case_text: Australia is a wholly owned subsidiary of Pioneer KK. The use of the marks indicates a connection in the course of trade with the registered proprietor of the marks, Pioneer KK. It cannot be said that the use of the marks by Pioneer Australia is somehow deceptive by indicating a different origin of the goods (see also E & J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) [2008] FCA 934 ; (2008) 77 IPR 69 at [102] ). The products sold by Pioneer Australia were created and supplied by or on behalf of Pioneer KK. That is, the quality control of manufacture was exercised by the Japanese company. The exercise by Pioneer KK of quality control over goods and services dealt with or provided in the course of trade by its subsidiary, Pioneer Australia, is sufficient for me to conclude that use of the Pioneer KK marks by Pioneer Australia was under the control of Pioneer KK and authorised by it. While the non-use applications filed by Pioneer Computers were defective insofar as the ground in s 92(4)(a) is concerned, I will briefly consider the issue of intention to use the Pioneer KK marks. I note that intention to use refers to intention as at the date of filing of the application for registration. Intention to use the Pioneer KK marks with respect to computers


case_outcome: cited

case_text: Computers relies upon the requirement under the Act and Regulations (s 27(3) of the Act and Regulations 4.4(2) and 4.4 (6)) which require a trade mark applicant to specify the goods and/or services in respect of which it is sought to register the trade mark and proscribes the use of expressions such as "all goods" or "all services"; the goods or services must be indicated by name. Pioneer Computers submits that it follows from s 100(1) of the Act, which requires that a trade mark owner establish use in relation to the particular goods and/or services for which removal is sought, that there is a clear policy not to allow use for one good or service to stand as use for another good or service even though they fall within a class or broad description ( Moove (No 2) at 272). Pioneer KK nominated the goods for which it sought and obtained registration. In the second Pioneer KK registration, the goods were specified by the general term "computer peripheral devices" followed by list of specific devices which differ from each other, for example, printers and keyboards. The specification thus encompasses the specific goods nominated and any goods that can be described as "computer peripheral devices" that are not otherwise specified. Pioneer Computers submits that Pioneer KK cannot, by establishing use on optical disc drives and jukeboxes, rely upon that use of the mark for the other goods encompassed by the general term "computer peripheral devices". Rather, it says that the term is residual and covers goods not otherwise specified in the trade mark registration. Pioneer Computers submits that DVD drives and DVD writers fall in a distinct niche market segment that is laser and optical drives which have been specifically provided for in the second Pioneer KK trade mark registration. It submits that Pioneer KK is not entitled to a monopoly for the additional term "computer peripheral devices" for which, it says, no use has been established. The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal ( E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005 ; (2008) 78 IPR 334 at [4] per Flick J). This is a hearing de novo and the parties have adduced evidence in this hearing directed to the exercise of discretion. As it happens, the date for consideration of the evidence is not determinative of the outcome. The evidence relied upon by Pioneer KK is of confusion during the relevant period, of convergence of computer and audio-visual technologies and of brand extension by other companies operating in the computer and audio-visual fields that was evident in that period and predicted at that time to continue. The evidence with respect to post-relevant period convergence and potential for confusion has simply validated that prediction. The facts relevant to the exercise of the discretion


case_text: expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal ( E & J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005 ; (2008) 78 IPR 334 at [4] per Flick J). This is a hearing de novo and the parties have adduced evidence in this hearing directed to the exercise of discretion. As it happens, the date for consideration of the evidence is not determinative of the outcome. The evidence relied upon by Pioneer KK is of confusion during the relevant period, of convergence of computer and audio-visual technologies and of brand extension by other companies operating in the computer and audio-visual fields that was evident in that period and predicted at that time to continue. The evidence with respect to post-relevant period convergence and potential for confusion has simply validated that prediction. The facts relevant to the exercise of the discretion


case_text: expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.


case_title: Hermes Trade Mark [1982] RPC 425

case_text: E & J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion: there had been no abandonment of the trade mark; the registered proprietors of the mark still had a residual reputation in the mark; there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; the registered proprietors were not aware of the applicant's sales under the mark. Pioneer KK says the first four factors are applicable in this case. Pioneer Computers says that the present case is not one for the proper exercise of discretion to allow the Pioneer KK marks to remain on the Register and that no sufficient reason appears or has been established for doing so in respect of the removal goods and the removal services. The relevance of s 101(4) of the Act to the exercise of the discretion in s 101(3) By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account. There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that '[c] urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register ' and that the amendment was for the purposes of clarifying the Registrar's discretion. Interestingly, the example that is given in the Bill is a registration for computer software goods where the business has specialised in the provision of a custom development of software systems service with the view that they are seen as closely related services and goods.


