Australia is such that it is increasingly important that such courts are able to devote their time to the genuine review of first instance decisions. It is becoming increasingly difficult, in our view, to establish that it is expedient in the interests of justice that the time of three or more judges should be spent giving original consideration to issues that ought to have been raised before the primary judge. The interests of justice in this sense extend beyond the interests of the parties to the appeal to encompass the interests of other litigants whose appeals require hearing and determination, and the broad public interest in efficient judicial administration. These comments were obviously made prior to the 2005 amendments to the Federal Court of Australia Act 1976 (Cth) to permit appeals from migration decisions of the Federal Magistrates Court to be entertained by a single Judge or a Full Court: s 25(1AA). Many migration appeals to this Court from the Federal Magistrates Court are now resolved by a single Judge. But there remains the relevance of their Honours' observations as to the interests of other appellants. See also: Gomez v Minister for Immigration and Multicultural Affairs [2002] FCA 480 at [18], 190 ALR 543 at 548 to 549 per Hill, O'Loughlin and Tamberlin JJ; Lansen v Minister for Environment and Heritage [2008] FCAFC 189 at [3] to [5], 174 FCR 14 at 18 to 19 per Moore and Lander JJ. It matters not, in the present context, that the appeal is an appeal from a decision of the Federal Magistrate rather than a single Judge of this Court — which would, of course, require a Full Court. Centrally relevant to a consideration of whether leave should be given in a case such as the present are the " serious consequences that may attend a wrongful refusal of a protection visa ": SZEPN v Minister for Immigration and Multicultural Affairs [2006] FCA 886 at [16] per Branson J. See also: Iyer [2000] FCA 1788 at [22] per Heerey, Moore and Goldberg JJ. These cases are perhaps authority for no broader proposition than this: the importance of any litigation to any of the parties concerned is a matter to be taken into account. Why there should be any different principle applied in migration appeals than is applied in other appeals is not self-evident.


case_title: Lansen v Minister for Environment and Heritage [2008] FCAFC 189 , 174 FCR 14


case_text: some degree of latitude is appropriate when determining what is sufficient to bring to the attention of the Tribunal that an applicant wishes to have further time in which to respond to " information ". There is certainly no requirement that a request need be in writing. Even a formal and express oral request for additional time may not be appropriate or necessary. The Tribunal, it is to be recalled, is given the mandate to conduct its review functions in a manner that is " fair, just, economical, informal and quick " ( Migration Act 1958 (Cth) s 420(1)) and in an " inquisitorial manner ": Re Minister for Immigration and Multicultural Affairs; Ex parte Applicant S154/2002 [2003] HCA 60 , 75 ALD 1 at [57] per Gummow and Heydon JJ and at [60] per Kirby J. In an appropriate case it may thus be manifestly apparent to the Tribunal that an applicant is in fact seeking additional time — even though he has not said so. But there is nothing now before this Court to indicate that the Appellant was not willing to respond to all of the " information " then before the Tribunal. There was, for instance, no transcript of the hearing before the Tribunal from which any inference favourable to the Appellant may have been drawn.


case_title: MZXEN v Minister for Immigration and Citizenship [2007] FCA 829 , 240 ALR 582


case_outcome: discussed

case_text: considerations more generally relevant to the exercise of discretion have been identified by Madgwick J in NAJT v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCAFC 134 at [166] , [2005] FCAFC 134 ; 147 FCR 51 at 85 as including: 1) Do the new legal arguments have a reasonable prospect of success? 2) Is there an acceptable explanation of why they were not raised below? How much dislocation to the Court and efficient use of judicial sitting time is really involved? 4) What is at stake in the case for the appellant? 5) Will the resolution of the issues raised have any importance beyond the case at hand? 6) Is there any actual prejudice, not viewing the notion of prejudice narrowly, to the respondent? 7) If so, can it be justly and practicably cured? 8) If not, where, in all the circumstances, do the interests of justice lie? Conti J agreed with Madgwick J and further observed at [229] that " where the Court is able to perceive an apparency of genuineness in the circumstances of an appellant, the principles cited by the Minister, for which Coulton v Holcombe [1986] HCA 33 ; (1986) 162 CLR 1 and Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833 ; (2001) 117 FCR 424 stand as authority, may be conceivably susceptible to a degree of modification or alleviation ". It has been said that " the practice which has been adopted in migration cases is that leave may be granted if a point has 'clear merit' and there is no prejudice to a respondent in permitting the point to be agitated; an adequate explanation for the failure to take the point below is required ... ": SZBJW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1356 at [22] per Jacobson J.


