case_text: His Honour concluded that the matters set out in the final five paragraphs of the letter of 10 February 2004 (as set out at [41]) represented an attempt to force any consideration of Ms Townsend's application to the court to be brought to an end and represented the expression of extreme and inappropriate bullying. Those conclusions cannot stand in the face of the evidence for a number of reasons. First, Ms Townsend had indicated that her disposition was not to press complaints so as to facilitate the resolution of the administration and accordingly the formulation of the costs at 10 February 2004 by the trustee of an additional $2,300.00 recognised that no costs would be incurred in the administration in connection with any matters of complaint. Had those monies been paid, a s 153A certificate would have duly issued effecting an annulment. Secondly, although the response of the trustee to the allegations of complaint might be regarded as robust, the trustee was nevertheless entitled to respond to complaints which he perceived to be misconceived and unmeritorious either because the assessment by the bankrupt of the reasonableness of proposed fees was not founded upon any proper basis or because allegations of abuses were not, in the trustee's view, correct (see Bellin v Pattison (Trustee) [1999] FCA 51 at [18] to [22]). 91 A bankrupt concerned about the conduct of a trustee might invoke an inquiry into the conduct of the trustee pursuant to s 179 and seek to bring the scope of the trustee's conduct within the supervision of the court. In undertaking such an inquiry, the court might form a view that particular conduct involved a breach of duty and make an order that the trustee be removed from office or make an order disentitling the trustee to an indemnity out of the estate assets in respect of any costs, charges and expenses incurred in breach of duty or an order disentitling the trustee to particular remuneration. 92 The proceedings before Federal Magistrate Coker sought an annulment of the bankruptcy on the ground that all debts of the bankrupt had been paid and that s 153A of the Act conferred a power upon the court to annul the bankruptcy. Secondly, the respondent contended that because the sequestration order ought not to have been made, the bankruptcy ought to be annulled. No challenge was made to the conduct of the trustee in reliance upon a power in the court to 'inquire into the conduct of the trustee' for the purposes of s 179 of the Act. I accept the submission of the appellant that the relief sought and the foundation for the relief was directed to annulment of the bankruptcy arising out of the contended discharge of all debts of the bankrupt and a contention that the sequestration order ought not to have been made. The application did not proceed nor was it conducted on the footing that the court was conducting an inquiry into the conduct of the trustee. The first aspect of the application involved an order by his Honour that the costs (both expenses and remuneration) of the trustee be taxed to determine the body of fair and reasonable costs in the expectation that a resolution of that matter would, in all probability, result in a position where a certificate might issue thus annulling the bankruptcy by operation of s 153A of the Act. Within the forum of the taxation of the costs, the conduct of the trustee both in terms of the steps taken by him and his staff and the charges allocated for those steps was to be the subject of examination. The proceeding before the court was not, however, an inquiry for the purposes of s 179 of the Act and it is not now appropriate to determine the questions on appeal on the footing of s 179. 93 A third reason why the conclusions reached by his Honour concerning the position adopted by the trustee in relation to existing and future complaints by Ms Townsend cannot stand is that the trustee put the proposition that Ms Townsend might consider withdrawing threats of action or complaint expressly on the basis that if they were to be pursued, the trustee might either apply to the court for a release or, alternatively, apply to the court for directions as to how the allegations might be dealt with. In addition, the trustee recommended that if Ms Townsend thought the suggestion of the trustee that a private prosecution might not be pursued was, in the circumstances, an 'improper suggestion', Ms Townsend may choose to seek legal advice specifically on that matter. The assessment of the costs incurred by the trustee reveal that in the period from 20 June 2003 to 5 November 2004 the costs of dealing with complaints lodged by Ms Townsend with bankruptcy regulators amounted to $523.42 subject to the addition of GST and an 8% realisation charge. 94 His Honour relied upon s 153B in making an order annulling the bankruptcy and setting aside the sequestration order based upon a finding that Ms Townsend was at the date of the sequestration order solvent and at all material times remained solvent. Section 154(1)(a) provides that all acts done by the trustee or any person acting under the authority of the trustee before the annulment, are taken to have been validly made or done (subject to considerations of breach of duty) and s 154(1)(b) provides that the trustee may 'apply the property of the former bankrupt still vested in the trustee in payment of the costs, charges and expenses of the administration of the bankruptcy, including the remuneration and expenses of the trustee'. His Honour made a further order fixing the remuneration of the trustee and concluded that the court certainly had power to 'fix a sum in relation to the costs in respect of the administration of the estate' [8] although the source of that power was not identified. Whatever the source of the power may be, the foundation for the exercise of the power was that the trustee ought to have concluded the administration on or about 10 February 2004 and that having regard to that circumstance, the costs ought to have been $15,000.00. 95 No such foundation existed and the exercise of the power therefore failed. 96 As to the source of the power, it cannot be found in s 153B or any provision of Division 5 of Part VII of the Act. Division 4 of Part VIII of the Act addresses the topic of 'Control over trustees'. Section 178 of the Act within Division 4 contains the heading ' Appeal to court against trustee's decision ' and is in these terms: ' 178(1) [Right of appeal] If the bankrupt, a creditor or any other person is affected by an act, omission or decision of the trustee, he or she may apply to the court, and the court may make such order in the manner as it thinks just and equitable. 178(2) [Time limit] The application must be made not later than 60 days after the day on which the person became aware of the trustee's act, omission or decision.' 97 Plainly enough, the application to the court made by Ms Townsend on 24 February 2004 did not expressly raise the notion of an appeal from a decision of the trustee. Ms Townsend's application was signed on 16 February 2004 and filed on 24 February 2004 within 14 days of the letter from the trustee dated 10 February 2004 seeking a further sum of $2,300.00 in order to bring the administration of the estate to a conclusion and facilitate the issue of a certificate and, in consequence, an annulment of the bankruptcy. Although the precise character of an 'act, omission or decision of the trustee' is not clear, s 178(1) may well be sufficiently broad in its formulation to confer power upon the court to make such order as the court thinks just and equitable in relation to the request by the trustee for the provision of further monies in respect of costs (both expenses and remuneration) incurred from 13 December 2003 to 10 February 2004 and in respect of those costs to be incurred in undertaking steps necessary to complete the administration. 98 Because his Honour failed to have regard to the evidence, no proper foundation subsisted for the exercise of a power to fix costs. The discretion has miscarried but to the extent that the source of the power might need to be identified, it seems to me that s 178(1) may well confer a power to determine or fix the quantum of the costs (both expenses and remuneration) in respect of an administration. In addition, s 30(1)(b) of the Act confers a power upon the court to make such orders as the court considers 'necessary for the purposes of carrying out or giving effect to the Act in any case or matter'. The intersection, however, between the exercise of such powers directed to the subject matter of the trustee's remuneration and the proper application of s 162 of the Act which specifically addresses the mechanisms by which the trustee's remuneration is to be determined, must be carefully considered in any particular case. The trustee's remuneration might be determined by resolution of the creditors or, by a committee of inspection. Where the remuneration of the trustee is not so determined, the trustee is to be remunerated as prescribed by the regulations (s 162(4)). The making of an order to fix or otherwise determine the remuneration of the trustee in the exercise of a power which properly comprehends such subject matter, notwithstanding the preparation of an itemised Bill of Costs and the taxation of those costs, could only arise out of an exposed process of reasoning identifying a proper basis for recourse to such power. There is no such process of exposed reasoning identified. 99 Accordingly, the orders made by Federal Magistrate Coker on 22 April 2005 that 'the costs of the administration of the estate of the applicant including the transfer back to the applicant of any real property, be fixed in the sum of $15,000.00' and that 'there be no order as to costs in relation to the proceedings before this Court' must be set aside. Because the request of the trustee on 10 February 2004 for a further amount of $2,300.00 in order to complete the administration was fair and reasonable having regard to all the evidence with the result that the trustee was entitled to form the view that the debts of the bankrupt had not been fully paid by reason of the controversy concerning the costs, charges, expenses and remuneration of the administration, it necessarily follows that the rejection of that request and the election to commence proceedings is the true source of the additional costs. 100 Before setting out the proposed orders, it should be noted that the matters before Federal Magistrate Coker on 5 November 2004 and subsequently on 15 February 2005 involved a challenge to the refusal of the trustee to issue a certificate for the purposes of s 153A, an examination of the requests by the trustee for the provision of funds in connection with the administration of the estate and a consideration of whether the bankruptcy ought to be annulled pursuant to s 153B. Although Federal Magistrate Coker determined that the bankruptcy ought to be annulled on the ground of the solvency of the applicant, a substantial part of the proceeding involved a consideration of evidence going to the first limb of the application as to whether a certificate ought to have issued on the part of the trustee and whether the court had power to direct an annulment in circumstances where a factual contention that all debts of the bankrupt including the costs (both expenses and remuneration) had been paid by a certain date, was resolved in favour of the applicant. The applicant was successful on the second limb of the application. Accordingly, any costs arising out of or in connection with the hearing which now might be the subject of an order, ought to be limited to those matters arising out of or in connection with the first limb of the application.


case_outcome: cited

case_text: On 27 August 2003, CGU sought orders in the Supreme Court that the proceedings brought by Messrs Greaves, Rich and Silbermann be heard concurrently with the proceedings instituted by ASIC against those individuals. That application was dismissed by Bergin J on 3 September 2003: Silbermann v CGU Insurance Ltd (2003) 47 ACSR 21. 8 On 24 September 2004, Bergin J granted leave to Mr Greaves to discontinue the proceedings brought by him against CGU. As a condition of the discontinuance, Mr Greaves was ordered to pay CGU's costs. 9 The proceedings in this Court were commenced by the Trustee on 18 October 2006. CGU's motion has been brought promptly, as is contemplated by Federal Court Rules , O 10A r 5(1). 10 CGU submits that it is in the interests of justice that the proceedings in this Court should be transferred to the Supreme Court. Mr Street SC, who appeared with Mr Romaniuk for CGU, argues that the proceedings in this Court are related to the proceedings brought by Mr Rich and Mr Silbermann against CGU in the Supreme Court. Mr Street points out that the Rich and Silbermann proceedings (as I shall describe them) have progressed to a high level of readiness for hearing, including the filing of evidence and the discovery of documents. Mr Street acknowledges that an order has been made staying the Rich and Silbermann proceedings until the conclusion of the hearing of the civil penalty proceedings brought by ASIC against Mr Rich and Mr Silbermann. However, he draws my attention to the fact that CGU opposed the grant of the stay and that, in any event, the stay is likely to come to an end in April 2007, when the hearing of the ASIC proceedings in the Supreme Court is scheduled to be completed.