case_outcome: followed

case_text: Registrar accepted that while use of the Pioneer KK marks had been demonstrated on computer peripherals, no use had been shown on the remaining removal goods and the removal services within the relevant period and Pioneer KK could not establish circumstances that were an obstacle to the full use of the registrations. On the basis that it is not necessary for exceptional circumstances to exist before the Registrar may apply the power found in s 101(3) in favour of an opponent ( Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 223 ALR 27 at [98] per Lander J), the Registrar concluded that, despite non-use being established for a range of the removal goods and for the removal services, it was not viable to limit the registrations by removing the removal goods and the removal services from the Register. The basis for this was that the difference between computer goods on the one hand and audio, audio-visual and home entertainment products on the other does not enable the drawing of "fine lines" between those goods for which use was demonstrated and those the subject of non-use. The Registrar considered the evidence as to the likelihood of deception or confusion among consumers. She concluded that Pioneer KK had a significant reputation in the Pioneer KK marks and in the word "Pioneer". The Registrar took into account the time before the relevant period, when Pioneer KK produced and sold entire computer systems under the brand "Pioneer" and under the first Pioneer KK mark, although such sales were limited, as well as evidence as to its future plans for research and development of products that combine home entertainment and computing in one package. The Registrar concluded at [37] that it was not appropriate to make a distinction between the computers and associated products of Pioneer Computers and the audio, visual and electronic products of Pioneer KK. She concluded that there was a ' high likelihood of deception or confusion in the marketplace '. While recognising that Pioneer Computers had seemingly used PIONEER honestly for over 10 years, had goodwill in the computer marketplace and intended to continue to use the trade mark PIONEER in connection with goods and services unless prevented from doing so, the Registrar concluded that the public interest was best served by declining to amend the registrations. Rather, she concluded that the public interest was best served by retaining the registrations in total and preserving the established trade marks. In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show "exceptional circumstances". In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).


case_outcome: considered

case_text: expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. Without refining the breadth of the expression, Sackville J gave some examples of a person aggrieved in Kraft Foods at 113:


case_outcome: referred to

case_text: 114, his Honour referred to Lever Brothers, Port Sunlight Ltd v Sunniwite Products Ltd (1949) 66 RPC 84 where, in respect of a mark registered for soap, detergents and cosmetics, a manufacturer of a soapless detergent was not a person aggrieved in respect of the registration for cosmetics.


case_text: is not unreasonable, particularly in an area of technology the subject of rapid change, for an applicant for a trade mark to include within the class of goods for which the trade mark is registered, products which may not be able to be strictly described. The statement of goods should not be construed so narrowly that it fails to include goods clearly within the designated class that have not yet been developed. As was said in Magnavox (Aust) Pty Ltd's Trade Mark (1964) 34 AOJP 2075 at 2078, ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The general term "computer peripheral devices" as used is an appropriate term to describe the range of goods marketed by Pioneer KK in the areas of computer and optical technology, given the rate of change and advances in those technologies. Further, as the technology has changed and as it is used, some devices may be internally connected or externally connected to a computer. One example is the DVD drive in a larger or smaller notebook computer. It seems artificial to restrict the description of a category of goods on the basis of a distinction drawn by the definition where the distinction is not drawn in use of the term in the marketplace, where it depends upon the way in which the goods are used, sometimes idiosyncratically, and where the use of a particular device as an internal component or an externally connected device may change as the technology changes. In any event, for the reasons that follow in considering discretionary matters, the distinction is not determinative of the decision regarding whether or not to remove the removal goods from the registrations for the Pioneer KK marks. The specific inclusion of certain computer peripheral devices in the Pioneer KK trade mark registrations Pioneer Computers says that optical devices (including DVD-ROM drives and DVD writers) constitute a separate category of information technology products that comprise a niche market and that they should not be considered as satisfying the range of products encompassed by the general term "computer peripheral devices". As noted above, Pioneer Computers further argues that in the present case, the separate inclusion of various goods (including optical disc drives) in the second Pioneer KK trade mark registration means that these products are not encompassed by the term "computer peripheral devices" as used in the registration. In this case, the inclusion of computer peripheral devices in the description of the goods for which the second Pioneer KK mark was registered seems to have been as a "catch-all" and an expression to encompass goods yet to be developed and so yet to be specifically described. The Explanatory Memorandum does not really assist. Section 101(4) makes it clear that it has been inserted without any attempt to limit or qualify the discretion provided for in s 101(3). The Explanatory Memorandum itself speaks of "clarification". This can either recognise that s 101(4) expands the discretion or that it simply makes it clear which factors could already be taken into account under s 101(3). In my view, use of a trade mark on closely related goods or services could already be taken into account in exercising the discretion under s 101(3) in the unamended section. As I read s 101(3) , the discretion to be exercised is not limited. For the purposes of s 101(3) , account may be taken of use of the trade mark on closely related goods or services, even in cases commencing prior to the introduction of s 101(4). This has particular relevance in the case of goods that are at the forefront of technological change. Justice Dixon (as he then was) said in The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27 ; (1949) 78 CLR 601 at 627 that the basis of a claim to proprietorship in a trade mark so far unused is found in the combined effect of authorship of the mark, the intention to use it on or in connection with the goods and the application for registration. In Magnavox , the Assistant Registrar considered a mark which had not been used across the scope of the goods claimed. In coming to a conclusion as to use across a class of goods, I agree with the Assistant Registrar (at 2078) that ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The relevant date for the exercise of the discretion


