case_text: appellant arrived in Australia on 4 March 1998 and applied for a protection visa on 2 April 1998. The appellant lodged an extensive and detailed typewritten statement with his application, prepared by his migration agent based upon instructions given to the agent by the appellant, in which he explained why he left Bangladesh; the fear he held of what might happen to him should he return; the reasons for that fear; the groups who might harm him; and, why the authorities in Bangladesh might not be either able or willing to protect him. The Minister's delegate on 16 April 1998 refused to grant him a protection visa. On 11 May 1998, the appellant applied to the Tribunal for review of that refusal. The appellant was invited to attend an oral hearing before the Tribunal on 1 May 2000. The appellant said he would attend that hearing. The hearing was postponed to 21 June 2000. The appellant attended the postponed hearing and gave oral evidence in support of his claims. On 23 April 2001, the Tribunal wrote to the appellant regretting the delay in finalising a review of the delegate's decision to refuse a protection visa. The Tribunal said in its letter that a decision would be forthcoming within a few weeks and further said that if any new information relevant to his claims was available, appropriate documents should be submitted to the Tribunal in English. The Tribunal attached to its letter documents reflecting independent evidence obtained by the Tribunal after the hearing on 21 June 2000 which was to be considered by the Tribunal in reaching its decision. The appellant was given an extension of time to 21 May 2001 to provide any response and did so on 21 May 2001. On 9 October 2001, the Tribunal affirmed the decision of the Minister's delegate. That decision was published on 30 October 2001 and set aside by Federal Magistrate Smith ( S142 of 2003 v Minister for Immigration & Anor [2007] FMCA 582) on 30 March 2007. That proceeding had a long history commencing with an Order nisi in the High Court of Australia on 17 April 2003 and remittal of the proceeding to the Federal Court of Australia and then to the Federal Magistrates Court of Australia. Federal Magistrate Smith concluded that the Tribunal had denied the appellant natural justice in not putting to him for comment matters thought by the Tribunal to be relevant in reaching its decision namely, the impact for the appellant of the election in October 2001 of the Bangladesh Nationalist Party ("BNP") to government and the loss of government by the Awami League (although the Awami League had stepped aside according to interim arrangements in August 2001). Federal Magistrate Smith also noted that the Tribunal in its reasons had made an error of fact by making references to claims made by the appellant concerning the intimidation in Bangladesh of his father, by Awami League supporters, by describing those events as references to the appellant's grandfather. Accordingly, Federal Magistrate Smith quashed the Tribunal's decision and made an order directing the Tribunal to determine the appellant's application for review according to law. The Tribunal constituted by a different member embarked upon a reconsideration of the appellant's application and on 20 July 2007 the appellant gave oral evidence before the Tribunal. On 22 August 2007, the Tribunal wrote to the appellant inviting him to comment upon information that the Tribunal considered would be the reason or at least a part of the reason for affirming the decision under review. That letter was an extensive letter of seven pages sent to the appellant pursuant to s 424A of the Migration Act . The letter called for comments by 14 September 2007. On 4 September 2007, the appellant wrote to the Tribunal advising that he was unable to provide a response by 14 September 2007. He said that he would require evidence from members of the Freedom Party in Bangladesh with whom he said he had been associated and that he would require an extension of three months' time to collect the necessary documents to enable him to respond. The appellant said that he was communicating with the President of the Freedom Party, Colonel Faruk, who as at 4 September 2007, was under arrest awaiting the carrying out of the death penalty by the Bangladeshi government. The appellant said that was seeking evidence from Colonel Faruk. The file copy of the letter is endorsed with a handwritten note by the Tribunal member signed and dated 13 September 2001 by which an officer of the Tribunal is directed to advise the appellant by telephone and in writing that no extension would be granted. On 13 September 2007, the Tribunal wrote to the appellant advising him that his request had been considered carefully but that a decision had been reached not to grant an extension of time. On 18 October 2007, the Tribunal advised the appellant that a decision would be handed down on 6 November 2007. On 1 November 2007, the appellant wrote to the Tribunal advising that he had received a letter from the Freedom Party Leader on 31 October 2007 by facsimile. A copy of that letter was attached to the appellant's letter. The appellant asked the Tribunal to consider that evidence prior to handing down its decision. The appellant also told the Tribunal in that letter: There is nothing to response or make any comments on the information sought from me in the tribunal's letter dated 22 August 2007 because the information and incidents happened long 13 years ago and general human being may forgot various issues. There is nothing contradict for a fair minded observer to consider my fear of persecution in my home country Bangladesh. [emphasis added] The Tribunal in reaching its decision published on 6 November 2007 considered the appellant's letter of 1 November 2007 and the enclosure. Background facts put to the Tribunal


case_outcome: cited

case_text: the extent that the appellant calls upon this Court to re-examine the underlying merits of the Tribunal's decision or consider "afresh" the decision reached by the Tribunal, it simply cannot do so. If the Tribunal misconceived the question to be addressed in conducting its review or failed to correctly identify the elements of the law to be applied or failed to exercise the jurisdiction conferred upon it by failing to examine the central evidence relied upon by the appellant as a basis for his contended well-founded fear of persecution or failed to comply with s 424A of the Migration Act , a basis for review by this Court of the Tribunal's decision on grounds of jurisdictional error, arises. Otherwise, at least so far as this case is concerned in the context of the appellant's claims, he simply seeks a review by this Court of the underlying merits of the administrative decision of the Tribunal as an exercise of executive power. It is not open to this Court to undertake that task (see Minister for Immigration and Ethnic Affairs v Wu Shan Liang & Ors [1996] HCA 6 ; (1996) 185 CLR 259 at 272 per Brennan CJ, Toohey J, McHugh J and Gummow J adopting the observations of Brennan J in Attorney-General (NSW) v Quin (1990) 170 CLR 1 at 35 and 36). The question to be determined is whether there is error on the part of the Tribunal in the exercise of its review jurisdiction not error in the sense of whether a different decision might or could have been reached as a matter of decision-making, concerning the various facts put before the Tribunal in support of the protection visa application.


case_title: Attorney-General (NSW) v Quin (1990) 170 CLR 1


case_title: Re Minister for Immigration and Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 ; (1999) 168 ALR 407

case_text: is clear from a consideration of the Tribunal's reasons that detailed consideration was given to the claims made by the appellant in the documentation lodged in support of his protection visa application of 2 April 1998 and the oral evidence given in support of his application at each Tribunal hearing (21 June 2000 and 20 July 2007). The Tribunal having evaluated that material identified a number of inconsistencies which it describes as significant. It was open to the Tribunal to weigh the impact of the perceived inconsistencies and the appellant's explanation of them. The Tribunal was not satisfied that a loss of memory and the suffering of stress provided a compelling explanation for the inconsistencies. The Tribunal accepted that the passage of time might affect an individual's capacity to recall all relevant details relating to the particular claims. However, the Tribunal was not satisfied that this explanation was an answer to the inconsistencies the Tribunal identified. The conclusion that the appellant could not be believed in the light of those inconsistencies and that the appellant was not reliable and thus his claims were untrue represents a finding of fact as to credibility, squarely within the fact-finding role of the Tribunal ( Re Minister for Immigration & Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 ; (1999) 168 ALR 407 per McHugh J at [67]). Plainly, the Tribunal's findings were open to it for the reasons identified by it. There is no error of law or jurisdictional error on the part of the Tribunal in reaching those conclusions. In reaching its decision on 2 November 2007 the Tribunal was plainly influenced by the inconsistencies it identified between the detailed statement of facts and circumstances lodged by the appellant with his application for a protection visa on 2 April 1998 and oral evidence given before the Tribunal, particularly on 20 July 2007. That evidence consisted of the appellant's recollection on that day of events that had occurred throughout his life but particularly events from 1994 until his departure from Bangladesh to Australia in March 1998. The oral evidence also consisted of the appellant's recollection or lack of recollection of events that he described in his detailed statement of 2 April 1998 concerning the events surrounding the death of his father's brother (step-brother) and events of harassment of his father which were said to have resulted in his becoming almost crippled in 1989. By 20 July 2007, 9 years had elapsed since the formulation of his written statement of 2 April 1998, 34 years had elapsed since the events of 1973 when his father was said to have been jailed and treated badly and 18 years had elapsed since the events in 1989 when his father was said to have been almost crippled by a beating. Although it is not clear from the written statement precisely when the appellant says his uncle was killed, it seems to have occurred after August 1995 and probably after mid-1997 when, according to the appellant, contrived criminal charges were brought against the appellant. In describing why authorities would not be able to protect him he said in his written statement: If the protection and other facilities from the authority would [be] available in Bangladesh my uncle would not be killed brutally and the killers would not move around freely. Accordingly, by the time the appellant gave evidence on 20 July 2007, either 12 years or 10 years had elapsed since the events concerning the contended brutal killing of his uncle had taken place.