case_title: SZBJW v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1356


case_text: argument not raised at first instance may be raised on appeal where " it is expedient in the interests of justice to do so ": VUAX v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 158. Kiefel, Weinberg and Stone JJ there concluded: [46] In our view, the application for leave to rely upon the sole ground of appeal now raised should be refused. Leave to argue a ground of appeal not raised before the primary judge should only be granted if it is expedient in the interests of justice to do so [references omitted]. [47] In Coulton v Holcombe [1986] HCA 33 ; (1986) 162 CLR 1 , Gibbs CJ, Wilson, Brennan and Dawson JJ observed, in their joint judgment, at 7: It is fundamental to the due administration of justice that the substantial issues between the parties are ordinarily settled at the trial. If it were not so the main arena for the settlement of disputes would move from the court of first instance to the appellate court, tending to reduce the proceedings in the former court to little more than a preliminary skirmish. [48] The practice of raising arguments for the first time before the Full Court has been particularly prevalent in appeals relating to migration matters. The Court may grant leave if some point that was not taken below, but which clearly has merit, is advanced, and there is no real prejudice to the respondent in permitting it to be agitated. Where, however, there is no adequate explanation for the failure to take the point, and it seems to be of doubtful merit, leave should generally be refused. In our view, the proposed ground of appeal has no merit. There is no justification, therefore, for permitting it to be raised for the first time before this Court. " To allow too readily the running of new points, or indeed a whole new case, on appeal is to undermine the appellate process by rendering the trial process almost irrelevant ": WAJR v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 106 at [19] , [2004] FCA 106 ; 204 ALR 624 at 629 per French J (as His Honour then was). See also: SZIHX v Minister for Immigration and Citizenship [2007] FCA 1295 at [16] to [17] per Lander J.


case_text: final proposed Ground of Appeal is understood to be referring to SZATV v Minister for Immigration and Citizenship [2007] HCA 40 , 233 CLR 18. It was there concluded that a well-founded fear of persecution need not always extend to the whole territory of an applicant's country of nationality for the applicant to qualify as a refugee. It was further concluded that a person will be excluded from refugee status if, under all of the circumstances, it would be reasonable to expect the applicant to seek refuge in another part of the same country. Gummow, Hayne and Crennan JJ there concluded: [24] ... What is reasonable, in the sense of 'practicable', must depend upon the particular circumstances of the applicant for refugee status and the impact upon that person of relocation of the place of residence within the country of nationality. ... [26] ... [I]n particular cases territorial distinctions may have an apparent connection with the particular reason for the asserted well-founded fear of persecution. There may be instances where differential treatment in matters of, for example, race or religion, is encountered in various parts of the one nation state so that in some parts there is insufficient basis for a well-founded fear of persecution. However, in other cases the conduct or attribute of the individual which attracts the apprehended persecution may be insusceptible of a differential assessment based upon matters of regional geography. Applied: SZJZV v Minister for Immigration and Citizenship [2008] FCA 628 at [17] to [18] per Gilmour J; SZMEI v Minister for Immigration and Citizenship [2008] FCA 1649 at [15] per Reeves J; SZLVG v Minister for Immigration and Citizenship [2008] FCA 1674 at [10] , 105 ALD 516 at 519 per Jagot J.


case_text: applied to the (then) Department of Immigration and Multicultural Affairs for a Protection (Class XA) visa on 20 June 2006. A delegate refused that application on 29 July 2006. An application for review was thereafter lodged in August 2006 with the Refugee Review Tribunal and that Tribunal affirmed the delegate's decision on 20 December 2006. The Federal Magistrates Court dismissed an application for review but on 27 June 2008 this Court made orders remitting the matter to the Tribunal for determination according to law: SZKCQ v Minister for Immigration and Citizenship [2008] FCAFC 119 , 170 FCR 236.