case_text: On 9 September 2004, White J, by consent, made the compensation orders in the Supreme Court proceedings brought by ASIC against Mr Greaves to which I have referred: Australian Securities and Investments Commission v Rich (2004) 50 ACSR 500.


case_text: CGU submits that it is in the interests of justice to transfer the proceedings in this Court to the Supreme Court since there is a substantial overlap of factual and legal issues between these proceedings and the Rich and Silbermann proceedings. Mr Street acknowledges that, as yet, no order has been made in the Supreme Court that the Rich and Silbermann proceedings be heard concurrently. However, he points out that Bergin J has indicated that such an order may well be made in the future: see Greaves v CGU Insurance Ltd [2004] NSWSC 912 , at [10]. In any event, Mr Street says that the Supreme Court is plainly the Court that ought to determine whether it is appropriate for all three claims against CGU to be heard together and to make appropriate directions for the purpose of bringing them to hearing. 12 Ms Adamson SC, who appeared with Mr Scruby for the Trustee, disputes that the proceedings in this Court and the Rich and Silbermann proceedings are in truth related. She argues that the terms of the policy specifically provide that each insured is deemed to hold a separate policy with CGU, albeit on the same terms and conditions. This means, so Ms Adamson argues, that the principle that a joint or composite policy can be avoided for fraudulent non-disclosure by one co-insured, even if the other co-insured is not aware of the fraud, has no application. 13 Ms Adamson further submits that the Trustee should not be forced to await the outcome of proceedings or applications in the Supreme Court. Rather, he should be free to pursue the indemnity claim in this Court without the delay that a transfer might occasion.


case_text: proceeding in this Court is by way of appeal from the AAT. By s 44(1) of the Administrative Appeals Tribunal Act 1975 (Cth) ("the AAT Act "), an appeal lies to this Court from the AAT but the appeal is restricted to a question of law. A question whether the AAT has denied procedural fairness to a party to a proceeding before it is a question of law for this purpose. See Clements v Independent Indigenous Advisory Committee [2003] FCAFC 143 (2003) 131 FCR 28 at [3] - [8] per Gray ACJ and North J. Ordinarily, the AAT's decision would be immune from challenge in this Court, because of s 474 of the Migration Act . It would fall squarely within the definition of "privative clause decision" in s 474(2). Section 44 of the AAT Act would also not apply to it, because of s 483 of the Migration Act , which provides that s 44 of the AAT Act does not apply to a "privative clause decision". The judgment of the High Court of Australia in Plaintiff S157/2002 v Commonwealth of Australia [2003] HCA 2 (2003) 211 CLR 476 makes clear, however, that the reference to a "decision" in the definition of "privative clause decision" is a reference to a decision that is not invalidated by reason of jurisdictional error. It follows that, if the applicant in the present case can establish jurisdictional error on the part of the AAT, he is entitled to appeal to this Court. Denial of procedural fairness on the part of the decision-maker is jurisdictional error for this purpose, as Plaintiff S157 itself demonstrates. If the applicant in the present case can establish such a denial on the part of the AAT, he will succeed in establishing both error of law by the AAT and an entitlement to have the AAT's decision set aside, despite s 474 of the Migration Act .


case_text: applicant contended that the AAT ought not to have made the findings it did about Dr Kennedy's evidence without giving notice to the applicant and his counsel that it intended to do so. In the recent judgment in the High Court of Australia in SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 (2006) 81 ALJR 515, the procedural fairness obligations of another tribunal under the Migration Act , in relation to the issues arising in hearings, have been stated succinctly. At [29]-[34], the High Court referred to the dichotomy suggested by the Full Court in Commissioner for Australian Capital Territory Revenue v Alphaone Pty Ltd (1994) 49 FCR 576 at 591-592, between a decision-maker's obligation to identify an issue not obviously open on the known material, and his or her lack of obligation to expose in advance aspects of the mental processes by which the decision-maker arrives at a decision. The High Court pointed out that the dichotomy does not necessarily encompass all possible kinds of cases that may fall for consideration, and focussing on it may distract from the fundamental principles that are engaged. The High Court emphasised the principle, referred to in Alphaone at 590-591, that the right to be heard ordinarily requires that the party affected be given the opportunity of ascertaining the relevant issues, and that this may involve more than simply knowing what is the ultimate decision to be made. At [47]-[49], the High Court pointed out that sometimes it is necessary for the decision-maker to indicate what he or she thinks the issues are, either by the questions he or she asks during a hearing, or more explicitly. What is not required is for the decision-maker to give a running commentary on what he or she thinks about the evidence that is given. The High Court did say that, even if the issues are properly identified, there may be cases that would yield to analysis in the terms identified in Alphaone . It appears from this reasoning that the distinction between an issue not obviously open on the known material, and an aspect of the decision-maker's mental processes is a valid distinction, but that care must be taken to avoid trying to force each case into one or other of those categories. In terms of the dichotomy raised by the Full Court in Alphaone , the issue on which the AAT's treatment of Dr Kennedy's opinion turned was one obviously open on the known material. It was an issue that emerged during the course of the evidence, with which the applicant and his counsel had to deal if they could. Instead of attempting to deal with the issue by seeking an adjournment, for the purpose of obtaining further evidence from Dr Kennedy, counsel for the applicant chose largely to ignore the issue of the applicant's offences in August 2004 in making her submissions. She certainly chose to ignore the inconsistencies between the applicant's evidence and that of Dr Kennedy. Undoubtedly, as the evidence stood, this was a legitimate forensic tactic, for the purpose of minimising the importance of the issue in the mind of the Deputy President. The tactic failed. It is not open to the applicant then to contend that the AAT denied him procedural fairness because it made a factual finding adverse to him. The finding was clearly open on the evidence as it stood. The factual issue of the value of Dr Kennedy's expressed opinion, in the light of the subsequent evidence about the applicant's treatment programs in prison and his August 2004 offences, could not be said to have been a matter of surprise to the applicant, with which he was unable to deal within the hearing. There was no denial of procedural fairness by the AAT in the way in which it dealt with Dr Kennedy's evidence. The applicant having failed to make out the errors of law that he sought to establish on the part of the AAT, the appeal must be dismissed. No reason was advanced, and none appears, why the usual order, that costs follow the event, should not be made. The applicant will therefore be ordered to pay the Minister's costs of the proceeding. I certify that the preceding forty-three (43) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gray. Associate: Dated: 3 August 2007 Counsel for the applicant:: G Costello Solicitor for the applicant: O'Sullivan & Ruffilli Counsel for the respondent: R Knowles Solicitor for the respondent: Australian Government Solicitor Date of hearing: 9 February 2006 Date of judgment: 3 August 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1142.html


case_outcome: followed

case_text: proceeding in this Court is by way of appeal from the AAT. By s 44(1) of the Administrative Appeals Tribunal Act 1975 (Cth) ("the AAT Act "), an appeal lies to this Court from the AAT but the appeal is restricted to a question of law. A question whether the AAT has denied procedural fairness to a party to a proceeding before it is a question of law for this purpose. See Clements v Independent Indigenous Advisory Committee [2003] FCAFC 143 (2003) 131 FCR 28 at [3] - [8] per Gray ACJ and North J. Ordinarily, the AAT's decision would be immune from challenge in this Court, because of s 474 of the Migration Act . It would fall squarely within the definition of "privative clause decision" in s 474(2). Section 44 of the AAT Act would also not apply to it, because of s 483 of the Migration Act , which provides that s 44 of the AAT Act does not apply to a "privative clause decision". The judgment of the High Court of Australia in Plaintiff S157/2002 v Commonwealth of Australia [2003] HCA 2 (2003) 211 CLR 476 makes clear, however, that the reference to a "decision" in the definition of "privative clause decision" is a reference to a decision that is not invalidated by reason of jurisdictional error. It follows that, if the applicant in the present case can establish jurisdictional error on the part of the AAT, he is entitled to appeal to this Court. Denial of procedural fairness on the part of the decision-maker is jurisdictional error for this purpose, as Plaintiff S157 itself demonstrates. If the applicant in the present case can establish such a denial on the part of the AAT, he will succeed in establishing both error of law by the AAT and an entitlement to have the AAT's decision set aside, despite s 474 of the Migration Act . Section 501 of the Migration Act provides relevantly as follows: (2) The Minister may cancel a visa that has been granted to a person if: (a) the Minister reasonably suspects that the person does not pass the character test; and (b) the person does not satisfy the Minister that the person passes the character test. ... (6) For the purposes of this section, a person does not pass the character test if: (a) the person has a substantial criminal record (as defined by subsection (7)); ... (7) For the purposes of the character test, a person has a substantial criminal record if: ... (c) the person has been sentenced to a term of imprisonment of 12 months or more; or (d) the person has been sentenced to 2 or more terms of imprisonment (whether on one or more occasions), where the total of those terms is 2 years or more In relation to the exercise of the discretion to cancel a visa, when a non-citizen does not pass the character test as defined in s 501(6) of the Migration Act , Direction No 21 provides relevantly as follows: Weight of considerations 2.2 The Government is mindful of the need to balance a number of important factors in reaching a decision whether or not to refuse or cancel a visa. In making such a decision, a decision-maker should have regard to three primary considerations and a number of other considerations. The primary considerations are set out at paragraphs 2.3 - 2.16 and other considerations are set out at paragraphs 2.17 - 2.24. Decision-makers must have due regard to the importance placed by the Government on the three primary considerations, but should also adopt a balancing process which takes into account all relevant considerations. PRIMARY CONSIDERATIONS 2.3 In making a decision whether to refuse or cancel a visa, there are three primary considerations: (a) the protection of the Australian community, and members of the community; (b) the expectations of the Australian community; and (c) in all cases involving a parental or other close relationship between a child or children and the person under consideration, the best interests of the child or children. Protection of the Australian Community ... 2.5 The factors relevant to an assessment of the level of risk to the community of the entry or continued stay of a non-citizen include: (a) the seriousness and nature of the conduct; (b) the likelihood that the conduct may be repeated (including any risk of recidivism); and (c) whether visa refusal or cancellation may prevent or discourage similar conduct (general deterrence). ... 2.10 It is the Government's view that the person's previous general conduct and total criminal history are highly relevant to assessing the likelihood of an offence and risk of recidivism. In particular, the following factors will be relevant to the assessment: (a) a non-citizen commits a further offence after having been warned previously about the risk of refusal or cancellation; (b) a non-citizen with several previous convictions in Australia should be considered as having an increased risk of recidivism in light of that past behaviour. In cases where there is a gap or gaps between convictions, the inference may be open that the non-citizen has demonstrated that a substantial period since an earlier conviction is not a reliable indicator that future offences will not be committed; and (c) the extent of rehabilitation already achieved, the prospect of further rehabilitation and the positive contribution to the community the person may reasonably be expected to make.