case_text: appellant says that the Tribunal failed to comply with s 424A(1)(a) of the Migration Act by relying on information not put to the appellant and not discussed with the appellant in reaching its decision. That contention fails to identify the information relied upon by the Tribunal and not put to the appellant. In that sense, the claim or ground of appeal is lacking any content at all. There is simply no information identified by the appellant which would fall within s 424A(1). The Tribunal is not required to put its reasoning process to the appellant or the content of its proposed reasons to be published, to enable the appellant to comment before making the decision ( SZBYR & Anor v Minister for Immigration and Citizenship & Anor [2007] HCA 26 ; (2007) 235 ALR 609 per Gleeson CJ, Gummow, Callinan, Heydon and Crennan JJ at [17]). In any event, the Tribunal by its letter of 22 August 2007 put to the appellant the series of inconsistencies about which it was concerned. However, all of that information derived from material put by the appellant to the Tribunal.


case_text: appellant also contends that the Tribunal relied upon independent country information and to the extent that the appellant rests his belief that the Tribunal contravened s 424A(1) because it failed to provide details of that information to him, it is clear that the Tribunal has no obligation to put independent country information to him under s 424A(1)(a) as that information is information "not specifically about [the appellant]" and is simply "about a class of persons of which [the appellant] is a member" and is thus within the exception in s 424A(3)(a) ( Minister for Immigration and Multicultural and Indigenous Affairs v NAMW & Ors [2004] FCAFC 264 ; (2004) 140 FCR 572 per Beaumont J at [66] to [70]; per Merkel and Hely JJ at [123] to [138]). In any event, the Tribunal put to the appellant independent country information relating to formation of the Liberal Party and noted the inconsistency between that information and the appellant's evidence as to when and how he became involved with the Freedom Party. The appellant also contends that the Tribunal failed to provide him with details of "the derivation of adverse evidence which might affect a consideration of whether the information is reliable". That failure was said to be a contravention of s 424A(1)(b) which is an obligation imposed upon the Tribunal to ensure, as far as is reasonably practicable, that the appellant understands why the information is relevant to the review and the consequences of the information being relied upon in affirming the decision under review. The Tribunal's letter of 22 August 2007 makes very clear the identified inconsistencies, the Tribunal's concern about those inconsistencies and the consequences for the review of the delegate's decision should the Tribunal rely upon the inconsistencies in forming a view about the appellant's credibility. There is no basis in the claim that the Tribunal, in electing to issue its letter of 22 August 2007, failed to properly draw these matters to the appellant's attention. The appellant by his notice of appeal contends that Federal Magistrate Cameron erred by incorrectly interpreting the relevant law and incorrectly applied the relevant law to the facts. There is simply no content to the ground of appeal and no demonstrated error on the part of Federal Magistrate Cameron.


case_outcome: referred to

case_text: On 14 June 2006, I delivered reasons for judgment and ordered that there be summary judgment for the applicant against the respondents: Nokia Corporation v Cellular Line Australia Pty Ltd [2006] FCA 726 (" Nokia "). I assume familiarity with those reasons. At [61] I noted that: "At the hearing, I suggested to the parties that they might turn their minds to whether or not costs should be equally proportioned between the respondents. It seemed to me that the third and fourth respondents had not seriously contested the summary judgment motion; and that this should be reflected in any costs order. I also noted, and counsel for Nokia agreed, that the third and fourth respondents were alleged to have engaged in a lower volume of infringing conduct than the first and second respondents. I proposed to hear the parties on the matter of costs after delivering these reasons." I ordered that the parties file written submissions on costs. The disposition of costs now falls for determination. 12 The second respondent is a manager of the first respondent. In Nokia at [56], I found that no other person plays an active role in the first respondent's business. I accept the applicant's submission that, in these circumstances, any costs order against these respondents should bind them jointly and severally. 13 Aside from the close link between the first and second respondents, there are no other links between the respondents. The businesses of the third and fourth respondents are totally independent. Therefore, I find that costs should be apportioned amongst the respondents upon the basis the applicant has proposed. 14 As a starting point, I accept the evidence of Mr Merrick concerning the proportion of the costs attributable to each respondent. These figures were based on his review of the applicant's files. Mr Merrick's estimates are also commensurate with my sense of the scale of the case against each of the respondents. Therefore, I find it appropriate to order that the first and second respondents should bear 60% of the costs of the proceeding. Similarly, I would order that the third respondent pay 20% of the costs of the proceeding.


case_text: The applicant submitted, first, that costs should follow the event. Citing Gladstone Park Shopping Centre Pty Ltd v Ross Wills (1984) 6 FCR 496, the applicant claimed that there were no special circumstances that warranted departing from the general rule. 3 With respect to apportionment, the applicant relied on an affidavit sworn by Luke Andrew Merrick on 23 June 2006. Mr Merrick states that he maintained three separate files in relation to this proceeding. One file related to the first and second respondents and the other files related to the third and fourth respondents respectively. Mr Merrick said that he had reviewed the time recording and disbursement records maintained in respect of each of these files and that, based on this review, he estimated that the applicant's costs are properly attributable as follows: (1) 60% in respect of the first and second respondents; (2) 20% in respect of the third respondent; and (3) 20% in respect of the fourth respondent. 4 The applicant also submitted that, as the Court has found that the second respondent is the guiding mind of the first respondent, any order for costs made against those parties should bind them jointly and severally.


case_text: A successful litigant is ordinarily entitled to an award of costs: see, e.g., Oshlack v Richmond River Council [1998] HCA 11 ; (1998) 193 CLR 72 at 97 per McHugh J (dissenting in result) and 120-1 per Kirby J. In this case, I have ordered summary judgment against the respondents. Thus, absent special circumstances, the respondents should pay the applicant's costs. 9 Whilst I am aware of the third respondent's position, he has not advanced any justification, which, as a matter of law, would permit a departure from the general rule as to costs.


case_text: As noted already, the fourth respondent argued that there should be no costs ordered against him because he admitted selling counterfeit products and because the case against him could have settled. I am also not satisfied, however, that there are sufficient grounds for departing from the general rule with respect to the fourth respondent. It is clear from the evidence that the applicant sought to place the fourth respondent on notice that proceedings might be filed. It may well be that, after further negotiations, settlement could have been reached between the applicant and the fourth respondent. The fourth respondent has not, however, alleged and shown that the applicant rejected an offer of compromise. Thus, the principles of Calderbank v Calderbank [1975] 3 All ER 333 do not apply. While the fourth respondent's admissions, which were made after the institution of the proceedings, may be relevant as to what costs should be ordered against him (see [15] below) these admissions are not sufficient to avoid a costs order altogether. 11 The first and second respondents have not contended that costs should not be awarded against them according to the ordinary rule. I see no reason why they too should not pay costs. The remaining issue, therefore, is apportionment.


case_outcome: considered

case_text: It is a question of fact for the Court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark should be restrained ( Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51 ; (1937) 58 CLR 641 ( "Australian Woollen Mills" ) per Dixon and McTiernan JJ at 658). 67 In Australian Woollen Mills at 658 Dixon and McTiernan JJ in a joint judgment explained: In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight. 68 In arguing that its use of the words "Chatswood BBQ King" in their context did not constitute the use of a sign or mark that is deceptively similar to the Trade Mark, the respondent placed particular reliance on the following differences between the logo of the Chatswood restaurant and the Trade mark: (i) the inclusion of the word "Chatswood"; (ii) the absence of the "crown" device; (iii) the absence of any stylisation of the words; (iv) the absence of words in which letters are separated by periods; (v) the inclusion of Chinese characters generally and certain Chinese characters in particular; (vi) the emphasis on the particular Chinse character which is stylised in a circle; (vii) the use of capital letters in the word "KING"; (viii) the absence of periods between the letters "BBQ"; (ix) the different font of the English lettering; (x) the arrangement of signage in two lines; and (xi) the distinctive colour scheme of red on a yellow background. 69 The above factors would be of significance were it appropriate to compare the marks side by side. However, as mentioned above, it is not appropriate to do so. I am required first to form a view as to the impression produced on the minds of customers and potential customers by the Trade Mark including by the pronunciation of words in the mark. It is then necessary for me to make a judgment as to the likelihood that the form of the respondent's logo would cause them to form the mistaken belief, at a time when the logo is not before them, that the respondent's logo is the Trade Mark. I am to be concerned with the usual way in which ordinary people behave. I should disregard those with high perception or habitual caution and also those of exceptional carelessness or stupidity.