case_text: Computers submits that the term "computer peripheral devices" should be removed from the registrations. It relies on the Moove case ( Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 (' Moove (No 1) ') and Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269 (' Moove (No 2) ') where a trade mark registered for dairy products was limited to cheese and flavoured milk. It submits that the removal goods and the removal services and those in the balance of the registration are clearly and separately identifiable without fine distinctions drawn as, for example, between vehicles dependent on particular use or size as in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537.


case_title: Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370


case_title: Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269


case_text: in the demand, Pioneer KK sought generally to prevent Pioneer Computers from any use of the mark PIONEER and demanded a complete cessation of the use by Pioneer Computers of any mark which is substantially identical with or deceptively similar to "the Pioneer Trade Mark". The allegation of infringement of Pioneer KK's registered marks was general and not restricted to the removal goods and the removal services. A general allegation was sufficient in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company (1989) 14 IPR 75 for Gummow J (at 77) and in Unilever Australia Ltd v Karounos (2001) 113 FCR 322 for Hill J (at [35]) to find that the recipient of the allegation was a person aggrieved in respect of all of the goods/classes for which the relevant trade marks were registered.


case_text: Computers submits that Pioneer KK has failed to establish that use by Pioneer Australia of the Pioneer KK marks for the services which the Australian company did provide in the relevant period was use by the Australian company as the authorised user of the marks and that the benefit of any such use accrued to the Japanese parent. Accepting that Pioneer Australia is a wholly-owned subsidiary of Pioneer KK and a distributor of Pioneer KK's products, Pioneer Computers submits that this does not establish that Pioneer KK exercised any relevant control within the meaning of s 8 of the Act over Pioneer Australia's use of the Pioneer KK marks in the relevant period. There is no evidence of a license ( Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 673). Accordingly, Pioneer Computers submits, Pioneer KK has not established that Pioneer Australia was an authorised user within the meaning of s 8 of the Act of the Pioneer KK marks in respect of the removal services in the relevant period. Pioneer KK relies upon the fact that the products sold under the trade marks were manufactured by or on behalf of Pioneer KK and that the documents, including manuals and test protocols, were created by the Japanese company and supplied to the Australian subsidiary for supply to customers in Australia. Use under the control of the owner of the trade marks is authorised use (ss 8(1) and 8(2) of the Act). As pointed out by Aickin J in Pioneer Kabushiki Kaisha at 683, a slight connection such as selection and quality control, or control by Pioneer KK of Pioneer Australia in the sense in which a parent company controls a subsidiary, may be sufficient.