case_outcome: applied

case_text: applicant contended that the AAT ought not to have made the findings it did about Dr Kennedy's evidence without giving notice to the applicant and his counsel that it intended to do so. In the recent judgment in the High Court of Australia in SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63 (2006) 81 ALJR 515, the procedural fairness obligations of another tribunal under the Migration Act , in relation to the issues arising in hearings, have been stated succinctly. At [29]-[34], the High Court referred to the dichotomy suggested by the Full Court in Commissioner for Australian Capital Territory Revenue v Alphaone Pty Ltd (1994) 49 FCR 576 at 591-592, between a decision-maker's obligation to identify an issue not obviously open on the known material, and his or her lack of obligation to expose in advance aspects of the mental processes by which the decision-maker arrives at a decision. The High Court pointed out that the dichotomy does not necessarily encompass all possible kinds of cases that may fall for consideration, and focussing on it may distract from the fundamental principles that are engaged. The High Court emphasised the principle, referred to in Alphaone at 590-591, that the right to be heard ordinarily requires that the party affected be given the opportunity of ascertaining the relevant issues, and that this may involve more than simply knowing what is the ultimate decision to be made. At [47]-[49], the High Court pointed out that sometimes it is necessary for the decision-maker to indicate what he or she thinks the issues are, either by the questions he or she asks during a hearing, or more explicitly. What is not required is for the decision-maker to give a running commentary on what he or she thinks about the evidence that is given. The High Court did say that, even if the issues are properly identified, there may be cases that would yield to analysis in the terms identified in Alphaone . It appears from this reasoning that the distinction between an issue not obviously open on the known material, and an aspect of the decision-maker's mental processes is a valid distinction, but that care must be taken to avoid trying to force each case into one or other of those categories.


case_text: I can dispose of the "same description" inquiry fairly swiftly. Whether goods are "of the same description" is a question of fact. According to the authorities, the three principal factors to be considered are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of the goods, including their intended purposes; and (3) the trade channels through which the goods are bought and sold. It is not essential that all criteria be met. See Re Jellinek's Application for a Trade Mark (1946) 63 RPC 59; John Crowther & Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84; McCormick & Co Inc v McCormick (2000) 51 IPR 102. The expression "same description" is not to be construed restrictively and regard is to be paid to the business or commercial context in which the goods in question are bought and sold: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539, 546; Australian Wine Importers' Trade Mark (1889) 6 RPC 311, 318. Goods are not of the same description simply because they can be used for the same purpose, for example for personal adornment: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, 220; Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547.


case_outcome: discussed

case_title: BP plc v Woolworths (2004) 62 IPR 545

case_text: There is an exception to the general rule. In BP plc v Woolworths (2004) 62 IPR 545 I held that in very limited situations it was possible to dissect a total image to obtain proprietorship (and trade mark registration) of only one component of the total image. The test I adopted was whether the component created "a separate and distinct commercial impression" from the other components, so that it might be said of the distinct component that it performs a trade mark function. Another way of putting it is to determine whether the individual component for which registration is sought comprises a separate and distinct trade mark. In other words, although two or more elements (words, devices or both) may be used in combination and constitute a combination mark for which registration may be obtained that does not deny absolutely the possibility that one or more of those elements is an individual mark for which registration can also be obtained. Admittedly the cases where this will occur are rare. It is more likely to occur in the case of a word and device mark, because often the word is the dominant portion of a combination mark: In re Tekelec-Airtronic , 188 USPQ 694 (1975); Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976); In re Dempster Bros, Inc , 132 USPQ 300 (1961).


case_title: Camiceria Pancaldi and B Srl v Le Cravatte Di Pancaldi Srl (1994) 30 IPR 547


case_text: I do not think it can be said that handbags, purses and wallets are of the same description as backpacks. Backpacks, especially those in respect of which Colorado Group or its predecessor applied the mark (being school backpacks), are not put to the same use as handbags, wallets or purses. The nature of the products is, to my mind, quite different. Backpacks are highly functional and directed toward comfort, weight-bearing, support and durability while wallets and purses have a predominant fashion purpose. While perhaps not decisive, a person wishing to buy a backpack would not find a handbag, wallet or purse to be an acceptable substitute or alternative: see San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd (2000) 50 IPR 321, 330; Canon Kabushiki Kaisha v Brook (1996) 69 FCR 401, 410-411. In any event, a consumer is not likely to think that these goods originate from the same source. That is, I do not accept that either the trade or the public would regard the goods as similar.


case_title: Chorlton and Dugdale's Trade Mark, Re (1885) 53 LT NS 337

case_text: Colorado Group suggests that the use of the word "Colorado" in combination with the "simple mountain motif" was use of the word as a trade mark. I cannot accept this argument, although I toyed with it in my earlier reasons. The early cases that bear on the point were decided under the Trade Marks Registration Act 1875 (UK), 38 & 39 Vict, c 91. I referred to some of them in my previous reasons. Section 10 of the 1875 Act provided that "any special and distinctive word or words or combination of figures or letters used as a trade-mark before the passing of this Act may be registered as such under this Act". Thus, to obtain registration of a word mark, it was necessary to show not only that the word was "special and distinctive" but also that it had been "used as a trade-mark". This requirement was met if the word was used alone as a word. If it was used in combination with other words or with a device that was not sufficient: In re J B Palmer's Trade-Mark (1883) 24 Ch D 504; Re Spencer's Trade Mark (1886) 54 LT NS 659; In re Grossmith's Trade Mark (1889) 6 PR 180; Perry Davis & Son v Harbord (1890) 15 App Cas 316; Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8. In Re Chorlton and Dugdale's Trade Mark (1885) 53 LT NS 337, 338 Pearson J explained that for words to be registered as a mark they must "have been used solely and not in combination with any device. I think that 'used as a mark' means 'used by themselves as a trade mark' not 'used as part of a trade [mark]'". The same position holds under the present Australian Trade Marks Act , albeit the language is now different.


case_title: Continental Connector Corp v Continental Specialities Corp , 492 F.Supp 1088 (1979)

case_text: I do not treat as relevant, as Colorado Group asserted it was, that both it and Strandbags Group sell these goods from the same stores and to the same sorts of customers. The fact that goods may be found in the same shop or in the same department within a department store is more a symptom of modern marketing methods which "tend to unify widely different types of products in the same retail outlets or distribution networks", than any great similarity in the goods: Continental Connector Corp v Continental Specialities Corp , 492 F.Supp 1088, 1096-1097 (1979). In my view, correspondence in the channels of trade is no longer a very helpful line of inquiry in relation to many goods, although there may be exceptions.


case_title: Continental Specialities Corp v Continental Connector Corp , 192 USPQ 449 (1976)


case_title: Dempster Bros, Inc , In re , 132 USPQ 300 (1961)


case_title: Grossmith's Trade Mark, In re (1889) 6 PR 180


case_title: J B Palmer's Trade-Mark, In re (1883) 24 Ch D 504


case_text: On the facts as I have found them, Edgarlodge was, and its successor Strandbags Group is, unambiguously the proprietor of the Colorado mark in respect of handbags because of first use. There was a contest about its first use in relation to wallets and purses. Even if that contest had been resolved differently it would not have affected the outcome. In my earlier judgment I explained that a person is entitled to registration of a mark not only in respect of goods to which the mark has been applied but also to goods or classes of goods that are "of the same kind": Jackson & Co v Napper (1886) 35 Ch D 160. This is because it is assumed that a consumer is likely to believe that the other goods originate from the same source as the goods in respect of which the mark has been used. 31 In my view purses and wallets are goods of the same kind as handbags. Both are intended as fashion items and are used to carry small, everyday items such as money, credit cards, keys and like objects. True, handbags are usually larger than both wallets and purses but I do not think this affects the kind of goods they are. At any rate, it is often very difficult to tell the difference between what is a purse and what is a handbag these days, with many handbags being quite small in size. A consumer would expect a handbag and a purse or wallet bearing the same mark to come from the same source. Some are even matching in design. Indeed, many leading fashion houses sell lines of handbags, purses and wallets. 32 Were it necessary this analysis would produce the following consequence. That is, Strandbags Group would not infringe Colorado Group's mark when it applied the mark to wallets or purses, as well as handbags.


case_title: Jellinek's Application for a Trade Mark, Re (1946) 63 RPC 59


case_title: John Crowther & Sons (Milnsbridge) Ltd's Application for a Trade Mark (1948) 65 RPC 369


case_text: The final question is whether the service of bringing together handbags, wallets and purses for sale is a service "closely related" to backpacks or whether it is "of the same description" as the service of bringing together backpacks for sale. I think these claims are hopeless. I do not understand how it can be said that the service of bringing handbags, wallets and purses together is "closely related" to backpacks. There is no relationship between the two. In my opinion, speaking generally it is only when retailing services consist of supplying the very goods in respect of which it is said the services are related that the services and goods will be closely related: see Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143, K Mart Corporation v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149. Put another way, I cannot imagine that the public would expect the same business to supply handbags, wallets and purses as well as backpacks: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627, 630. For much the same reasons, I reject the submissions that the service of bringing together handbags, wallets and purses for the benefit of customers is a service "of the same description" as the service of bringing together backpacks for sale and that handbags, wallets and purses are goods "closely related" to that service.