case_text: As Crennan J observed in Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 at [34] , the test enunciated by Kitto J in the Shell Co case has been adopted many times including by the Full Court in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192 where, at 209-214, Sackville J conveniently collected the authorities. Crennan J at [35] explained: The test involves consideration of the context in which the allegedly infringing use occurs. This can encompass factors such as the positioning of the sign, the type of font, the size of words or letters and the colours which are used, as well as how the sign is applied to advertising materials or the packaging of the goods in relation to other features: for example, see the analysis of Emmett J in Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 at [46] - [48] with respect to the use of the term "MaxClean" used on toothbrushes. 61 In Beecham Group Plc v Colgate-Palmolive Pty Ltd (2005) 66 IPR 254 at [48] Emmett J observed: The prominence and positioning of the MaxClean sign on the packaging of the toothbrush and in promotional material, together with the font size, styling, colour and shading of the MaxClean sign, suggests even greater significance than the "Colgate" brand. Other products, of both Colgate and its competitors, position distinguishing names that are properly characterised as sub-brands in the same place as the MaxClean sign appears in relation to Colgate on the packaging and leaflet. The distinctive styling, colouring and shading has a graphic element akin to a logo. The distinctive blue and white colouring, with a halo effect of white shading around the words, is also indicative of use as a trade mark, rather than as a merely descriptive phrase. Although the 'C' appears in upper case, there is no space between the 'X' and the 'C.' That suggests an invented word intended for use as a trade mark. 62 Except in respect of the "polo" style shirt, I consider the critical issue for present purposes to be the respondent's use of its logo as a whole, not its use of the words "Chatswood BBQ King". The distinctive colouring and layout of the respondent's logo and the prominence with which it is displayed at and near the restaurant's entrance and on the restaurant's menu cover are such that, in my view, a person seeing them would conclude that the respondent used its logo to distinguish its food and services from those offered by others. 63 I conclude that the respondent's logo generally, and because of its obvious derivation from that logo, the sign on the "polo" style shirt, each has the character of a brand which the respondent uses for the purpose of indicating a connection in the course of trade between the respondent's restaurant and related services and the respondent. I am therefore satisfied that the respondent uses each of its logo and the sign on the "polo" style shirt "as a trade mark".


case_text: Section 41(6) of the Trade Marks Act was intended to ameliorate the test under the 1955 Act and, in particular, to allow registration of a trade mark that was shown to be distinctive in fact of the applicant's goods or services (see Blount Inc v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 at 55-56). 46 Having regard to such of the evidence identified in [92]-[100] below as existed as at 24 October 2004, I am satisfied that, as at that date, because of the extent to which the applicant, or its predecessor in title, had used the Trade Mark before that date, it did distinguish the goods and services of the applicant. I am so satisfied notwithstanding that the evidence discloses that, as at 29 October 2004, there were other restaurants and businesses in the greater Sydney area and elsewhere that were trading under names that included the words "BBQ King".


case_text: Under the Trade Marks Act 1955 (Cth) ("the 1955 Act") it was clear that certain marks could never be regarded as entitled to registration even though they were, as a matter of fact, plainly distinctive of the applicant's goods ( Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 515-516; British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 305). Kitto J observed with respect to the 1955 Act in Clark Equipment Company v Registrar of Trade Marks at 513: ... It is undeniable that a mark which, considered by itself, would seem unadapted to that purpose [ie distinguishing the applicant's goods from those of others] ... may yet come by actual use or by virtue of special circumstances to be so closely associated with the applicant's goods in the minds of the relevant public that its apparently disqualifying signification is effectually obscured, and distinctiveness in fact is thus achieved. But although such a measure of practical success with the mark may well provide a sufficient foundation for a passing-off action, the Trade Marks Act does not accept it as necessarily sufficient for the special protection which it affords to registered trade marks.


case_text: As Crennan J observed in Christodoulou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 156 FCR 344 at [34] , the test enunciated by Kitto J in the Shell Co case has been adopted many times including by the Full Court in Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192 where, at 209-214, Sackville J conveniently collected the authorities. Crennan J at [35] explained: The test involves consideration of the context in which the allegedly infringing use occurs. This can encompass factors such as the positioning of the sign, the type of font, the size of words or letters and the colours which are used, as well as how the sign is applied to advertising materials or the packaging of the goods in relation to other features: for example, see the analysis of Emmett J in Beecham Group Plc v Colgate-Palmolive Pty Ltd [2005] FCA 838 at [46] - [48] with respect to the use of the term "MaxClean" used on toothbrushes.


case_title: Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511


case_text: I am persuaded that it is appropriate for an order to be made restraining the respondent from using the name "Chatswood BBQ King" as the name of, or otherwise in connection with, the respondent's restaurant. However, I am not persuaded that the restraint should extend to the use of the individual words and phrases "BBQ King", "BBQ Kings", "BBQ", "King" and "Kings". Rather, in my view, the appropriate approach is that exemplified by the injunction ultimately made in Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 which was discussed in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 575. In Turner v General Motors (Australia) Pty Ltd the defendants were restrained "from using the words 'General Motor', or 'General Motors' in connection with any business then or thereafter carried on by them or any of them without clearly distinguishing such business from the business carried on by General Motors (Australia) Pty Ltd and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendants was or were identical or connected with the business of the plaintiff and also from representing or holding out to the like effect". As to the appropriate form generally of an injunction, including an injunction in an intellectual property case, see Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110 at [42] - [49] .


case_text: In Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 355 Gummow J, sitting as a member of the Full Court, observed that: Within the passing off action, there is an accommodation and adjustment of three competing interests. First that of the plaintiff in protecting the commercial advantages flowing from his efforts and investment, secondly that of the defendant in being free to attract purchasers for his goods and services by what appears to him to be an effective means, and thirdly that of consumers in selecting between competing goods and services without the practice upon them of misrepresentations. 106 Anakin and Gold Kings' claim for damages for infringement of trade mark fails (see [52] above). For this reason claims made by Anakin and Gold Kings for damage to the value of the Trade Mark and for loss of the ability to licence others to use the Trade Mark are not of themselves sustainable. This is probably of limited significance in view of my finding that the claims for damages for passing-off and pursuant to s 82 of the Trade Practice Act succeed. The tort of passing off is concerned to prevent unfair competition and thus damage to a trader's goodwill ( Conagra Inc v McCain Foods (Aust) Pty Ltd per Lockhart J at 308). Section 82 provides for the recovery by a person who suffers loss or damage by conduct of another person done in contravention of s 52 or s 53 of that Act of the amount of that loss or damage. The following consideration of the damage allegedly suffered by Anakin and Gold Kings is limited to their claims for passing off and under the Trade Practices Act . 107 Anakin and Gold Kings alleged that they have lost the opportunity to make a profit on the sale of cooked meat to the respondent's restaurant. The evidence does not support this allegation. There is no reason to conclude that if the respondent had not engaged in conduct inconsistent with the norms established by s 52 and s 53 of the Trade Practices Act it would have purchased cooked meat from Anakin or Gold Kings or one of them. 108 Mrs Chau gave evidence that in about June 2005 she and her son had discussed opening BBQ King restaurants in Epping and Chatswood. She did not indicate whether she envisaged that these suburban restaurants would be operated by one or other of the applicants or, like the BBQ King Express outlets, by PAAC Group Pty Ltd which is not an applicant in this proceeding. No other director of an applicant gave evidence on this topic. It is conceded by the applicants that no steps have been taken by any of them to open a BBQ King restaurant in Epping. I am therefore sceptical about Mrs Chau's suggestion that a BBQ King restaurant has not been opened in Chatswood because to do so would create confusion with the respondent's restaurant. I am not satisfied that conduct of the respondent has resulted in Anakin or Gold Kings, or either of them, losing the opportunity to open additional BBQ King restaurants. 109 The applicants submitted that it can reasonably be inferred that the custom of the Chatswood restaurant includes the custom of persons who know of the BBQ King restaurant and, being under a misapprehension that the Chatswood restaurant is associated with the BBQ King restaurant, eat at the Chatswood restaurant rather than travel to the city to eat at the BBQ King restaurant. I accept that this inference should be drawn. First, I am satisfied that the respondent decided to operate its restaurant under the name Chatswood BBQ King because it considered that by doing so it might benefit from the reputation of the BBQ King restaurant. I see no reason to assume that its judgment in this regard was not correct (see Conagra Inc v McCain Foods (Aust) Pty Ltd per Lockhart J at 345 and the cases there cited). The evidence adduced by the applicants from customers who assumed a connection between the BBQ King restaurant and the respondent's restaurant provides support for this approach. 110 Precise evaluation of the damage suffered by Gold Kings by reason of the respondent's conduct is impossible. As mentioned above, the respondent's restaurant opened on 25 September 2005. A comparison of Gold Kings' trading accounts for the years ending 30 June 2005 and 30 June 2006 reveal that both its trading income and its gross profit from sales enjoyed a modest increase in the financial year in which the respondent's restaurant opened. A comparable increase in gross profit from sales in comparison with the previous year had been achieved by Anakin in the financial year ending 30 June 2004. 111 The financial records of the respondent indicate that it has traded at a loss since opening its restaurant in Chatswood. It is, however, probably more significant for present purposes to concentrate on its gross profit on trading in the two years for which its financial records are available. Its trading statement for the year ending 30 June 2006 shows gross profit on trading of $234,146.33. Its trading statement for the year ending 30 June 2007 shows gross profit on trading of $270,954.36. I infer that its gross profit on trading for the year ending 30 June 2007 would probably have also shown a modest increase over the previous year and thus have been in the order of $300,000.