case_outcome: applied

case_text: expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. Pioneer Computers relies upon the policy of the Act to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register which, it submits, will generally demand the removal of an unused trade mark ( Shanahan at [15.145]). However, as Shanahan also points out at [15.145], the underlying policy of the Act is to give the Court sufficient flexibility to give effect to public interest considerations. This includes the flexibility not to order removal even though the trade mark is unused in the sense required by s 92. The authors suggest that removal may not be appropriate where, for example, the trade mark is nonetheless well-known either from earlier use or from advertising or publicity coming from abroad. A further consideration, as noted by McLelland J in Ritz Hotel and by the Registrar in this case, is where removal could be ' potentially conducive to public confusion ' ( Ritz Hotel at 224). Pioneer Computers submits the following in support of its contention that the Court should not exercise its discretion in favour of Pioneer KK: Pioneer KK has had a sufficient length of time to use the Pioneer KK marks, since 1985 and 1998 respectively, and there is no evidence of any present intention on the part of Pioneer KK to expand its products within the removal goods or the removal services. It is not in the public interest, nor is it reasonable, that a trade mark owner should be permitted to "hoard" trade marks for goods and services that it has not used and has no present plans to use. Pioneer KK's business is specifically in the field of audio and audio-visual products, particularly for entertainment, as evidenced by the slogan. It is not in the business of manufacturing IT equipment, apart from the one period between 1985 and 1987 when Pioneer KK manufactured the Palcom computer. It does not manufacture computer products. It exited that market. The legitimate interests of Pioneer KK as the trade mark owner are protected by s 120(2) and s 120(3) of the Act with respect to the tests for infringement of the registered marks. They are also protected by the Trade Practices Act 1974 (Cth). To maintain trade mark registrations for unused goods and services would be to substitute the rights properly given under ss 120(2) and 120(3) with that provided in s 120(1). Pioneer Computers has used the name "PIONEER" as part of its corporate name and as its trade mark in relation to computers, particularly personal computers, notebook computers and servers, for 10 years. The retention of the removal goods and removal services on the Register would empower Pioneer KK to take action against Pioneer Computers in circumstances where it does not have a legitimate interest to protect because there is no use in relation to the removal goods or the removal services. It is misleading to the public to maintain a registration in respect of goods and services that are not used by Pioneer KK under the Pioneer KK marks. The parties have co-existed for 10 years without any apparent confusion in the marketplace. There has been little demonstrated confusion to date and any future confusion is readily able to be remedied as it has been in the past. Pioneer Australia has known of Pioneer Computers and its business from about 1996, giving rise to an inference that Pioneer KK does not consider Pioneer Computers' business as relevantly within or impacting upon Pioneer KK's business. How should the discretion be exercised? Approximately 50% of Pioneer Computers' annual turnover is from sales to governments and their departments through its Government, Education and Corporate Division. It has been an Australian Government Endorsed Supplier since 1999. It has substantial contracts with State governments and all computer equipment that has been supplied to those governments has, since 1999, been supplied under or by reference to the trade mark PIONEER. The support and servicing of personal computers, notebooks and servers, and the provision of on-site training and service has, since 1998, been provided through Pioneer Computers' Service Division, predominantly for PIONEER branded built-to-order computers under warranty.


case_text: 9.1 provides for the declaration to state that an inquiry has been made and to set out the findings of the inquiry. It does not provide for proof even at a prima facie level of the case to be made. The onus for showing intention and/or use once an application for removal is made shifts to the trade mark owner, who is required to rebut the allegation (s 100 of the Act). There is no requirement that the statutory declaration prove the alleged non-use or satisfy any evidentiary onus. The application and supporting statutory declaration need only ' mirror the statutory provisions ' ( Shanahan at [15.25] citing Schutz-Werke GmbH & Co KG v Forecast & Trading Pty Ltd (1998) 44 IPR 209). Neither the Act nor the Regulations require that within those documents, an applicant for removal must establish sufficient interest in the non-use application or prove its case. Pioneer KK did not raise any issue concerning the validity of the applications or compliance with Regulation 9.1 before the Registrar. Pioneer Computers submits that as a matter of discretion Pioneer KK should not be permitted to rely upon any such defect in this application to the Court which is an appeal from the Registrar's decision. Pioneer KK points out that it is not a question of discretion but of mandatory compliance: s 92(2)(a) provides that an application must be in accordance with the Regulations and this application represents both the initiating process before the Registrar and before the Court.


case_text: KK emphasises that it only needs to show some use of the removal goods during the relevant period to maintain its registration. The fact that use of the mark may have been discontinued in relation to some goods after that time cannot, it submits, be relevant to the present application. Further, Pioneer KK points out that it does not need to prove significant sales of goods or provision of services during the relevant period. One sale of each type of good would be sufficient, providing that sale or use of the mark is bona fide and not de minimis ( Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 437). The characterisation of the goods sold by Pioneer KK Pioneer Australia is and has been a market leader in optical drives in Australia. Purchasers of its products included consumers, businesses and government organisations. Pioneer Australia has provided end-user support for its optical drive products. It is common ground that Pioneer KK is a manufacturer of audio and audio-visual equipment including radios, televisions, amplifiers and sound recording and reproducing equipment including car stereo head units, speakers, amplifiers and sub-woofers.