case_title: McCormick & Co Inc v McCormick (2000) 51 IPR 102


case_title: Perry Davis & Son v Harbord (1890) 15 App Cas 316


case_title: Powell v The Birmingham Vinegar Brewery Company, Limited [1894] AC 8


case_title: Reckitt & Colman (Australia) Limited v Boden [1945] HCA 12 ; (1945) 70 CLR 84


case_title: Richards v Butcher [1891] 2 Ch 522

case_text: The answer must be considered from the perspective of the public, or that section of the public that would purchase these kinds of goods. Would a person in this class understand that the word "Colorado" is being used as a trade mark; that is, as a statement concerning the origin of the goods? I am in no doubt that the answer to this question is in the affirmative. In my opinion a consumer looking at the swing tag would form the view that the goods are being distinguished by two marks, the combination mark and the word "Colorado". This conclusion is in accordance with Richards v Butcher [1891] 2 Ch 522. 21 The position reached to this point then is as follows. Edgarlodge was the first to use the word "Colorado" in relation to handbags. Edgarlodge's use of the word "Colorado" in respect of purses and wallets also predates Colorado Group's use of the word in respect of these goods. 22 I turn now to s 120(2). That section provides that a person will infringe a registered trade mark if he or she uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered trade mark in relation to: (a) goods of the same description as that of the registered goods; (b) services that are closely related to the registered goods; (c) services of the same description as that of services in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. There is a qualification. A person is not taken to have infringed the trade mark if the person establishes that the relevant use is not likely to deceive or cause confusion.


case_title: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158


case_title: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539


case_title: San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd (2000) 50 IPR 321


case_title: Spencer's Trade Mark, Re (1886) 54 LT NS 659


case_title: Tekelec-Airtronic, In re , 188 USPQ 694 (1975)


case_title: Warnaco US Inc v Estee Lauder Cosmetics Ltd (2001) 50 IPR 143


case_title: Winglide Pty Ltd v Corporate Express Inc (1999) 46 IPR 627


case_title: NAKX v Minister of Immigration & Multicultural & Indigenous Affairs [2003] FCA 1559

case_text: In my view, the appropriate course in the circumstances of this case is to dismiss the appeal. The medical certificate, to adopt the words of Lindgren J in NAKX v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCA 1559 , is 'quite unsatisfactory'. It does not address the question why the condition referred to would prevent the appellant from travelling to the Court and participating effectively in a hearing. 14 In addition, it is difficult to see the status of the certificate where no circumstances are set for the receipt by the Court of the certificate, and the basis upon which it is to be tendered before the Court. All that has happened is that it has been left with the Court for the Court's information and this is, in my view, unsatisfactory. I will accept for the moment that implicit in the delivery of the certificate is an application for an adjournment. However, in my view, no proper basis has been made for the adjournment by the mere giving to the Court of a certificate without any further explanation. 15 Therefore, pursuant to section 25(2B)(bb)(ii) , for failure of the appellant to attend a hearing relating to the appeal, I will make an order that the appeal be dismissed. I should indicate, however, that because this is a dismissal in the absence of the appellant, the appellant may, if so advised and on the proper material, seek to have the order set aside upon application. I say nothing as to whether such an application will be likely to succeed in the circumstances of this case, and this will be a matter which will need to be determined if and when application is made. Accordingly, I will dismiss the appeal with costs. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate: Dated: 24 November 2006 Counsel for the Appellant: No appearance by the Appellant. Counsel for the Respondent: R Knowles Solicitor for the Respondent: Phillips Fox Date of Hearing: 21 November 2006 Date of Judgment: 21 November 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1624.html


case_title: NALM v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCAFC 17


case_title: Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57

case_text: this case, I am satisfied having regard to the affidavit of Ms Kelly Gardner and the matters deposed to by Mr Grigson, that a prima facie case or serious question to be tried is made out on the substantive question for the purposes of Australian Broadcasting Corporation v O'Neill (2006) 227 CLR 57 (particularly at [65] to [72]). Having regard to that matter, I am satisfied that an injunction order ought to be made directed to the first respondent. The affidavit of Ms Gardner also deposes to a conversation she had with the first respondent in which the first respondent confirmed his address for receipt of particular material and said that he had signed and would return straightaway a form effecting a forfeiture of the particular articles. That did not occur. The conversation suggests plainly an inference that the respondent accepts that the goods are counterfeit goods. The notice in question is a Notice of Consent to Forfeit Goods under Part 13 the Trade Marks Act . Being satisfied of those matters and particularly having regard to the paragraphs of Ms Gardner's affidavit, namely, paragraphs 30 to 33, taken in conjunction with paragraph 3, I am satisfied that although only two of the articles are the subject of the counterfeit analysis by her, an inference arises that if two of the articles, depicted in the material, are established as counterfeit articles, then the remaining eight articles making up the bundle of 10 articles the subject of the notice, would also be likely to be counterfeit articles. Being satisfied of those matters, it is appropriate to make an order restraining the first respondent in terms of the proposed interlocutory injunction. Since the articles are demonstrated on the material, at least at the standard of a serious question to be tried or prima facie case, to be counterfeit articles, it seems to me that the status quo ought to be preserved by making an order directed to the Customs CEO not to release the counterfeit articles into the hands of the designated owner. I am satisfied that in light of the serious question to be tried, an order ought to be made under s 137(5) , both having regard to its intersection with s 136(1) and its context within Part 13 more generally and the circumstances to be determined in the proceedings.


case_text: As AMOU's submissions point out, the expression ' proceeding in a matter ' in s 824(1) extends to an application made by motion in the course of the principal action: Shackley v Australian Croatian Club Ltd (1996) 141 ALR 736 , at 744 (IRC), per Wilcox CJ (with whom von Doussa J agreed); Paras v Public Service Body Head of the Department of Infrastructure (No 3) [2006] FCA 745 ; (2006) 152 FCR 534 , at 539 [19]. There is no dispute that s 824(1) applies to an application for interlocutory relief, just as it does to a motion seeking interlocutory orders. Section 824(1) therefore applies both to the costs of SFC's application for interlocutory relief and of the successful motion brought by AMOU and the second respondents for an anti-suit injunction. 21 In Paras v Public Service Body, Young J rejected (at 536 [8]) a submission that s 824(2) is: 'only concerned with acts or omissions in the practical sense of things done or omitted to be done which do not accord with reasonable notions of the conduct of proceedings, such as failing to turn up at a hearing, failing to meet deadlines laid down in court directions and not giving timely notice.' His Honour held (at 538 [16]) that s 824(2): 'is not confined to costs associated with the institution of the proceedings or a step in the proceedings; it extends more broadly to costs incurred as a result of any unreasonable act or omission. On a plain and natural meaning of s 824(2), there is no reason why the reference to an unreasonable act or omission that has caused another party to incur costs in connection with the proceeding should not extend to unreasonable acts or omissions in connection with an interlocutory application. And, as the Explanatory Memorandum suggests, the power conferred by s 824(2) can be exercised irrespective of the outcome of the particular application in question, and of the proceedings as a whole.' 22 SFC's submissions assume that Young J was intending to limit the operation of s 824(2) of the WR Act to an unreasonable act or omission ' in connection with ' the relevant proceeding. In view of his Honour's observation that the sub-section ' extends more broadly to costs incurred as a result of any unreasonable act or omission ' it is by no means clear that his Honour did so intend. It is to be remembered that the statutory criterion is whether a party to a proceeding has, by an unreasonable act (or omission), caused another party in the proceeding to incur costs in connection with the proceeding. 23 SFC's submissions also appear to assume that the relevant ' proceeding ' is SFC's application for a declaration as to the proper construction of the Enterprise Agreements. However, the authorities ([6] above) demonstrate that ' a proceeding ... in a matter ' includes an interlocutory application, such as a motion for an anti-suit injunction. 24 The question posed by the statutory language is whether SFC's unreasonable act (in commencing proceedings in the AIRC while the proceedings in this Court were on foot) caused AMOU and the second respondents to incur costs in connection with their application for an anti-suit injunction. The answer to that question, in my opinion, must be yes, since the motions for anti-suit injunctions were made necessary by SFC's act.


case_text: As AMOU's submissions point out, the expression ' proceeding in a matter ' in s 824(1) extends to an application made by motion in the course of the principal action: Shackley v Australian Croatian Club Ltd (1996) 141 ALR 736 , at 744 (IRC), per Wilcox CJ (with whom von Doussa J agreed); Paras v Public Service Body Head of the Department of Infrastructure (No 3) [2006] FCA 745 ; (2006) 152 FCR 534 , at 539 [19]. There is no dispute that s 824(1) applies to an application for interlocutory relief, just as it does to a motion seeking interlocutory orders. Section 824(1) therefore applies both to the costs of SFC's application for interlocutory relief and of the successful motion brought by AMOU and the second respondents for an anti-suit injunction.


case_text: An application is not commenced ' without reasonable cause ' simply because the applicant's arguments are rejected by the Court: The Queen v Moore; Ex parte Federated Miscellaneous Workers' Union of Australia [1978] HCA 51 ; (1978) 140 CLR 470 , at 473, per Gibbs J. However, if the application is ' misconceived ' the position is very likely to be different: Standish v University of Tasmania (1989) 28 IR 129, at 139, per Lockhart J.


case_outcome: referred to

case_text: On 29 May 2008, the second respondents filed a motion seeking an anti-suit injunction against SFC. AMOU filed a similar motion on 30 May 2008. On 30 May 2008, I made orders restraining SFC, pending final determination of the proceedings in this Court, from taking further action in the Australian Industrial Relations Commission (' AIRC ') to obtain orders against AMOU and the second respondents under s 496 of the WR Act : Sydney Ferries Corporation v Australian Maritime Officers Union [2008] FCA 817.