case_text: I interpolate that at [13]-[21] below I deal with the respondent's submission that the receipt into evidence of the Sale Agreement is prohibited by s 304(1) of the Duties Act 1997 (NSW) ("the 1997 Act "). It is sufficient here to record that, in my view, s 304(1) does not, as a matter of construction, do more than render an unstamped instrument that effects a dutiable transaction inadmissible to prove any fact giving the instrument its taxable character. I have reached this view after giving consideration to authorities concerning the equivalent prohibition in the English Stamps Acts. As the High Court observed in Dent v Moore [1919] HCA 11 ; (1919) 26 CLR 316 at 327-328, until 1891 the prohibition in the English Acts had used the language "admitted to be good, useful, or available in law or equity". In Matheson v Ross [1849] EngR 425 ; (1849) 2 H.L.C. 286 the House of Lords accepted that if the facts provided by the instrument were one which, even if it were stamped, would be foreign to its taxable character, the document could be used for that purpose. Although it may be a borderline situation, it seems to me that, to the extent that the Sales Agreement evidences Bar-B-Q King Restaurant Pty Ltd's ownership of the BBQ King restaurant as at the date of the Sale Agreement, it falls outside the terms of s 304(1).


case_text: In EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 I expressed the view that the terms of s 89 of the Trade Marks Act tend to suggest that s 88(1) does not vest a true discretion in a prescribed court. 48 Subsequently, in Health World Ltd v Shui-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478 Jacobson J at [203]-[205] observed: The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the court. In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see, for example, Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd (2000) 100 FCR 166 ; 51 IPR 1 ; [2000] FCA 618 at [97] ; Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 ; [2008] FCA 27 at [75] . Lahore observes at [57,155] that s 89 may be seen as codifying the case law on blameworthy conduct; accordingly, it deals with the circumstances in which a particular discretion may be exercised without detracting from the general discretion found in s 88(1). I propose to proceed on that basis. 49 Little guidance as to the proper application of s 88(1) can be obtained from Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 as no party argued in that case that s 88(1) did not vest a true discretion in a prescribed court. In Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 ; (2008) 75 IPR 102 at [75] Greenwood J said of s 87(1) of the Trade Marks Act: Section 87(1) confers a discretion on the court to order cancellation of the registration of the trade mark. That discretion is to be exercised according to its terms and, where appropriate, settled principle. The discretion is to be exercised subject to s 87(2) which identifies circumstances in which the court might decide not to make an order. Similarly, the court might by s 89 of the Act decide "not to grant an application under s 87" and therefore refuse to make an order which, is itself, an exercise of the discretion, if the registered owner satisfies the court that the ground relied on by the applicant "has not arisen through any act or fault of the registered owner". In terms, the discretion must not only be exercised taking account of ss 87(2) and 89 but having regard to the effect of s 25 on the right of the registered owner of the trade mark. It seems to me that all these matters must be weighed carefully in the balance to determine whether the court ought to cancel the registration of a trade mark and, in consequence, extinguish rights conferred by the Act on the registered owner. The discretion is a true discretion in the sense that all the matters going to s 25 (the circumstances of this case) must be considered, the particular circumstances of the applicant, any relevant s 87(2) factors, the conduct of the registered owner and the effect upon the rights of the registered owner brought about by the operation of s 25. Some of these factors will weigh heavily as s 25, for example, has the applied effect of declaring that the registered owner has no exclusive rights. In that sense, the discretion may seem facultative only: EOS (Aust) Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 , per Branson J. However, the court is required to determine whether an order ought to be made or refused taking account of the identified considerations.


case_text: The respective financial records of Mempoll and Anakin provide support for Mr Yip's evidence that Mempoll did not sell the goodwill that it purchased from Bar-B-Q King Restaurant Pty Ltd, or any later generated goodwill in the BBQ King restaurant, to Anakin. As mentioned above, Mempoll's financial records for as late as 30 June 2006 continue to show as a non-current asset goodwill at cost in the amount of $283,490.00. However, the fact that Mempoll did not sell the goodwill to Anakin and continued to show that goodwill as an asset in its accounts is not, in my view, conclusive as to the ownership of that goodwill. In FCT v Murry [1998] HCA 42 ; (1998) 155 ALR 67 at [22] the majority of the High Court approved the observation of Barwick CJ in Geraghty v Minter [1979] HCA 42 ; (1979) 142 CLR 177 at 181 that "goodwill is not something that can be conveyed or held in gross: it is something that attaches to a business. It cannot be dealt with separately from the business with which it is associated". 40 The respondent contended that Anakin was not at the time of the application for registration (ie on 29 October 2004) the owner of the Trade Mark. As appears above, I am satisfied that as at 29 October 2004 the BBQ King restaurant business was owned and operated by Gold Kings and not by Anakin (see [32]). I am also satisfied that, notwithstanding the retention in Mempoll's accounts of the goodwill that it purchased under the Sale Agreement, as at 29 October 2004 Gold Kings owned the goodwill in the trade mark "BBQ King". The evidence makes plain that at this time Gold Kings had and exercised the right to conduct the BBQ King restaurant business "in substantially the same manner and by substantially the same means that [had previously] attracted custom to it" (see FCT v Murry at [23]). 41 I conclude that Anakin was not the owner of the Trade Mark at 29 October 2004. 42 As I am satisfied that Anakin was not the owner of the Trade Mark as at 20 October 2004 it is not strictly necessary for me to reach a conclusion on whether the Trade Mark was then capable of distinguishing the applicant's goods or services from the goods or services of other persons (s 41(2) of the Trade Marks Act ). However, lest the matter go further, I record that, if the issue of ownership is left to one side, I am satisfied that the Trade Mark is to be taken to have been capable of distinguishing the applicants' goods and services.


case_text: A reading s 35 of the 1920 Act in the context of the Act as a whole suggests that the word "may" is not intended to vest a discretion in the Chief Commissioner but rather that it indicates the circumstances in which the power is to be exercised ( Finance Facilities Pty Ltd v Federal Commissioner of Taxation [1971] HCA 12 ; (1971) 127 CLR 106 per Windeyer J at 134-135). As s 29 of the 1920 Act (the equivalent of s 304(1) of the 1997 Act ) makes plain, a failure by the Chief Commissioner to stamp a dutiable instrument in accordance with s 35 could cause serious harm to a party to that instrument and, indeed, to others. 18 I conclude that the stamp on the Sale Agreement upon which the applicant's rely is insufficient to allow me to conclude that the Sale Agreement is "duly stamped" within the meaning of s 304(1) of the 1997 Act ; it neither indicates that the instrument is not liable to duty nor that a specific amount of duty has been paid and the document is duly stamped. Nonetheless, as recorded above, I am satisfied that a cheque drawn by Mempoll in favour of the Office of State Revenue was sent to that office in intended payment of an amount of stamp duty in respect of the Sale Agreement. 19 No party advanced submissions touching on whether s 304(1) of the 1997 Act constrains the admissibility of evidence in the Federal Court (see s 79 of the Judiciary Act 1903 (Cth) and s 138 of the Evidence Act 1995 (Cth)). I shall therefore proceed on the assumption, but without so deciding, that the section does constrain the admissibility of evidence in this Court. Nonetheless I do not draw the conclusion that the Sale Agreement is inadmissible to prove the facts giving rise to its taxable character (ie the sale and purchase of the business of the BBQ King Restaurant). The applicants, by their counsel, have indicated that they are willing to transmit the instrument to the Chief Commissioner in accordance with arrangements approved by the Court (s 304(2)(a)). I will hear counsel as to appropriate arrangements in this regard. My present inclination is that an appropriate arrangement would be for the instrument to be transmitted to the Chief Commissioner together with a complete copy of these reasons for judgment.


case_text: The respective financial records of Mempoll and Anakin provide support for Mr Yip's evidence that Mempoll did not sell the goodwill that it purchased from Bar-B-Q King Restaurant Pty Ltd, or any later generated goodwill in the BBQ King restaurant, to Anakin. As mentioned above, Mempoll's financial records for as late as 30 June 2006 continue to show as a non-current asset goodwill at cost in the amount of $283,490.00. However, the fact that Mempoll did not sell the goodwill to Anakin and continued to show that goodwill as an asset in its accounts is not, in my view, conclusive as to the ownership of that goodwill. In FCT v Murry [1998] HCA 42 ; (1998) 155 ALR 67 at [22] the majority of the High Court approved the observation of Barwick CJ in Geraghty v Minter [1979] HCA 42 ; (1979) 142 CLR 177 at 181 that "goodwill is not something that can be conveyed or held in gross: it is something that attaches to a business. It cannot be dealt with separately from the business with which it is associated".