case_text: Explanatory Memorandum does not really assist. Section 101(4) makes it clear that it has been inserted without any attempt to limit or qualify the discretion provided for in s 101(3). The Explanatory Memorandum itself speaks of "clarification". This can either recognise that s 101(4) expands the discretion or that it simply makes it clear which factors could already be taken into account under s 101(3). In my view, use of a trade mark on closely related goods or services could already be taken into account in exercising the discretion under s 101(3) in the unamended section. As I read s 101(3) , the discretion to be exercised is not limited. For the purposes of s 101(3) , account may be taken of use of the trade mark on closely related goods or services, even in cases commencing prior to the introduction of s 101(4). This has particular relevance in the case of goods that are at the forefront of technological change. Justice Dixon (as he then was) said in The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27 ; (1949) 78 CLR 601 at 627 that the basis of a claim to proprietorship in a trade mark so far unused is found in the combined effect of authorship of the mark, the intention to use it on or in connection with the goods and the application for registration. In Magnavox , the Assistant Registrar considered a mark which had not been used across the scope of the goods claimed. In coming to a conclusion as to use across a class of goods, I agree with the Assistant Registrar (at 2078) that ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The relevant date for the exercise of the discretion


case_text: appeal from a decision of the Registrar of Trade Marks is in the Court's original jurisdiction. None of the powers of the Court under s 197 of the Act affect the s 92 application, which goes to the jurisdiction of the Court to hear and determine an application for removal of a trade mark. The hearing is a "hearing de novo" where the judge reviewing the decision of the Registrar begins afresh and exercises any discretion exercised by the Registrar. The parties may adduce evidence as provided for in s 197 of the Act which evidence may include evidence not before the Registrar (see discussion in Totev v Sfar [2008] FCAFC 35 ; (2008) 167 FCR 193 by Emmett J at [12] and [13]; Blount at 59).


case_title: Unilever Australia Ltd v Karounos (2001) 113 FCR 322


case_title: Amcor Ltd v Construction, Forestry, Mining and Energy Union [2005] HCA 10 ; (2005) 214 ALR 56

case_text: Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.


case_title: Amcor Ltd v Construction, Forestry, Mining and Energy Union [2003] FCAFC 57


case_text: Thirdly, REX's submission ignores the express terms of the statutory instrument the Certified Agreement which contains a specified " Dispute Resolution Procedure " (cl 34) not dissimilar to that invoked in Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Ardmona Foods Ltd [2006] FCA 1039 at [44] . The existence of the specified " Dispute Resolution Procedure " runs directly counter to the contention that Mr Clarke was limited to commencing proceedings by way of counterclaim and limited to relief under Pt VIII of the Workplace Relations Act. 44 Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.


case_text: The issue for her Honour to determine was whether at the time the proceeding was instituted it had " no real prospects of success, or was doomed to failure ". That is required to be determined as a matter of objective fact: Automotive, Food, Metals, Engineering, Printing and Kindred Industries Union v Nestle Australia Limited (2005) 146 IR 379 at [4] citing Spotless Services Australia Ltd v Marsh SDP [2004] FCAFC 155 at [13] .


case_text: Secondly, the decisions of Josephson v Walker [1914] HCA 68 ; (1914) 18 CLR 691; Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437 and ACTEW Corporation Ltd v Pangallo [2002] FCAFC 325 ; (2002) 127 FCR 1 relied upon by REX do not support the submission that Mr Clarke was limited to relief under Pt VIII of the Workplace Relations Act and, in particular, was required to commence any proceedings by way of counterclaim. Each of the decisions is authority for the proposition that the remedy provided by the Workplace Relations Act for breach of a statutory instrument (including a certified agreement) (s 178) is exclusive: Josephson at 701; Gordonstone at 441 and ACTEW at 18. That proposition is irrelevant to the disposition of this appeal. Neither the Magistrates' Court nor this Court was required to, or asked to, consider a breach of the Certified Agreement or to make a declaration of right in relation to it.