case_text: The background to the hearings held on 28 and 30 May 2008 and the subsequent course of proceedings in this Court are outlined in my judgment, published today, rejecting SFC's application for declaratory relief against AMOU: Sydney Ferries Corporation v Australian Maritime Officers Union (No 2) [2008] FCA 954. 4 Each of the respondents now seeks costs orders against SFC in relation to the interlocutory proceedings: • AMOU submits that SFC should be ordered to pay AMOU's costs of SFC's application for interlocutory relief and AMOU's motion for an anti-suit injunction; • The second respondents make a similar submission in relation to their costs of both the application and the motion; and • AIMPE submits that SFC should pay AIMPE's costs of SFC's application for interlocutory relief. 5 It is common ground that the Court's discretion to award costs conferred by s 43(1) of the Federal Court of Australia Act 1976 (Cth) is, for present purposes, constrained by s 824 of the WR Act . Section 824 provides as follows: '(1) A party to a proceeding (including an appeal) in a matter arising under this Act ... must not be ordered to pay costs incurred by any other party to the proceeding unless the first-mentioned party instituted the proceeding vexatiously or without reasonable cause. (2) Despite subsection (1), if a court hearing a proceeding (including an appeal) in a matter arising under this Act (other than an application under section 663) is satisfied that a party to the proceeding has, by an unreasonable act or omission, caused another party to the proceeding to incur costs in connection with the proceeding, the court may order the first-mentioned party to pay some or all of those costs. (3) In subsections (1) and (2): costs includes all legal and professional costs and disbursements and expenses of witnesses.'


case_title: The Queen v Moore; Ex parte Federated Miscellaneous Workers' Union of Australia [1978] HCA 51 ; (1978) 140 CLR 470


case_text: the Court will not make, to which I would add maintain, any order which is futile. The material contained in the Order 52B documents, with the exception of the applicant's 1996 tax return, has been very widely disseminated by prominent publication on the front page of the national newspaper. See Commonwealth v John Fairfax & Sons Ltd [1980] HCA 44 ; (1980) 147 CLR 39 at 54 per Mason J; Westpac Banking Corporation v John Fairfax Group Pty Ltd (1991) 19 IPR 513, at 524 525 per Powell J; Cashman v Ackland [2001] NSWSC 863 at [6] . Unlike the situation in Westpac , here the detail has passed into the public domain. So much can be gauged from a comparison of the article, as it appeared in The Australian (Ex 1) and the relevant Order 52B documents.


case_outcome: distinguished

case_title: Westpac Bowling Corporation v John Fairfax Group Pty Ltd (1991) 19 IPR 513


case_title: Cashman v Ackland [2001] NSWSC 863


case_text: The plaintiff submits that the principle to be applied in this case is succinctly extracted by Finkelstein J in the passage highlighted above from the judgment of Dixon J in Fraser Henleins Pty Ltd & Crowther v Cody [1945] HCA 49 ; (1945) 70 CLR 100 at 128. That passage is consistent with a series of other decisions concerning the wartime regulations, decided at about the same time, including Vardon v Commonwealth [1943] HCA 30 ; (1943) 67 CLR 434; Cann's Pty Ltd v Commonwealth [1946] HCA 5 ; (1946) 71 CLR 210; and King Gee Clothing Co Pty Ltd v The Commonwealth [1945] HCA 23 ; (1945) 71 CLR 184.


case_text: The nature, effect, and limit upon directions that may be given pursuant to s 447D have been explained in Editions Tom Thompson Pty Ltd v Pilley (1997) 148 ALR 146 at 151 155; Re Ansett Australia Ltd and Mentha [2002] FCA 2 ; (2002) 188 ALR 186; Re Ansett Australia Ltd (2001) 39 ACSR 355; 19 ACLC 1678 at [58] [69]; and Re Pasminco [2004] FCA 656 ; (2004) 22 ACLC 774; 49 ACSR 470 at [2] [9] and need not be repeated.


case_text: It will be observed that the reference to 'reasonable' remuneration is a gloss upon the words of the Act and is described by his Honour as arising from 'necessary implication'. That implication may, no doubt, be given effect to in the operation of s 449E(2) but is of doubtful relevance to the construction of s 449E(1). There is much else of relevance in the judgment in Stockford which is too lengthy to reproduce but some other passages repay reproduction. His Honour said (at [24] and [30] [31]): 'The natural meaning of the word "fix" in the context of an entitlement to "such remuneration as is fixed by a resolution of [creditors]" is, so it seems to me, to quantify that remuneration, that is to calculate or ascertain the amount of remuneration: Mayne v Jaques [1960] HCA 23 ; (1960) 101 CLR 169, 173, 174, 180. See also In re Gallard; Ex parte Harris [1892] 1 QB 532, 544. Thus, remuneration will be "fixed" if it is stated as a money sum, or is based on a formula which is capable of being applied according to some objective standard so the sum "can be calculated or ascertained definitely": Fraser Henleins v Cody [1945] HCA 49 ; (1945) 70 CLR 100, 128. In the case of a formula all the objective elements must be identified. Other cases which support this approach in related contexts include, in Canada: Hill v State (1913) 14 DLR 158, 163; Beuregard v The Queen in right of Canada (1983) 148 DLR (3d) 205, 235; Royal Bank of Canada v Bjorklund (1985) 36 Man R (2d) 54, 59; and in the United States: Zimmerman v Carfield 42 Ohio St 463, 468 (1885); Board of Supervisors of Yavapai County v Stephens 177 P 261, 262 (1919); Culberson v Watkins 119 SE 319, 322 (1923); Woodcock v Dick 222 P 2d 667, 669 (1950); Powers v Isley 183 P 2d 880, 884 (1974). ... 'The question arises whether the approval of prospective fees charged on a time basis amounts to "fixing" or "determining" the liquidator's remuneration. On one view such approval does no more than fix the rate at which remuneration is to be charged; as the method sets no limit to the amount to be charged it may not "fix" the remuneration. At least there must be real doubt about the validity of the practice. It is not, however, a matter which I need resolve, for the issue does not arise squarely on the facts and no submissions were directed to the question. To reach a concluded view would require consideration of, among other things, the knowledge of the practice by Parliament when the Companies Acts were re-enacted or amended. If Parliament knew of the practice and did not change the statute that is relevant to its interpretation. I should say that if the practice be irregular that would not mean that a liquidator must complete his administration before he receives any remuneration. He could be allowed interim remuneration while work is being performed, leaving the precise amount of his remuneration to be fixed when the winding up is complete. In any event, the problem may not be as large as at first it seems. Oftentimes, especially in a complex administration, it will be too difficult to fix fees prospectively having regard to the matters that should be taken into account, as I will later explain. For this reason courts have from time to time refused to fix fees prospectively: for instance Re Daily Telegraph Newspaper Company Limited (1931) 48 WN (NSW) 236. Be that as it may, whatever be the correct meaning of "fixing" remuneration, it was not "fixed" in this case. The resolutions purporting to fix the administrators' remuneration did so by reference to the rates in the administrators' report. According to those rates work performed by persons occupying the same position could attract a different hourly charge. There was no criteria by reference to which one could determine which hourly charge would be applied. In reality it was left to the administrators to decide what the rate would be. In this state of affairs it was the administrators and not the creditors who fixed their remuneration.' [emphasis added] 19 The plaintiff submits that the principle to be applied in this case is succinctly extracted by Finkelstein J in the passage highlighted above from the judgment of Dixon J in Fraser Henleins Pty Ltd & Crowther v Cody [1945] HCA 49 ; (1945) 70 CLR 100 at 128. That passage is consistent with a series of other decisions concerning the wartime regulations, decided at about the same time, including Vardon v Commonwealth [1943] HCA 30 ; (1943) 67 CLR 434; Cann's Pty Ltd v Commonwealth [1946] HCA 5 ; (1946) 71 CLR 210; and King Gee Clothing Co Pty Ltd v The Commonwealth [1945] HCA 23 ; (1945) 71 CLR 184.


case_title: King Gee Clothing Co Pty Ltd vThe Commonwealth [1945] HCA 23 ; (1945) 71 CLR 184


case_text: Counsel for ASIC responded to the argument based upon practical inconvenience by suggesting that interim payments could be authorised, as suggested by Finkelstein J in Stockford (at [30]) or that a certain monetary sum could be fixed on the basis that the administrator should have the right to seek further remuneration at a later meeting (cf Re Daily Telegraph Newspaper Co Limited (1931) 48 WN (NSW) 236). (See also Re Clynton Court Pty Ltd (subject to a deed of company arrangement); Korda (as joint and several deed administrators of Clynton Court Pty Ltd (subject to a deed of company arrangement v The J Aron Corporation (2005) 53 ACSR 432; (2005) 23 ACLC 710; [2005] FCA 543.) ASIC suggested that the convenience of avoiding additional meetings be given little, if any, weight.


case_text: The declaration sought in the alternative is based upon s 21 of the Federal Court of Australia Act 1976 (Cth). The limits to the exercise of that jurisdiction in circumstances such as the present have been explained in Mentha v GE Capital Ltd (1997) 154 ALR 565 at 571 575. It is clear enough that the present constitution of the proceeding is not appropriate for the making of a declaration of right.