case_text: Subsequently, in Health World Ltd v Shui-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478 Jacobson J at [203]-[205] observed: The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the court. In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see, for example, Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd (2000) 100 FCR 166 ; 51 IPR 1 ; [2000] FCA 618 at [97] ; Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 ; [2008] FCA 27 at [75] . Lahore observes at [57,155] that s 89 may be seen as codifying the case law on blameworthy conduct; accordingly, it deals with the circumstances in which a particular discretion may be exercised without detracting from the general discretion found in s 88(1). I propose to proceed on that basis.


case_text: As I have concluded above, the phrase "BBQ King" does for a great many people identify the restaurant which operates under that name in Goulburn Street, Haymarket. Once the respondent chose to adopt a name so close to that of the Goulburn Street restaurant it came under an obligation to take care to ensure that its restaurant was adequately distinguished from it (see Kettle Chip Company Pty Ltd v Apand Pty Ltd [1993] FCA 546 ; (1993) 119 ALR 156 at 169 and the cases there cited). It did not do so. As noted above, by placing a geographic indicator "Chatswood" before the phrase "BBQ King", the respondent created a name apt to convey the message to an English speaking customer that its restaurant was the Chatswood branch or outlet of the BBQ King restaurant.


case_text: Subsequently, in Health World Ltd v Shui-Sun Australia Pty Ltd [2008] FCA 100 ; (2008) 75 IPR 478 Jacobson J at [203]-[205] observed: The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the court. In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see, for example, Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd (2000) 100 FCR 166 ; 51 IPR 1 ; [2000] FCA 618 at [97] ; Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 ; [2008] FCA 27 at [75] . Lahore observes at [57,155] that s 89 may be seen as codifying the case law on blameworthy conduct; accordingly, it deals with the circumstances in which a particular discretion may be exercised without detracting from the general discretion found in s 88(1). I propose to proceed on that basis. 49 Little guidance as to the proper application of s 88(1) can be obtained from Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 as no party argued in that case that s 88(1) did not vest a true discretion in a prescribed court. In Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 ; (2008) 75 IPR 102 at [75] Greenwood J said of s 87(1) of the Trade Marks Act: Section 87(1) confers a discretion on the court to order cancellation of the registration of the trade mark. That discretion is to be exercised according to its terms and, where appropriate, settled principle. The discretion is to be exercised subject to s 87(2) which identifies circumstances in which the court might decide not to make an order. Similarly, the court might by s 89 of the Act decide "not to grant an application under s 87" and therefore refuse to make an order which, is itself, an exercise of the discretion, if the registered owner satisfies the court that the ground relied on by the applicant "has not arisen through any act or fault of the registered owner". In terms, the discretion must not only be exercised taking account of ss 87(2) and 89 but having regard to the effect of s 25 on the right of the registered owner of the trade mark. It seems to me that all these matters must be weighed carefully in the balance to determine whether the court ought to cancel the registration of a trade mark and, in consequence, extinguish rights conferred by the Act on the registered owner. The discretion is a true discretion in the sense that all the matters going to s 25 (the circumstances of this case) must be considered, the particular circumstances of the applicant, any relevant s 87(2) factors, the conduct of the registered owner and the effect upon the rights of the registered owner brought about by the operation of s 25. Some of these factors will weigh heavily as s 25, for example, has the applied effect of declaring that the registered owner has no exclusive rights. In that sense, the discretion may seem facultative only: EOS (Aust) Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 , per Branson J. However, the court is required to determine whether an order ought to be made or refused taking account of the identified considerations.


case_title: Pepsico Australia Pty Ltd (t/as Frito-Lay Australia) v Kettle Chips Company Pty Ltd (1996) 135 ALR 192


case_text: For the following reasons the circumstances of this case do not render it necessary to determine the extent, if at all, to which the above authorities differ on the issue of the proper approach to the exercise of the power of a prescribed court to order that the Register be rectified. I am satisfied that the respondent is "an aggrieved person" within the meaning of s 88(1) as it is, as I have found, using as a trade mark a logo that is deceptively similar to the Trade Mark (see [55]-[75]). The respondent has applied by its cross-claim for an order that the Register be rectified by cancelling the registration of the Trade Mark on a ground identified in s 88(2)(a). That ground has been made out (see [41] above). In the circumstances it seems to me that the respondent is entitled to an order that the Register be rectified by cancelling the registration of the Trade Mark unless sufficient reason appears for leaving it there (see Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 per Kitto J at 11). For the reasons that follow I am not satisfied that sufficient reasons appear for leaving the registration in place. 51 The applicants' submissions on the issue of the Court's discretion under s 88(1) were premised on the assumption that if the Court were to find that Anakin was not the owner of the Trade Mark at the critical time, its finding would be that Mempoll was the owner of the Trade Mark. I have in fact concluded that Gold Kings was the owner of the Trade Mark at the critical time. Should that conclusion be wrong, it would seem necessary to conclude that the ownership of the Trade Mark remains with Mempoll as its financial statements suggest. It is therefore appropriate to read the applicants' submissions as set out below on the basis that the references to Mempoll should also, indeed should primarily, be understood as references to Gold Kings: The applicants submit that the following should be taken into account in the beneficial exercise of the Court's discretion not to cancel or remove the Trade Mark: (a) the applicants and the persons standing behind the applicants apprehended that Anakin's use of the Trade Mark entitled it to be registered as owner; (b) Mempoll did not object to the use of the Trade mark by Anakin, nor its application for registration of the Trade Mark; (c) substantially the same persons own and control each of Mempoll and Anakin; (d) there is no real public interest served in cancelling the registration; (e) there is no useful purpose to be served by removing the Trade Mark from the Register simply for the purpose of, in effect, compelling a fresh application to be made. The Trade Mark, newly registered, but with additional expense would remain within the same group of companies and persons and be used in relation to the same restaurant services. The Trade Mark as registered should be preserved as an established mark associated with a business that has existed for over 25 years and which is well known to the public. (footnotes omitted) 52 After giving the matter anxious consideration I have concluded that, having regard to the totality of the evidence before me, it is not appropriate to refrain from ordering that the Register be rectified by cancelling the registration of the Trade Mark. To do otherwise would, as it seems to me, be to allow the applicants to benefit from the "informal" way in which their affairs have been handled (see [35] above). Whether or not the applicants so intended, this informality has resulted, as the evidence suggests, in failures to comply with requirements of the Corporations Act and earlier legislation concerning the proper operation of companies (see Ch 2G of the Corporations Act ). It has also resulted in failures, as the evidence suggests, to comply with the requirements of the 1920 Act with, as I infer, appreciable loss of revenue to the State of New South Wales (see Part 3 of the 1920 Act ). The applicants did not offer any acceptable explanation of these failures.


case_text: At the same page his Honour noted that attempts to produce a definition of the tort which is both succinct and comprehensive have had mixed success. Nonetheless, both Lockhart and Gummow JJ in that case referred with approval to the following passage from the speech of Lord Oliver of Aylmerton in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499 in which his Lordship identified the elements that a plaintiff must prove in order to succeed: ... First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling and packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff. See also Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369.


case_text: For the purposes of the Trade Marks Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion (s 10). The use of the word "likely" does not import a requirement that it be more probable than not that the trade mark has that effect; it is sufficient that the probability of deception is finite and non-trivial ( Registrar of Trade Marks v Woolworths [1999] FCA 1020 ; (1999) 45 IPR 411 per French J at [43]).


case_text: In S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361-363 the Full Court restated a number of applicable principles where conduct claimed to be misleading or deceptive involves what is said to be a misrepresentation as follows: There will be no contravention of s 52 unless the error or misconception which occurs results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: .... Conduct will be misleading and deceptive if it leads into error: .... Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deceiving regardless of whether it is less or more than 50%: .... Conduct causing confusion or uncertainty in the sense that members of the public might have cause to wonder whether the two products or services might have come from the same source is not necessarily misleading and deceptive conduct: .... In a case such as the present an applicant must establish that it has acquired the relevant reputation in the name or get-up such that the name or get-up has become distinctive of the applicant's business or products: .... Conduct may be misleading or deceptive or likely to mislead or deceive notwithstanding that the corporation said to engage in that conduct acted honestly and reasonably and did not intend to mislead or deceive: .... Nevertheless, where the intention to mislead or deceive is found, it logically would be likely that a court would more easily find that the conduct was misleading or deceptive: .... It is unnecessary in the present case to consider the question whether a finding of intention to mislead or deceive can have relevance in other ways to issues such as remedies. In many cases it will be necessary to consider the class of persons to whom the representation was directed: .... There is no proposition of law to the effect that intervention from erroneous assumption between conduct and misconception destroys the necessary chain of causation with the consequence that the conduct cannot be regarded as likely to mislead or deceive: .... The test of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective one for the Court to determine. It is ultimately a question of fact.