case_outcome: affirmed

case_text: way of a decision signed on 3 October 2008, the Tribunal differently constituted again affirmed the decision not to grant a Protection (Class XA) visa. An application seeking review of this later decision of the Tribunal by the Federal Magistrates Court was dismissed: SZKCQ v Minister for Immigration and Citizenship [2009] FMCA 216. The Appellant now appeals to this Court. He has appeared before the Court this morning unrepresented, albeit with the benefit of an interpreter. The Grounds upon which he seeks to appeal are set forth in his Notice of Appeal (without alteration) as follows: 1. The grounds of the application are that the Tribunal failed to comply with a mandatory procedure prescribed by the Act, in failing to comply with section 424AA(b) (iv) of the Act. (a) His honour failed to find that Tribunal did not consider UNHRC section 4,5,8,9,10 and did not consider at all cruelty against the humanity and therefore made error of law and jurisdictional error. (b) His honour further error in establishing relief under SZATV vs Minister for Immigration and Citizenship [2007] HCA principles of relocation principles. Failing to accord proper procedural fairness in accordance with the internal relocation within the country. These Grounds of Appeal were not raised before the Federal Magistrate. The ground of review advanced before the Federal Magistrate was confined to a contention that it was " open to the Tribunal " to find that the now Appellant was a refugee. That ground was rejected. Moreover, the Grounds as are now sought to be relied upon are without merit. The appeal should be dismissed.


case_title: SZLVG v Minister for Immigration and Citizenship [2008] FCA 1674 , 105 ALD 516


case_text: may finally be noted that, even if there has been a failure to comply with s 424AA(b)(iv) , the consequence is that s 424A(2A) is not engaged and the Tribunal is not thereby excused from compliance with s 424A(1): SZMMP v Minister for Immigration and Citizenship [2009] FCA 233 at [55] per Lander J. Sections 424A and 424AA are complementary: SZMCD v Minister for Immigration and Citizenship [2009] FCAFC 46 at [2] per Moore J; SZMIS v Minister for Immigration and Citizenship [2009] FCA 167 at [10] per Marshall J. But no failure to comply with s 424A(1) is asserted by the now Appellant and none is otherwise discernible.


case_title: SZMEI v Minister for Immigration and Citizenship [2008] FCA 1649


case_title: SZMIS v Minister for Immigration and Citizenship [2009] FCA 167


case_title: SZMMP v Minister for Immigration and Citizenship [2009] FCA 233


case_title: VUAX v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 158


case_title: WAJR v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 106


case_text: The Registered Designs Act 1949 (UK) adopted the concept of the informed user, with the consequence that UK courts can provide some guidance in this country. The first useful judicial exposition of the informed user standard in England appears to be that of his Honour Judge Fysh QC, sitting as the UK Patents County Court, in Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 (" Architectural Lighting "). In Architectural Lighting , his Honour (at [50]) defined the informed user as follows: First, this notional person must obviously be a user of articles of the sort which is subject of the registered design and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of 'the man in the street'. 'Informed' to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of 'what's about in the market?' and 'what has been about in the recent past?' I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the 'man skilled in the art' whose 'nerd-like' (and other) attributes seem too technical: Technip France SA's Patent [2004] EWCA Civ 381 ; [2004] R.P.C. 46 at [6-12] (CA). (Emphasis original) The properly informed eye of the court must make its decision as a matter of degree as a matter of overall impression: see Architectural Lighting at [52]. 23 Relevantly to this case, in January 2007, the Design Registrar of the UK Intellectual Property Office cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 27 There may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. The former approach is to be preferred. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user. In the present context, women as a class are the ordinary users of ladies' garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged: compare Architectural Lighting at [50].


case_text: In Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 ; [2007] FSR 13 (" Proctor & Gamble Co v Reckitt Benckiser ") at [31] et seq, Lewison J (Chancery Division Patents Court) considered and approved these observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936 ; (2007) 73 IPR 605 (" Proctor & Gamble ") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. As Jacob J said (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law". 24 In Walton , the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho has long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor & Gamble Co v Reckitt Benckiser ( Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].


case_text: In Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 ; [2007] FSR 13 (" Proctor & Gamble Co v Reckitt Benckiser ") at [31] et seq, Lewison J (Chancery Division Patents Court) considered and approved these observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936 ; (2007) 73 IPR 605 (" Proctor & Gamble ") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. As Jacob J said (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law".


case_text: Relevantly to this case, in January 2007, the Design Registrar of the UK Intellectual Property Office cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 24 In Walton , the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho has long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor & Gamble Co v Reckitt Benckiser ( Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].