case_title: Re Ansett Australia Ltd (2001) 39 ACSR 355; (2001) 19 ACLC 1678


case_title: Re Ansett Australia Ltd and Mentha [2002] FCA 2 ; (2002) 188 ALR 186


case_text: It will be observed that the reference to 'reasonable' remuneration is a gloss upon the words of the Act and is described by his Honour as arising from 'necessary implication'. That implication may, no doubt, be given effect to in the operation of s 449E(2) but is of doubtful relevance to the construction of s 449E(1). There is much else of relevance in the judgment in Stockford which is too lengthy to reproduce but some other passages repay reproduction. His Honour said (at [24] and [30] [31]): 'The natural meaning of the word "fix" in the context of an entitlement to "such remuneration as is fixed by a resolution of [creditors]" is, so it seems to me, to quantify that remuneration, that is to calculate or ascertain the amount of remuneration: Mayne v Jaques [1960] HCA 23 ; (1960) 101 CLR 169, 173, 174, 180. See also In re Gallard; Ex parte Harris [1892] 1 QB 532, 544. Thus, remuneration will be "fixed" if it is stated as a money sum, or is based on a formula which is capable of being applied according to some objective standard so the sum "can be calculated or ascertained definitely": Fraser Henleins v Cody [1945] HCA 49 ; (1945) 70 CLR 100, 128. In the case of a formula all the objective elements must be identified. Other cases which support this approach in related contexts include, in Canada: Hill v State (1913) 14 DLR 158, 163; Beuregard v The Queen in right of Canada (1983) 148 DLR (3d) 205, 235; Royal Bank of Canada v Bjorklund (1985) 36 Man R (2d) 54, 59; and in the United States: Zimmerman v Carfield 42 Ohio St 463, 468 (1885); Board of Supervisors of Yavapai County v Stephens 177 P 261, 262 (1919); Culberson v Watkins 119 SE 319, 322 (1923); Woodcock v Dick 222 P 2d 667, 669 (1950); Powers v Isley 183 P 2d 880, 884 (1974). ... 'The question arises whether the approval of prospective fees charged on a time basis amounts to "fixing" or "determining" the liquidator's remuneration. On one view such approval does no more than fix the rate at which remuneration is to be charged; as the method sets no limit to the amount to be charged it may not "fix" the remuneration. At least there must be real doubt about the validity of the practice. It is not, however, a matter which I need resolve, for the issue does not arise squarely on the facts and no submissions were directed to the question. To reach a concluded view would require consideration of, among other things, the knowledge of the practice by Parliament when the Companies Acts were re-enacted or amended. If Parliament knew of the practice and did not change the statute that is relevant to its interpretation. I should say that if the practice be irregular that would not mean that a liquidator must complete his administration before he receives any remuneration. He could be allowed interim remuneration while work is being performed, leaving the precise amount of his remuneration to be fixed when the winding up is complete. In any event, the problem may not be as large as at first it seems. Oftentimes, especially in a complex administration, it will be too difficult to fix fees prospectively having regard to the matters that should be taken into account, as I will later explain. For this reason courts have from time to time refused to fix fees prospectively: for instance Re Daily Telegraph Newspaper Company Limited (1931) 48 WN (NSW) 236. Be that as it may, whatever be the correct meaning of "fixing" remuneration, it was not "fixed" in this case. The resolutions purporting to fix the administrators' remuneration did so by reference to the rates in the administrators' report. According to those rates work performed by persons occupying the same position could attract a different hourly charge. There was no criteria by reference to which one could determine which hourly charge would be applied. In reality it was left to the administrators to decide what the rate would be. In this state of affairs it was the administrators and not the creditors who fixed their remuneration.' [emphasis added] 27 Counsel for ASIC responded to the argument based upon practical inconvenience by suggesting that interim payments could be authorised, as suggested by Finkelstein J in Stockford (at [30]) or that a certain monetary sum could be fixed on the basis that the administrator should have the right to seek further remuneration at a later meeting (cf Re Daily Telegraph Newspaper Co Limited (1931) 48 WN (NSW) 236). (See also Re Clynton Court Pty Ltd (subject to a deed of company arrangement); Korda (as joint and several deed administrators of Clynton Court Pty Ltd (subject to a deed of company arrangement v The J Aron Corporation (2005) 53 ACSR 432; (2005) 23 ACLC 710; [2005] FCA 543.) ASIC suggested that the convenience of avoiding additional meetings be given little, if any, weight.


case_text: The decision of Finkelstein J in Re Korda; in the matter of Stockford Ltd [2004] FCA 1682 ; (2004) 140 FCR 424 ( Stockford ) drew attention to some issues relating to the fixing of the remuneration of administrators and has indirectly led to the present proceeding. Finkelstein J said (at [5]): 'Although s 449E requires the remuneration to be "fixed" by the creditors or the court, the section does not specify how it is to be "fixed". It could be "fixed" as a periodic salary, a lump sum, a percentage of some amount (such as the value of the company's assets under the administrators' control) or according to the amount of time spent by the administrator determined by reference to a scale or formula. The matter is simply left at large. So also is the basis upon which the quantum of the remuneration is to be determined. That is, the section is silent on the factors to be taken into account both for deciding the appropriate method of "fixing" an administrator's remuneration and in determining the amount to be "fixed". The only guidance that is given, and it is given by necessary implication, is that an administrator is entitled to reasonable remuneration. That offers little assistance to the tribunal that is required to decide what is reasonable in a particular case.' 17 It will be observed that the reference to 'reasonable' remuneration is a gloss upon the words of the Act and is described by his Honour as arising from 'necessary implication'. That implication may, no doubt, be given effect to in the operation of s 449E(2) but is of doubtful relevance to the construction of s 449E(1). There is much else of relevance in the judgment in Stockford which is too lengthy to reproduce but some other passages repay reproduction. His Honour said (at [24] and [30] [31]): 'The natural meaning of the word "fix" in the context of an entitlement to "such remuneration as is fixed by a resolution of [creditors]" is, so it seems to me, to quantify that remuneration, that is to calculate or ascertain the amount of remuneration: Mayne v Jaques [1960] HCA 23 ; (1960) 101 CLR 169, 173, 174, 180. See also In re Gallard; Ex parte Harris [1892] 1 QB 532, 544. Thus, remuneration will be "fixed" if it is stated as a money sum, or is based on a formula which is capable of being applied according to some objective standard so the sum "can be calculated or ascertained definitely": Fraser Henleins v Cody [1945] HCA 49 ; (1945) 70 CLR 100, 128. In the case of a formula all the objective elements must be identified. Other cases which support this approach in related contexts include, in Canada: Hill v State (1913) 14 DLR 158, 163; Beuregard v The Queen in right of Canada (1983) 148 DLR (3d) 205, 235; Royal Bank of Canada v Bjorklund (1985) 36 Man R (2d) 54, 59; and in the United States: Zimmerman v Carfield 42 Ohio St 463, 468 (1885); Board of Supervisors of Yavapai County v Stephens 177 P 261, 262 (1919); Culberson v Watkins 119 SE 319, 322 (1923); Woodcock v Dick 222 P 2d 667, 669 (1950); Powers v Isley 183 P 2d 880, 884 (1974). ... 'The question arises whether the approval of prospective fees charged on a time basis amounts to "fixing" or "determining" the liquidator's remuneration. On one view such approval does no more than fix the rate at which remuneration is to be charged; as the method sets no limit to the amount to be charged it may not "fix" the remuneration. At least there must be real doubt about the validity of the practice. It is not, however, a matter which I need resolve, for the issue does not arise squarely on the facts and no submissions were directed to the question. To reach a concluded view would require consideration of, among other things, the knowledge of the practice by Parliament when the Companies Acts were re-enacted or amended. If Parliament knew of the practice and did not change the statute that is relevant to its interpretation. I should say that if the practice be irregular that would not mean that a liquidator must complete his administration before he receives any remuneration. He could be allowed interim remuneration while work is being performed, leaving the precise amount of his remuneration to be fixed when the winding up is complete. In any event, the problem may not be as large as at first it seems. Oftentimes, especially in a complex administration, it will be too difficult to fix fees prospectively having regard to the matters that should be taken into account, as I will later explain. For this reason courts have from time to time refused to fix fees prospectively: for instance Re Daily Telegraph Newspaper Company Limited (1931) 48 WN (NSW) 236. Be that as it may, whatever be the correct meaning of "fixing" remuneration, it was not "fixed" in this case. The resolutions purporting to fix the administrators' remuneration did so by reference to the rates in the administrators' report. According to those rates work performed by persons occupying the same position could attract a different hourly charge. There was no criteria by reference to which one could determine which hourly charge would be applied. In reality it was left to the administrators to decide what the rate would be. In this state of affairs it was the administrators and not the creditors who fixed their remuneration.' [emphasis added] 18 Finkelstein J did not decide the point at issue here in Stockford . It is also notable that much of the discussion in Stockford related not so much to the question of whether fees are 'fixed' but whether the fees, if fixed, are reasonable. 20 It is submitted for the plaintiff that the resolutions in the present case do not suffer from the defect which existed in Stockford as there is only one rate fixed for each person who does any work in connection with the administration. Once the person and his or her category is known, and the time spent is known, the guide can be arithmetically applied to arrive at the result. Thus, the resolution here does avoid one of the problems which brought down the arrangement in Stockford . Counsel also relied upon the specific monetary limits or caps to avoid the criticism that the arrangements would otherwise be open ended.


case_title: Vardon v Commonwealth [1943] HCA 30 ; (1943) 67 CLR 434


case_text: The Williams & Hughes/Hillcrest retainer appears to have been for limited legal services ("[a]dvising and negotiating on behalf of Chris Gurtler in communications with Kosta Patsan and Finance Now Pty Ltd's solicitors"). It described Hillcrest as the "client" for the purposes of the agreement. It envisaged that Hillcrest would give instructions (cl 22). I would simply note in passing that this agreement did not provide Hillcrest with a level of control of the litigation comparable to that had by the litigation funder in Campbells Cash and Carry Pty Ltd v Fostif Pty Ltd [2006] HCA 41 ; (2006) 229 ALR 58; for aspects of the terms of which see Fostif Pty Ltd v Campbells Cash & Carry Pty Ltd [2005] NSWCA 83 ; (2005) 63 NSWLR 203 at [78] - [82] .


case_title: Fostif Pty Ltd v Campbells Cash & Carry Pty Ltd [2005] NSWCA 83 ; (2005) 63 NSWLR 203