case_text: The relevant test was articulated by Kitto J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407 (the " Shell Co case"). It is helpful to understand the context in which his Honour articulated the test. Esso Standard Oil was the proprietor of registered trade marks for a caricature of a man described as a "humanised oil drop". It alleged that the Shell Company had infringed its registered trade marks in two advertising television films which included an animated oil-drop character. An issue for determination on the appeal was whether the Shell Company's use of the oil-drop character constituted a use of the characters as a trade mark. At 425 Kitto J said: ... the question becomes whether, in the setting in which the particular pictures referred to were presented, they would have appeared to the television viewer as possessing the character of devices, or brands, which the appellant was using or proposing to use in relation to petrol for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the petrol and the appellant. Did they appear to be thrown onto the screen as being marks for distinguishing Shell petrol from other petrol in the course of trade? 59 Kitto J concluded that the oil-drop character had not been used by the Shell Company "as a trade mark". His Honour noted that the connection in the films between the oil-drop man and the petrol he symbolised was a connection "limited by the purpose of the occasion". He observed that the only purpose in the appearance of the oil-drop man was to unite a quickly moving series of pictures which conveyed a message about the qualities of Shell petrol. Kitto J considered it "quite certain" that no viewer would pick out any scene including the oil-drop man and say: "There I see something that the Shell people are showing me as being a mark by which I may know that any petrol in relation to which I see it used is theirs."


case_text: In determining whether the respondent's logo is deceptively similar to the Trade Mark I have accorded particular weight to the following factors. First, the respondent's logo adopts the whole of the word element of the Trade Mark. The pronunciation of that element will sound identical in each case. A comparison based on sound is of particular relevance in this case because restaurant custom is commonly based on word of mouth recommendation. Secondly, the word element of the Trade Mark is a prominent feature of the respondent's logo. Although it is appropriate to have regard to the impression produced by the respective marks in their entirety, some features of a mark can be more striking and memorable than others ( Starr Partners Pty Ltd v Dev Prem Pty Ltd (2007) 71 IPR 459 at [22]). To a customer or potential customer literate only, or principally, in English, the English word element of each mark will be of dominant significance. The additional English word in the respondent's mark (ie "Chatswood") is apt to be understood as a geographic indicator. For this reason it is likely to create in a potential customer's mind the impression of connection with the Trade Mark rather than serve as a distinguishing feature; that is, it is likely to be understood as suggesting that this is the Chatswood outlet or branch of the owner of the Trade Mark. This aspect of the respondent's sign assumes particular significance because of the reputation of the registered mark which is discussed below ( Starr Partners Pty Ltd v Dev Prem Pty Ltd at [24]). 71 I accept the applicants' submission that the use of different fonts and, in the one case, upper case lettering, does not avoid the likelihood of deception. The differences are not marked and the words convey the same message. That message is not to be determined by giving separate consideration to "BBQ" and "King" but rather by giving consideration to them as a composite phrase. 72 I conclude that the respondent's logo is deceptively similar to the Trade Mark. It necessarily follows that the sign on the "polo" style shirt is deceptively similar to the Trade Mark.


case_text: I accept that the likelihood of Chinese speaking customers being misled into believing that there is a business relationship between the BBQ King restaurant and the Chatswood BBQ King restaurant is significantly less high than in the case of English speaking customers. However, I do not accept that the relevant section of the public by reference to which the question of whether the respondent's conduct is misleading or deceptive falls to be tested is Chinese speaking residents of Chatswood, or indeed, Sydney (see Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202-203). The relevant section of the public in this case is potential customers of the goods and services of the two restaurants and includes in each case significant numbers of English speaking customers. The evidence concerning the actual customers of the BBQ King restaurant is that they are predominantly English speaking. The evidence concerning the actual customers of the respondent's restaurant is that there are "more" Chinese than English speakers. I did not gain the impression from this evidence that English speaking customers do not form an appreciable part of the clientele of the respondent's restaurant. 104 In my view the evidence supports a finding that there is a real chance or possibility of customers being misled or deceived by the name of the respondent's restaurant. Indeed, as noted above, I consider it more likely than not that the name of the respondent's restaurant was selected because Mr Liang appreciated the possibility that customers might be led to believe that the restaurant was associated with the BBQ King restaurant.


case_title: Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166


case_text: I am persuaded that it is appropriate for an order to be made restraining the respondent from using the name "Chatswood BBQ King" as the name of, or otherwise in connection with, the respondent's restaurant. However, I am not persuaded that the restraint should extend to the use of the individual words and phrases "BBQ King", "BBQ Kings", "BBQ", "King" and "Kings". Rather, in my view, the appropriate approach is that exemplified by the injunction ultimately made in Turner v General Motors (Australia) Pty Ltd [1929] HCA 22 ; (1929) 42 CLR 352 which was discussed in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 575. In Turner v General Motors (Australia) Pty Ltd the defendants were restrained "from using the words 'General Motor', or 'General Motors' in connection with any business then or thereafter carried on by them or any of them without clearly distinguishing such business from the business carried on by General Motors (Australia) Pty Ltd and from using any name calculated to lead persons to believe that the said business or businesses or any business of the defendants was or were identical or connected with the business of the plaintiff and also from representing or holding out to the like effect". As to the appropriate form generally of an injunction, including an injunction in an intellectual property case, see Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110 at [42] - [49] .


case_title: Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41 ; (2006) 150 FCR 110


case_text: At the same page his Honour noted that attempts to produce a definition of the tort which is both succinct and comprehensive have had mixed success. Nonetheless, both Lockhart and Gummow JJ in that case referred with approval to the following passage from the speech of Lord Oliver of Aylmerton in Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491 at 499 in which his Lordship identified the elements that a plaintiff must prove in order to succeed: ... First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling and packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff. See also Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 369. 91 In Vieright Pty Ltd v Myer Stores Ltd each of the appellant and the respondent sold clothing under the trade mark "First". At 373 the Full Court observed: In the present kind of case, it will usually be the situation that if a passing off claim is established, it will be so by reason of a finding of a misrepresentation of the type discussed in the authorities. Such a misrepresentation will usually constitute a contravention of s 52, and possibly s 53 , of the Trade Practices Act . Conversely, if no misrepresentation is found, it will usually follow that the Trade Practices Act claim will also fail. 92 As mentioned above, the BBQ King restaurant was established under that name in about 1981. Since at least about 1985 the name "BBQ King" has been prominently displayed on a sign outside the restaurant. It has operated under that name in Goulburn Street continuously since that time. Since about 1989 the restaurant has been open from 10:00am to 2:00am seven days a week 365 days a year. It serves between 250 and 350 meals every day. It caters for individual customers through to large groups. Its clientele is drawn from the Sydney CBD, greater Sydney and visitors, including international visitors, to Sydney. A large proportion of its customers are English speaking. 93 The evidence discloses that since about 1986 the restaurant has used the following logo, albeit with some small variation in the presentation of the "duck on the plate" image, on its letterhead, facsimile transmission cover page, menus including take-away menus and business cards.


case_text: The first issue for determination under s 122(1)(b) is therefore whether the respondent used its mark or sign in good faith. In Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 at [43] Bennett J explained: ... The requirement for the use to be in good faith imports an absence of intention to make use of the goodwill which has been acquired by another trader. The resemblance between the registered trade mark, of which the first respondent was aware and the name of the first respondent does not prevent the use being bona fide provided that there was an honest belief that no confusion would arise and if there were no intention of wrongfully diverting business .... Evidence of such an honest belief is necessary to establish "bona fide use"... (citations omitted) 78 I accept that the name of the respondent's restaurant was suggested by Yu Xi Liang, a director and shareholder of the respondent. Mr Liang gave affidavit evidence that he suggested the name "Chatswood BBQ King" for the following reasons: (a) Chatswood BBQ Kitchen has previously operated at the site of the respondent's restaurant; (b) the location was therefore already known as an outlet for Cantonese roast meats; (c) the word "King" described the superior and top quality of the respondent's BBQ and in Chinese the character for "King" can also be used to convey "excellence", "top quality" or "the best"; and (d) the word "Chatswood" identified the location of the business. 79 The credibility of Mr Liang's above evidence was seriously undermined by his cross-examination. Under cross-examination Mr Liang eventually accepted that he had chosen the name of the respondent's restaurant before identifying the Chatswood site as the location of the restaurant. Although he initially claimed that he had chosen the English name of the restaurant "as per request from the council", when challenged he conceded that he had chosen the respondent's name before he spoke with the council. I consider it appropriate to approach Mr Liang's assertion that "[f]or us this English name is very casual" with scepticism.


case_text: This application is made under s 1337H of the Corporations Act . It is not suggested that there is a residual common law discretion to stay proceedings brought in defiance of the exclusive jurisdiction clause and that concession by Hood is, in my opinion, correct: see World Firefighters Games Brisbane, 2002 v World Firefighters Games Western Australia Inc [2001] QSC 164. The existence of an exclusive jurisdiction clause is a relevant consideration in terms of the discretion to transfer, and in some cases is a very weighty matter: see Slater & Gordon Pty Ltd v Porteous [2005] VSC 398.