case_text: In Australia, the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "). In Icon , the ADO cited the ALRC Report but rejected the view that "a notional informed user is a melding of the (probably divergent) views of those who exemplify a range of informed users. A better approach is to say that, in dealing with this jury question, the legislation defines a standard, such that the registrar or the court should postulate the view of a typical member of a sample of informed users": see Icon at [19]. The Registrar concluded that "to apply the standard of the informed user for the purpose of s 19 would therefore be to postulate a user that is 'reasonably' informed; not either barely informed, on one hand, or fully expert on the other": see Icon at [21]. Apple cited the ALRC Report, this time for the proposition that the informed user standard is objective, and stated the view that an informed user is an ordinary intended user of the product made from the design, who is familiar with the product: see Apple at [11], [14]. 27 There may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. The former approach is to be preferred. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user. In the present context, women as a class are the ordinary users of ladies' garments, but not all women have the requisite degree of familiarity to be described as informed users. Thus, whilst there will be some women who subscribe to fashion magazines (such as Vogue or Collezioni that illustrated the prior art in this case) and have particular knowledge of, and familiarity with, fashion trends, there will be many other women who lack such knowledge and familiarity. Precedent and the text of s 19(4) indicate that it is from the perspective of someone closer to the former group that the newness and distinctiveness of the Review Design and the similarity of the Redberry garments in terms of overall impression must be judged: compare Architectural Lighting at [50].


case_title: Icon Plastics Pty Ltd [2007] ADO 2

case_text: In Australia, the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "). In Icon , the ADO cited the ALRC Report but rejected the view that "a notional informed user is a melding of the (probably divergent) views of those who exemplify a range of informed users. A better approach is to say that, in dealing with this jury question, the legislation defines a standard, such that the registrar or the court should postulate the view of a typical member of a sample of informed users": see Icon at [19]. The Registrar concluded that "to apply the standard of the informed user for the purpose of s 19 would therefore be to postulate a user that is 'reasonably' informed; not either barely informed, on one hand, or fully expert on the other": see Icon at [21]. Apple cited the ALRC Report, this time for the proposition that the informed user standard is objective, and stated the view that an informed user is an ordinary intended user of the product made from the design, who is familiar with the product: see Apple at [11], [14].


case_text: Ultimately, it seems to me that what was said in Smith, Kline & French Laboratories Ltd's Design Application [1974] RPC 253 at 261 is as true a guide as any. In this case, Graham J (as the UK Registered Design Appeals Tribunal) said that: ... colour cannot be ignored, though normally differences in colour are unlikely to be important. Colour may or may not make a material difference, depending upon the circumstances and nature of the design in question. I would adopt this approach in considering designs registered under the Designs Act. 52 The fact that a design is registered in colour through the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given. Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration. The pattern (including colour) that is shown on the registered Review Design is thus part of what is protected, and is, as the above reasoning indicates, to be accorded some weight. How much weight is to be given to pattern and colour will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated already, pattern, including colour, is a feature that an informed user would consider has some significance in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application. 53 In the present case, an informed user would, as Ms Mudie's evidence and the prior art showed, regard colour as an element in the pattern that forms part of the overall look of the registered Review Design. The Review Design is depicted on the register in a colour photograph of a store dummy wearing a garment in a patterned fabric in natural tones with orange, brown and blue fine 'fronds leaf' pattern, giving it, as Ms Mudie and Ms Ellis agreed, an African or tropical look. This pattern (and the colour that is part of it) is, however, only one element in the overall impression of the registered design. It is, as previously observed, entirely different from the pattern on the Redberry garment. 54 The applicants claimed that Redberry had made, imported and sold garments copied from the Review Design. Copying is not, however, relevant to the issue of infringement: compare Proctor & Gamble at [4] per Jacob J. Copying from registered designs is permissible providing the copying does not result in a product that embodies a design that is substantially similar in overall impression to the registered design. 55 A design is a registrable design if the design is new and distinctive when compared with the prior art base for the design as it existed before the priority date of the design: see s 15(1). The expression "prior art base" is defined in s 15(2) and includes designs publicly used in Australia and designs published in a document within or outside Australia. Redberry argued that the Review Design was not validly registered because it was not new and distinctive when compared with the prior art base: see s 16. The Redberry challenge was effectively to distinctiveness rather than newness: see s 16(2). Section 16(2) calls for a determination as to whether the design said to be registrable is distinctive, which means the design is not substantially similar in overall impression to a design or designs forming part of the prior art. The test of substantial similarity here again turns on the considerations set out in s 19 of the Designs Act, to which reference has already been made.