case_text: I would simply note in passing that this affidavit does not suggest, expressly or impliedly, that the decision to join Mr Turnbull was the subject of, or was contributed to by, legal advice from Williams & Hughes let alone did it "put in issue ... advice received": Adelaide Steamship Co Ltd v Spalvins (1998) 81 FCR 360 at 372. However, it does indicate that instructions were given to join Mr Turnbull. And as the joinder motion filed on 31 August 2006 by Williams & Hughes illustrates, those instructions were acted on. 32 The challenge to the privilege claim is put on four discrete bases. They are that: (i) by putting in issue his state of mind in applying to join Mr Turnbull, Mr Gurtler has waived privilege in respect of that matter ("issue waiver"); (ii) by disclosing he instructed his solicitors, Williams & Hughes, to apply to join Mr Turnbull, he has waived privilege in those instructions ("disclosure waiver")' (iii) there is a prima facie case that the substantial purposes of the legal advice was for Hillcrest's own purposes, and hence was not subject to any privilege claimed by Mr Gurtler ("Hillcrest pursuing its own purposes"); and (iv) there is a prima facie case that the communications with Williams & Hughes concerning the joinder were in pursuance of a deliberately improper purpose and as such were not protected by legal professional privilege ("the fraud/improper purpose exception"). 35 What is notable of issue waiver cases, as the Full Court indicated in Rio Tinto (at [47]), is their fact specific character. Nonetheless, observations in that case on the joint judgment of Kiefel and Finn JJ in Spalvins are appropriate to the present matter. In Spalvins Kiefel J and I said (at 371-372): "The usual type of case said to illustrate issue waiver at common law is one in which, in order to establish a particular right, claim, or defence a party who previously has been legally advised, or has provided advice, needs to show that the advice so given did, or did not, have a particular character, for example that it was or was not negligent where the claim is for professional negligence against the adviser: see Kershaw v Whelan [1996] 1 WLR 358; that it was not based on full information or was not meaningful, in an undue influence claim: see Inche Noriah v Shaik Allie Bin Omar [1929] AC 127 at 130-131; see also Bester v Perpetual Trustee Co Ltd [1970] 3 NSWR 30 and Brusewitz v Brown [1923] NZLR 1106 or that it did not address or properly address a matter which, if addressed or properly addressed, would defeat or call into question the right or claim asserted as in claims where the applicant has to demonstrate he or she acted with or without adequate knowledge of a matter: see Thomason v Campbelltown Municipal Council (1939) 39 SR (NSW) 347; Hongkong Bank of Australia Ltd v Murphy [1993] 2 VR 419; Pickering v Edmunds (1994) 63 SASR 357. In other words the cases are ones in which, in the substantive proceeding brought, the privilege holder has put in issue the very advice received. We observe in passing that it is questionable whether advice can properly be said to be in issue in a proceeding merely because it may be relevant to an issue in it: see Rhone-Poulenc Rorer Inc v The Home Indemnity Company (3 rd Cir 1994) 32 F (3d) 851 at 863; save, perhaps, where the proceeding is between client and legal adviser and the advice is relevant to the adviser's defence of that proceeding: see Lillicrap v Nalder & Son [1993] 1 WLR 94; 1 All ER 724. 36 The Full Court in Rio Tinto said of this (at [53]-[54]): "... this correctly summarises the effect of previous authorities, such as Thomason, United States Surgical and Benecke . Referring to the observation of Kirby J in Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd [1996] HCA 15 ; (1996) 137 ALR 28 at 34; [1996] HCA 15 ; 70 ALJR 603 at 607; [1996] HCA 15 that a mere reference to legal advice will not amount to disclosure, the Spalvins court found that, for the most part, the ASC had done no more than this and had not, therefore, waived privilege. Although the Full Court was necessarily guided by the authorities prior to Mann , there is little, if anything, in the passage quoted above that would require modification to take account of Mann . It is plain enough that the majority in Mann also saw the 'issue waiver' cases as a species of waiver, to which the same basic principle applied. Their Honours' analysis in Spalvins emphasises, as does the majority in Mann , that waiver comes about because the privilege holder's conduct is inconsistent with the continued confidentiality of the communication because he or she has put in issue the character or contents of the communication in pursuing a right or claim , or has created a situation where another party must reasonably do so by way of a defence." (Emphasis added)


case_text: The principles underlying issue waiver have been the subject of considerable discussion in judgments of this Court, most recently in the Full Court in Commissioner of Taxation v Rio Tinto Ltd [2006] FCAFC 86 ; (2006) 229 ALR 304 at [43] ff; see also DSE (Holdings) Pty Ltd v Intertan Inc [2003] FCA 384 ; (2003) 127 FCR 499; Telstra Corp Ltd v BT Australasia Pty Ltd (1998) 85 FCR 152. In light of the Full Court's decision it is unnecessary for me to consider the extent to which Federal Court decisions which pre-dated the decision of the High Court in Mann v Carnell [1999] HCA 66 ; (1999) 201 CLR 1 require some qualification. 35 What is notable of issue waiver cases, as the Full Court indicated in Rio Tinto (at [47]), is their fact specific character. Nonetheless, observations in that case on the joint judgment of Kiefel and Finn JJ in Spalvins are appropriate to the present matter. In Spalvins Kiefel J and I said (at 371-372): "The usual type of case said to illustrate issue waiver at common law is one in which, in order to establish a particular right, claim, or defence a party who previously has been legally advised, or has provided advice, needs to show that the advice so given did, or did not, have a particular character, for example that it was or was not negligent where the claim is for professional negligence against the adviser: see Kershaw v Whelan [1996] 1 WLR 358; that it was not based on full information or was not meaningful, in an undue influence claim: see Inche Noriah v Shaik Allie Bin Omar [1929] AC 127 at 130-131; see also Bester v Perpetual Trustee Co Ltd [1970] 3 NSWR 30 and Brusewitz v Brown [1923] NZLR 1106 or that it did not address or properly address a matter which, if addressed or properly addressed, would defeat or call into question the right or claim asserted as in claims where the applicant has to demonstrate he or she acted with or without adequate knowledge of a matter: see Thomason v Campbelltown Municipal Council (1939) 39 SR (NSW) 347; Hongkong Bank of Australia Ltd v Murphy [1993] 2 VR 419; Pickering v Edmunds (1994) 63 SASR 357. In other words the cases are ones in which, in the substantive proceeding brought, the privilege holder has put in issue the very advice received. We observe in passing that it is questionable whether advice can properly be said to be in issue in a proceeding merely because it may be relevant to an issue in it: see Rhone-Poulenc Rorer Inc v The Home Indemnity Company (3 rd Cir 1994) 32 F (3d) 851 at 863; save, perhaps, where the proceeding is between client and legal adviser and the advice is relevant to the adviser's defence of that proceeding: see Lillicrap v Nalder & Son [1993] 1 WLR 94; 1 All ER 724. 36 The Full Court in Rio Tinto said of this (at [53]-[54]): "... this correctly summarises the effect of previous authorities, such as Thomason, United States Surgical and Benecke . Referring to the observation of Kirby J in Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd [1996] HCA 15 ; (1996) 137 ALR 28 at 34; [1996] HCA 15 ; 70 ALJR 603 at 607; [1996] HCA 15 that a mere reference to legal advice will not amount to disclosure, the Spalvins court found that, for the most part, the ASC had done no more than this and had not, therefore, waived privilege. Although the Full Court was necessarily guided by the authorities prior to Mann , there is little, if anything, in the passage quoted above that would require modification to take account of Mann . It is plain enough that the majority in Mann also saw the 'issue waiver' cases as a species of waiver, to which the same basic principle applied. Their Honours' analysis in Spalvins emphasises, as does the majority in Mann , that waiver comes about because the privilege holder's conduct is inconsistent with the continued confidentiality of the communication because he or she has put in issue the character or contents of the communication in pursuing a right or claim , or has created a situation where another party must reasonably do so by way of a defence." (Emphasis added)


case_text: The principles underlying issue waiver have been the subject of considerable discussion in judgments of this Court, most recently in the Full Court in Commissioner of Taxation v Rio Tinto Ltd [2006] FCAFC 86 ; (2006) 229 ALR 304 at [43] ff; see also DSE (Holdings) Pty Ltd v Intertan Inc [2003] FCA 384 ; (2003) 127 FCR 499; Telstra Corp Ltd v BT Australasia Pty Ltd (1998) 85 FCR 152. In light of the Full Court's decision it is unnecessary for me to consider the extent to which Federal Court decisions which pre-dated the decision of the High Court in Mann v Carnell [1999] HCA 66 ; (1999) 201 CLR 1 require some qualification.


case_title: Telstra Corp Ltd v BT Australasia Pty Ltd (1998) 85 FCR 152


case_text: The principles underlying issue waiver have been the subject of considerable discussion in judgments of this Court, most recently in the Full Court in Commissioner of Taxation v Rio Tinto Ltd [2006] FCAFC 86 ; (2006) 229 ALR 304 at [43] ff; see also DSE (Holdings) Pty Ltd v Intertan Inc [2003] FCA 384 ; (2003) 127 FCR 499; Telstra Corp Ltd v BT Australasia Pty Ltd (1998) 85 FCR 152. In light of the Full Court's decision it is unnecessary for me to consider the extent to which Federal Court decisions which pre-dated the decision of the High Court in Mann v Carnell [1999] HCA 66 ; (1999) 201 CLR 1 require some qualification. 34 Given that the privilege issue arises here on a pre-trial motion it is governed by the common law of legal professional privilege, not by the provisions of the Evidence Act 1995 (Cth). Issue waiver, a form of implied waiver of privilege, is governed by the principle of "inconsistency" stated in the majority judgment of the High Court in Mann v Carnell at [29]: "Waiver may be express or implied. Disputes as to implied waiver usually arise from the need to decide whether particular conduct is inconsistent with the maintenance of the confidentiality which the privilege is intended to protect. When an affirmative answer is given to such a question, it is sometimes said that waiver is 'imputed by operation of law'. This means that the law recognises the inconsistency and determines its consequences, even though such consequences may not reflect the subjective intention of the party who has lost the privilege ... What brings about the waiver is the inconsistency, which the courts, where necessary informed by considerations of fairness, perceive, between the conduct of the client and maintenance of the confidentiality; not some overriding principle of fairness operating at large." 36 The Full Court in Rio Tinto said of this (at [53]-[54]): "... this correctly summarises the effect of previous authorities, such as Thomason, United States Surgical and Benecke . Referring to the observation of Kirby J in Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd [1996] HCA 15 ; (1996) 137 ALR 28 at 34; [1996] HCA 15 ; 70 ALJR 603 at 607; [1996] HCA 15 that a mere reference to legal advice will not amount to disclosure, the Spalvins court found that, for the most part, the ASC had done no more than this and had not, therefore, waived privilege. Although the Full Court was necessarily guided by the authorities prior to Mann , there is little, if anything, in the passage quoted above that would require modification to take account of Mann . It is plain enough that the majority in Mann also saw the 'issue waiver' cases as a species of waiver, to which the same basic principle applied. Their Honours' analysis in Spalvins emphasises, as does the majority in Mann , that waiver comes about because the privilege holder's conduct is inconsistent with the continued confidentiality of the communication because he or she has put in issue the character or contents of the communication in pursuing a right or claim , or has created a situation where another party must reasonably do so by way of a defence." (Emphasis added) 38 I would add the following which is of some present importance given the first respondent's oral submissions. As the High Court emphasised in Mann v Carnell , it is inconsistency, not some overriding principle of fairness operating at large that governs implied waiver. 39 I reject the first respondent's contention. 40 This contention can be disposed of shortly. Mr Gurtler has disclosed the fact of a particular instruction having been given - a fact, moreover, which would reasonably be inferred if no such disclosure had been made from the later filing of a motion to join Mr Turnbull. No disclosure was made of the actual content of the communication made or of any advice given in consequence of it. If a disclosure of this variety could result in the loss of privilege by the calling into question of why the particular procedural step it involved had been taken, the basis of the privilege itself would in my view be seriously weakened. 41 All that the affidavit did is to indicate the nature of the instruction given. It did not reveal the basis of, the terms of, or a "version of": cf Mann v Carnell at [28] the communication. Mr Gurtler has not acted in a way which is inconsistent with the maintenance of the confidentiality which the privilege protects. 42 Finance Now's contention is that there is a prima facie basis for alleging that the substantial purpose of advice provided by Williams & Hughes in respect of which privilege is claimed, was advice to Hillcrest for the purpose of Hillcrest conducting the litigation for its own benefit. 43 The prima facie basis relied upon to demonstrate that the advice was to Hillcrest are: (a) the litigation funding agreement and, in particular, the two retainers both of which showed Hillcrest as a client and able to give instructions; and (b) the list of privileged documents shows that, subject to limited exception, Williams & Hughes received correspondence regarding the 31 July 2006 email and the proposed joinder of Mr Turnbull, from Hillcrest rather than Mr Gurtler himself.