case_title: Slater & Gordon Pty Ltd v Porteous [2005] VSC 398


case_text: There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood & Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency. 6 In Crosbie , a judge of this court decided that the Court could not be satisfied that a transaction is voidable under s 588FE simply by reason of a consent judgment in which the admissions are made, because the requirement of "satisfaction" in the section is a condition precedent to the exercise of power. His Honour considered that New South Wales Supreme Court decisions in Cadima Express and S J P Formwork were patently wrong, and that it was essential to prove to the court's satisfaction the "jurisdictional fact" which underpinned the exercise of power. It is important to note that at [4], His Honour pointed out that the plaintiffs in that case did not have the consent of the Commissioner for Taxation, and that in my view is an important and different circumstance to those of the present case.


case_text: There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood & Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency.


case_title: Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985


case_outcome: distinguished

case_title: Howarth v Adey [1996] 2 VR 535

case_text: This case bears no resemblance to the circumstances of State of Queensland & Anor v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146, where an amendment was refused by the trial judge six months prior to the hearing. The High Court considered in that case the refusal was an error because it gave undue weight to the principles of case management, as opposed to the overriding importance of ensuring justice is done as between the parties. Nor do the present circumstances bear any comparison with those in Howarth v Adey [1996] 2 VR 535 where an amendment was sought in a medical negligence case involving a jury after seventeen days of hearing. That case involved a wrongful exercise of discretion because an irrelevant concession, namely the availability of a right of appeal, was wrongly taken into account in the view of the Full Court of the Supreme Court of Victoria.


case_title: State of Queensland & Anor v JL Holdings Pty Ltd [1997] HCA 1 ; (1997) 189 CLR 146


case_title: S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604


case_outcome: approved

case_title: Wanted World Wide (Australia) Limited v Commissioner of Taxation [2004] FCA 1063

case_text: There is some conflict in the authorities as to whether the Court should act on the parties' admissions by making a finding of insolvency without any final determination on the evidence as to the correctness of that determination; see Crosbie, in the matter of Trollope Silverwood & Beck Pty Ltd (In Liquidation) v Commissioner of Taxation [2003] FCA 922 , Cadima Express v Deputy Commissioner of Taxation [1999] NSWSC 1143 ; (1999) 33 ACSR 527, Dean-Willcocks v Commissioner of Taxation (No 2) [2004] NSWSC 286 , Hall and another (as liquidators of Reynolds Wines Ltd) v Commissioner of Taxation [2004] NSWSC 985 , S J P Formwork (Aust) Pty Ltd (in liq) v Deputy Commissioner of Taxation (2000) 34 ACSR 604 and Wanted World Wide (Australia ) Limited v Commissioner of Taxation [2004] FCA 1063. In the present case, there is no dispute between any of the parties who have been served as to insolvency. 7 The approach of His Honour in Crosbie has been considered and rejected in the other cases referred to above. In Wanted World Wide, Lander J of this court refused to follow Crosbie and distinguished the authorities relied on in that case. At [5], His Honour sets out the reasoning and governing considerations in favour of his conclusion that s 588FF allows orders to made by consent without the necessity to make a finding after examination of all the evidence. He considered that the court was entitled to act on the admissions and be satisfied that an order could be made. His Honour placed particular emphasis on the practical advantages of enabling an order to be made on the admissions of the parties before the court, in order to avoid a waste of time, effort, resources and expense. His Honour considered that the Court is entitled to act on admissions and be satisfied that an order should be made. He considered that the construction given in Crosbie operates to defer parties coming to a significant agreement with the liquidator to avoid costs. He referred especially to the significant expenditure to procure an expert's reports to establish undisputed insolvency at the expense of unsecured creditors. In that case, His Honour acted on the admissions and made the order.


case_outcome: related

case_text: This is an application pursuant to O 62 r 4(2)(c) of the Federal Court Rules that certain costs ordered to be payable by the respondents in this matter be assessed as a gross sum. The orders were made on 27 February 2006 ( Australian Competition and Consumer Commission v Global Prepaid Communications Pty Ltd (in liq) [2006] ATPR 42-103 , [2006] FCA 146 ; Australian Competition and Consumer Commission v Global Prepaid Communications Pty Ltd (in liq) (No 2) [2006] ATPR 42-104 , [2006] FCA 157). Order 42 provided that the third, fourth, fifth, sixth and seventh respondents pay the applicant's costs of the proceedings including all reserved costs, except those costs provided by order 43. Order 43 provided that the third and fourth respondents pay the applicant's costs of the hearing on 10, 25 and 26 May 2005.


case_title: Australian Competition and Consumer Commission v Global Prepaid Communications Pty Ltd (in liq) (No 2) [2006] ATPR 42-104 , [2006] FCA 157


case_text: There is the complication of intervening bankruptcies. It is submitted that this situation falls within the category discussed by the majority of the High Court in Foots v Southern Cross Mine Management Pty Ltd [2007] HCA 56 ; (2007) 241 ALR 32 , (2007) 5 ABC(NS) 419 at [35], [36] and [67]. As here, the order was made before bankruptcy ensued and, therefore, even though not quantified, the debt is provable in bankruptcy. However, that means that, generally speaking, one cannot pursue a matter in court against the debtor once bankruptcy ensues. The appropriate thing to do is to file a proof of debt. Recognising that this is likely to be the position, the applicant seeks leave to proceed against both of the trustees. I am satisfied that both trustees have knowledge of this application. One, as I have said, has appeared and does not oppose leave; the other, having been given notice of the application, responded that he did not propose to appear in the matter. Those trustees have not formally been made parties to the proceeding. Counsel submits that leave should be granted and the matter proceed today for a number of reasons. I should note that the lump sum order which I propose to make will be made in relation to the fifth and sixth respondents in any event and, thus, I have had to consider the merits of the matter. 7 To lodge a proof of debt in each of the bankrupt estates would, first of all, require a proof of debt to be prepared. Secondly, it would require the trustee to consider that proof of debt and that would require some investigation. All of that seems to me to be time and money which should not be spent. It is unlikely to be recovered from anybody and, as the Court has had to do the work, it seems pointless to have it repeated. None of the relevant parties appear to oppose the orders. It seems to me that there will be unnecessary duplication if leave is not granted. Furthermore, the quantification of costs, the question that arises here, is very much a matter for the Court and Court officials and those with the knowledge of the way these things are done. The trustees in bankruptcy would have no particular qualifications to assess the situation. So as a matter of substance, I am satisfied that the orders should be made as sought. 8 I have raised with counsel the question of the trustees not being parties to the litigation. The grant of leave to proceed against the named individual respondents is probably sufficient for the technicalities to be observed. It is then for the trustees to deal with the result which ensues. If this occasions any difficulty, or if there is any need for any further order, I will grant special liberty to apply to the trustees of the bankrupt estates of the third and fourth respondents.


case_outcome: followed

case_text: The principles which govern the application and the circumstances under which this rule is to be applied were dealt with by Lehane J in Hadid v Lenfest Communications Inc [2000] FCA 628 particularly at [22] [27]; and by Sackville J in Seven Network Ltd v News Ltd [2007] FCA 2059 , particularly at [16] and [25] [34]. I need not repeat those principles here. I am satisfied that Ms Vine-Hall's assessment is in accordance with the principles reflected in those passages from those judgments. I am therefore satisfied as to the merits of the application.