case_text: I set out earlier Mr Gurtler's affidavit evidence concerning his proposed joinder of Mr Turnbull. While his evidence related to the fact that he gave instructions to Williams & Hughes to apply to have Mr Turnbull joined and that instruction was acted upon he did not either expressly or impliedly refer to, let alone put in issue, the character or contents of any communications made to, or by, Williams and Hughes. While Finance Now has put in issue the reasons why Mr Gurtler proposed to join Mr Turnbull and Mr Gurtler has sought to answer that, he has not done so in a fashion which could reasonably relate his reasons for the decision, explicitly or implicitly, to communications made in the lawyer-client relationship. Thus he has not engaged in conduct which is inconsistent with the maintenance of the confidentiality of lawyer-client communications. Whatever was the substance of the communications made by Williams & Hughes to Mr Gurtler and Mr Van Noort which related to the decision to join Mr Turnbull and which are listed in Mr Gurtler's affidavit, there is on the material before me no reasonable grounds for believing that legal advice contributed to that decision: cf Southern Equities Corporation Ltd (in liq) v Arthur Anderson & Co (1997) 70 SASR 166 at 175-176. 58 It has been put on behalf of Mr Gurtler that while the email should neither have been couched in the terms it was nor have been sent at all, all it involved was a sharp practice and demonstrated a lack of commercial probity: cf Southern Equities Corporation at 174. The email itself indicated that the accounts had been analysed and the conclusion arrived at from that analysis (i.e. the accounts were "cracked"). It also indicated that the stated conclusion were, in Mr Van Noort's view, supported by the bank statements. This, it is said, is not an allegation of fraud knowingly raised without any basis. A sufficient basis had been given at that stage the matter was not as yet the subject of a pleading and that was enough to dispel the allegation of deliberately improper purpose. 59 My own view is that the email was a disreputable and inflammatory vehicle through which to make imputations against Mr Hambrett and, by implication, Mr Turnbull. This said, the email does not have the particular character ascribed to it by Finance Now. It cannot be said that it lacks any disclosed and proper basis for its core allegation "the accounts are a complete and total fabrication". On this I agree with the submissions made by Mr Gurtler. Yet it is upon the supposed lack of such a basis that the challenge to the claim of legal professional privilege has been made. Reliance, as Finance Now places, on the apparent regularity of the accounts on their face as a foundation for asserting there were prima facie grounds for saying there was no proper basis for the allegations of fraud, simply ignores the basis of the allegation being made. I equally agree that, at the time the allegation was made, i.e. prior to the pleading of the alleged fraud, the basis given for the allegation was sufficient to dispel the assertion that it lacked foundation. Whether it proves to be correct or not is not of present concern. 60 I cannot in the circumstances see why Mr Gurtler's alleged failure to withdraw the allegation is in any way of assistance to Finance Now. Nor do I consider he can relevantly be faulted for present purposes for not disavowing the sharp and unauthorised practice of his agent. There is no material before me suggesting Mr Gurtler knew of, and condoned that practice. While, as a matter of reasonable commercial standards, one may have expected some reassurance from Mr Gurtler of appropriate behaviour in "the Federal court action" an action in any event subject to judicial management and scrutiny the lack of this is not, in the circumstances, suggestive of the improper purpose alleged.


case_text: Before dealing directly with the first respondent's contention there is one matter to which I need refer concerning the characterisation of Gurtler-Hillcrest relationship for the purposes of legal professional privilege. It relates to common interest privilege. Having regard to their relationship inter se in light of the funding agreement and the common retainer, and of their common interest in the successful prosecution of the litigation and in advice given in relation thereto, I am satisfied that a possibly distinctive form of common interest privilege exists between them in relation to lawyer-client communications in the Gurtler proceedings: on common interest privilege see generally Farrow Mortgage Services Pty Ltd (in liq) v Webb (1996) 39 NSWLR 601 at 609 ff; Patrick v Capital Finance Corporation (Australasia) Pty Ltd (2004) 211 ALR 272 at [17]-[19]; Cross on Evidence, 25-265 (Aust ed). I do not, for present purposes, consider it appropriate to characterise their individual interests as selfish and potentially adverse to each other: cf Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd (1995) 37 NSWLR 405 at 409-410. Rather, while each stands to gain differentially from the litigation, their interests are nonetheless common in that their individual interest came together in the successful prosecution of it. 49 I have described the common interest as possibly distinctive for this reason. It is well accepted that while, normally, all holders with a privilege based on common interest must concur in waiving it, fairness can require that disclosure by one holder of common interest privilege can have effect as a waiver by all: Farrow Mortgage Services Pty Ltd (in liq) , at 608; Patrick , at [23]-[29]. In the case of funded litigation, where the party who waives the litigation is the applicant or respondent in the proceedings, that waiver may well as of course bind the litigation funder, whether or not it has consented to the waiver. It is unnecessary that I express a concluded view on this.


case_title: Patrick v Capital Finance Corporation (Australasia) Pty Ltd (2004) 211 ALR 272


case_text: The Full Court in Rio Tinto said of this (at [53]-[54]): "... this correctly summarises the effect of previous authorities, such as Thomason, United States Surgical and Benecke . Referring to the observation of Kirby J in Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd [1996] HCA 15 ; (1996) 137 ALR 28 at 34; [1996] HCA 15 ; 70 ALJR 603 at 607; [1996] HCA 15 that a mere reference to legal advice will not amount to disclosure, the Spalvins court found that, for the most part, the ASC had done no more than this and had not, therefore, waived privilege. Although the Full Court was necessarily guided by the authorities prior to Mann , there is little, if anything, in the passage quoted above that would require modification to take account of Mann . It is plain enough that the majority in Mann also saw the 'issue waiver' cases as a species of waiver, to which the same basic principle applied. Their Honours' analysis in Spalvins emphasises, as does the majority in Mann , that waiver comes about because the privilege holder's conduct is inconsistent with the continued confidentiality of the communication because he or she has put in issue the character or contents of the communication in pursuing a right or claim , or has created a situation where another party must reasonably do so by way of a defence." (Emphasis added) 48 Before dealing directly with the first respondent's contention there is one matter to which I need refer concerning the characterisation of Gurtler-Hillcrest relationship for the purposes of legal professional privilege. It relates to common interest privilege. Having regard to their relationship inter se in light of the funding agreement and the common retainer, and of their common interest in the successful prosecution of the litigation and in advice given in relation thereto, I am satisfied that a possibly distinctive form of common interest privilege exists between them in relation to lawyer-client communications in the Gurtler proceedings: on common interest privilege see generally Farrow Mortgage Services Pty Ltd (in liq) v Webb (1996) 39 NSWLR 601 at 609 ff; Patrick v Capital Finance Corporation (Australasia) Pty Ltd (2004) 211 ALR 272 at [17]-[19]; Cross on Evidence, 25-265 (Aust ed). I do not, for present purposes, consider it appropriate to characterise their individual interests as selfish and potentially adverse to each other: cf Ampolex Ltd v Perpetual Trustee Co (Canberra) Ltd (1995) 37 NSWLR 405 at 409-410. Rather, while each stands to gain differentially from the litigation, their interests are nonetheless common in that their individual interest came together in the successful prosecution of it.


case_text: As to the instruction of lawyers, the funding agreement provided that instructions in the proceedings were to be given by Mr Gurtler, not by Hillcrest: see cl 4. However and despite the "no oral modification" clause in the agreement, it was open to Mr Gurtler and Hillcrest to vary this if they so wished: see GEC Marconi Systems Pty Ltd v BHP Information Technology Pty Ltd [2003] FCA 50 ; (2003) 128 FCR 1 at [213] - [227] . I would note, though, that the funding agreement probably did not preclude Mr Gurtler's use of the agency of Hillcrest in giving instructions in any event. 51 What is clear on the material before me is that, whether or not Hillcrest has acted in strict accordance with the written terms of the funding agreement, the manner of his communication with Williams & Hughes was acquiesced in by Mr Gurtler. This is made clear in his affidavit verifying the list of documents produced. He designedly, as a matter of convenience, had Mr Van Noort deal directly with the lawyers to confirm his instructions or to comment upon their advice in order to enable the lawyers to further advance his case. It is unsurprising that he adopted this course given that as between them Mr Van Noort, as a lawyer, was likely to be more able to make forensic choices than Mr Gurtler: cf Fostif NSWCA at [137]. 52 The 31 July email was one Mr Van Noort should never have sent. Nonetheless, on its face, and for the purposes of the Finance Now's present contention, it purports to have been in furtherance of the common interests of Mr Gurtler and Hillcrest. Mr Gurtler may have been unaware of its contents. Still he authorised Mr Van Noort's contact with Mr Hambrett. Whatever complaint Mr Gurtler may have had of his agent's conduct a matter between himself and his agent to which Finance Now was a stranger the email itself provides no basis for suggesting that Van Noort was acting other than in Gurtler's, hence their common, interest in the matter.