case_title: Seven Network Ltd v News Ltd [2007] FCA 2059


case_outcome: applied

case_title: Jess v Scott (1986) 12 FCR 187

case_text: first issue was the factor of expiration of eight years since her Honour's decision was handed down in this Court, which was acknowledged by counsel for the applicant to be 'an extraordinarily long time'. Discussion was undertaken by the parties of the implications of the Full Federal Court decision in Jess v Scott (1986) 12 FCR 187 made on 4 November 1986, where it was held by a Full Federal Court (Lockhart, Sheppard and Burchett JJ) that an extension of time should be granted in the context of that litigation, and in relation to which, because of a misunderstanding on the part of the solicitor for the intending appellant as to the date of delivery of the judgment sought to be appealed, the notice of appeal was filed and served on the day next following the last day limited by the Federal Court Rules for appeal. The Federal Court Rules then required, and still do, the establishment of 'special reasons' for leave to file and serve an appeal outside the requisite period of 21 days (Order 52 Rule 15). In the joint judgment of the Full Court at 195-196 in Jess , the following appears: 'What is needed to justify an extension of time... is that there be shown a special reason why the appeal should be permitted to proceed, though filed after the expiry of twenty-one days... the expression "special reasons" is intended to distinguish the case from the usual course according to which is the time twenty-one days. But it may be so distinguished (not necessarily will, for the rule gives a discretion) wherever the Court sees a ground which does justify departure from the general rule in the particular case. Such a ground is a special reason because it takes the case out of the ordinary. We do not think that the use of the expression "for special reasons" implies something narrower than this. ... In the circumstances of the present case... we formed the view that there were plainly special reasons which justified the making of the order sought.' The special reasons sought here to be so established by the applicant were purportedly founded upon the history of the steps which were taken by him up to the time of the hearing before O'Connor J back in June 1998. In any event, it was conceded by counsel for the applicant that the principle of Anshun estoppel may apply, but it was contended nevertheless that there were special circumstances in this case which would permit me to exercise my discretion to allow the matter to proceed, including the asserted circumstances that '[t]he applicant did not have legal representation at the hearing' before her Honour, at least for the reason that he 'could not afford legal representation', and further that there will be 'no disadvantage to the Minister from the re-agitation of these matters'. The second issue raised and sought to be addressed by the applicant related to the explanation for the delay. The applicant explained that at all times since June 1998, he had been involved in court proceedings for the purpose of challenging the decision of the Tribunal of 30 December 1997, and asserted that he had not delayed in progressing the court proceedings, although each proceeding has taken a long time to resolve due to factors beyond his control. I have not been presented with '... something very persuasive indeed to justify a grant of leave' , within the dicta cited in Jess , in order to appeal the decision of O'Connor J. The applicant's delay in applying for leave to appeal the decision of O'Connor J has been very lengthy in scope, falling of course just short of eight years. Moreover it is not without significance that the applicant decided in any event to pursue what the applicant evidently preferred or at least chose as another avenue of perceived redress by way of class action in another superior court of record. The pursuit of that other avenue having ultimately failed, I am unable to accept that there remains any viable alternative appellate redress, by way of resort to an application for an extension of time to appeal the judgment of this Court delivered virtually eight years ago. In my opinion, no special reason has been made out for leave to appeal the judgment of O'Connor J delivered on 10 June 1998, at least for the reason I have just indicted. Moreover and in any event, I have been unable to distil any conceivable error of law appearing in her Honour's reasons for judgment that might conceivably offer a viable prospect of success on any appeal, if leave for that purpose was to be granted. The present application for an extension of time must therefore be dismissed. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Conti. Associate: Dated: 14 August 2006 Counsel for the Applicant: B Zipser Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 29 June 2006 Date of Judgment: 14 August 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1042.html


case_text: support of the contention of counsel for the applicant on the issue of delay, I was referred to his involvement in the Muin and Lie class action, and the circumstance that in February 2004, in the context of proceedings S1174 of 2002 v Refugee Review Tribunal [2004] FCA 289 , Emmett J found at [29]-[30] as follows: '29. The second possible matter of prejudice was a concern that delay might be advanced as an answer to any claim for relief. The Minister has assured the Court that she will not make a submission in any future proceeding that there is no satisfactory explanation for the applicant's delay, from the time when the applicant was joined as a representative party in the High Court, to the time of refusal of an order nisi. Any delay from the time of the making of a decision by the Tribunal and the joinder of the applicant in the High Court proceeding would still remain to be explained, so would any delay from the time of refusal of an order nisi until the commencement of any fresh proceeding. 30. I do not consider that there would be any prejudice to the applicant or to any of the other applicants by the refusal of an order nisi. No such refusal would stand in the way of successful prosecution of any subsequent application for prerogative writ relief if properly commenced and particularised.' The applicant contended on that footing that 'this assurance given by the Minister's solicitor' applies in the present case. The Minister's response was that account needs to be taken of the context of the Minister's assurance, being the existence of about 700 applications for order nisi remitted from the High Court to the Federal Court in S1174 of 2002. The Minister submitted that 'the assurance that no submission would be made in any future proceedings that there was no satisfactory explanation for the applicant's delay from the time when the applicant was joined as a representative party in the High Court to the time of his Honour's judgment, was in respect of future first instance proceedings brought challenging the Tribunal's decision'. Assuming the foregoing explanations concerning involvement in the class action have some discrete basis in merit, the fact remains that the applicant's engagement in the class action occurred in the context of the unfavourable decision already entered against him by O'Connor J, and for whatever reasons of his own, he chose to leave the adverse findings by her Honour unchallenged by way of appeal, and to pursue whatever refugee status he might have in the context of that class action.


case_title: Rajaratnam v Minister for Immigration and Multicultural and Indigenous Affairs (2000) 62 ALD 73

case_text: as to that first ground for review, the applicant referred to Rajaratnam v Minister for Immigration and Multicultural Affairs (2000) 62 ALD 73 at [42]-[50], where a Full Federal Court was said by the applicant to have recognised that extortion may have dual motivations, one of which may be Convention based and the other not so. The applicant asserted that there was evidence that people such as the applicant may be targeted in the manner complained of, both because they have money and because they belong to a minority religion. By way of asserted illustration, the applicant pointed to the testimony of a witness that the applicant was '... at risk of being kidnapped and possibly killed if he returned to Bangladesh', and all that at the hands of 'people wanting money' because he 'belongs to a minority religion'. However the applicant acknowledged that he had testified by his statement to the Tribunal to the effect that he did not think he would have been kidnapped if he was not perceived as having money, but that so much did not derogate from the circumstance that people in his position were targeted in Bangladesh because they are 'perceived as having money', and also because they 'belong to minority religions'. It was contended by the applicant that the failure of the Tribunal to recognise that dual motivation gave rise to jurisdictional error on the Tribunal's part. It was contended by the applicant that Raphael FM 'saw some merit in the grounds [of appeal] in light of the decisions of the High Court in Ibrahim , and earlier in the Full Court in Rajaratnam , both of which decisions were of course handed down after O'Connor J's decision in June 1998. I was referred to the reasons for decision of Raphael FM in particular at [17], where the following appears: 'It may not be impossible for the applicant to obtain leave from the Full Bench of the Federal Court to appeal against her Honour's decision and to argue in that appeal that in the light of subsequent authorities her Honour may have been in error.' The expression ' may not be impossible ' hardly reflects a positive view as to existence of discernible merit. In any event the applicant contended that if I was to be '... uncertain whether or not to grant an extension of time, an intermediate position would be to allow the matter to proceed to a hearing before the Full Court on both the application for extension of time to appeal and the appeal'. There is considerable force in the Commissioner's contention that the combination of the factors of lengthy delay unexplained at least satisfactorily, together with an absence of demonstration of reasonable good prospects of success, should weigh sufficiently heavily against the applicant's application for an extension of time to appeal the decision of O'Connor J back in June 1998. Those proceedings constituted of course an attempted review of a Tribunal decision made on 30 December 1997 which was unsuccessful in the Federal Court.


case_text: applicant placed reliance in the context of this second ground upon the decision of the High Court in Minister for Immigration and Multicultural Affairs v Haji Ibrahim [2000] HCA 55 ; (2000) 204 CLR 1, which was said to stand as authority for the principle that persecution did not require 'systematic conduct' ; I was referred in that regard to the reasons for judgment of Gleeson CJ at [5], Gaudron J at [33], McHugh J at [99]-[101], Gummow J at [133]-[135], Kirby J at [193]-[194] and Callinan at [221]-[225]. The observation of McHugh J, who gave one of the two High Court judgments in favour of the putative but unsuccessful (in the view of the majority) refugee, spoke of that non-statutory notion as importing the idea of non-random. I am unable to identify in any event any viable issue arising in the context of the proceedings concerning any such non-statutory notion, much less any basis reflecting likelihood of error in relation to the foregoing finding of the Tribunal below, and no such error has been identified by the applicant.


case_title: Kalaba, Lazar v The Queen [1996] FCA 908

case_text: applicant referred to the unreported decision of Finn J in Kalaba, Lazar v the Queen [1996] FCA 908 where his Honour indicated what he considered to be the governing principle in the case of delay: 'For present purposes the approach I intend to take is that adopted... in Jones v The Queens and to ask: first, are the reasons the applicant has advanced for his delay sufficient to excuse or at least to explain his delay so as to justify allowing him to institute an appeal out of time? Secondly, has the applicant demonstrated that his appeal may have sufficient prospect of success to make it just that he should now be allowed to proceed with it?' The applicant also referred to the 'long time' it has taken 'each proceedings to resolve due to factors beyond his control', but I am unable to accord significance thereto in terms of it being a circumstance that would amount to a 'special reason' within Order 52 Rule 15(1) , it having been the applicant's implicit choice to pursue that purported perceived avenue of review of the Tribunal decision of 30 December 1997 rather than seek to appeal O'Connor J's longstanding decision. The third issue raised by the applicant concerned his prospects of success on the appeal by way of application for review of the decision of O'Connor J back on 10 June 1998. The applicant asserted that two grounds for review had been propounded to Raphael FM below, which I will now record and discuss.