case_title: Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410


case_text: As I have noted earlier, Div 7 of Pt VIB provides that a certified agreement can only be varied by one of the means specified in s 170MD(7). One of these methods is in writing by agreement between the employer and the AFAP: s 170MD(1). However, even then, any variation has no effect unless the Commission approves it (s 170MD(2)) and the Commission can not approve the variation unless it is satisfied that the variation passes the no-disadvantage test: s 170MD(3)(b); see also Commonwealth Bank of Australia v Finance Sector Union of Australia (2007) 157 FCR 329 at [172]-[174] and [228].


case_title: Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437


case_text: The principles relevant to the application of this section were summarised by the Full Court in Council of Kangan Batman Institute of Technology and Further Education v Australian Industrial Relations Commission [2006] FCAFC 199 ; (2006) 156 FCR 275 at [60] in the following terms: "The question therefore arises whether, as contended by counsel for Ms Hart, the plaintiff instituted the proceeding vexatiously or without reasonable cause. A party does not institute proceedings without reasonable cause merely because that party fails in the argument put to the Court: R v Moore; Ex parte Federated Miscellaneous Workers' Union of Australia [1978] HCA 51 ; (1978) 140 CLR 470 per Gibbs J at 473. The section reflects a policy of protecting a party instituting proceedings from liability for costs, but that protection may be lost. Although costs will rarely be awarded under the section and exceptional circumstances are required to justify the making of such an order (see Heidt v Chrysler Australia Ltd (1976) 26 FLR 257; 13 ALR 365 per Northrop J), a proceeding will be instituted without reasonable cause if it has no real prospects of success, or was doomed to failure: see Kanan v Australian Postal and Telecommunications Union (1992) 43 IR 257 per Wilcox J; see also Bostik (Australia) Pty Ltd v Gorgevski (No 2) (1992) 36 FCR 439; and Nilsen v Loyal Orange Trust (1997) 76 IR 180." 63 As the Full Court said in Kangan " at [63] " [i]t is a matter of judgment, sometimes of fine judgment, in all the circumstances of a particular case whether a proceeding is brought without reasonable cause . The phrase " vexatiously or without reasonable cause " was described by von Doussa J in Hatchett v Bowater Tutt Industries Pty Ltd (No.2) (1999) 28 FCR 324 at 327 as " similar to the one applied by a court on an application for the exercise of summary power to stay or strike out proceedings ".


case_text: As the Full Court said in Kangan " at [63] " [i]t is a matter of judgment, sometimes of fine judgment, in all the circumstances of a particular case whether a proceeding is brought without reasonable cause . The phrase " vexatiously or without reasonable cause " was described by von Doussa J in Hatchett v Bowater Tutt Industries Pty Ltd (No.2) (1999) 28 FCR 324 at 327 as " similar to the one applied by a court on an application for the exercise of summary power to stay or strike out proceedings ". 64 In the present case, I have not been provided with the material (if any) provided to her Honour in support of the application for costs or with her Honour's reasons for decision. In any event the question remains whether, objectively determined, when the proceeding was instituted it had no real prospects of success or was doomed to failure. In other words, was the claim by REX for recovery of the Training Bond " so obviously untenable that it [could] not possibly succeed", or "manifestly groundless" or "bad beyond argument ": Hatchett at 327.


case_text: Secondly, in relation to a further submission by REX that cl 23 of the Certified Agreement did not prohibit the performance of the Training Bond and did not intend to codify the issue of training for pilots covered by the Certified Agreement, her Honour after referring to cll 5, 8 and 61 of the Certified Agreement, dealt with cl 23 and cl 8 as follows: "Clause 23 exhaustively deals with the costs of training in a variety of circumstances in clear and unambiguous terms. It places the obligation for payment of the costs associated with training on the employer, except in very narrow and specific circumstances. Clause 8.5, dealing with termination of employment does not similarly create a right to seek repayment of a training bond. It is not logically possible for the employer to be required to bear all the costs associated with training, as is the case under the [Certified Agreement], and for that obligation to be passed to the employee in accordance with the terms of the Training Bond. I am not satisfied that the terms of the [Training Bond] can co-exist with the [Certified Agreement], they are clearly inconsistent. The terms of the [Certified Agreement] clearly prevail over inconsistent contractual terms. (I was referred to Josephson v Walker [1914] HCA 68 ; (1914) 18 CLR 691 on this point)." 39 Secondly, the decisions of Josephson v Walker [1914] HCA 68 ; (1914) 18 CLR 691; Construction, Forestry, Mining and Energy Union v Gordonstone Coal Management Pty Ltd (1997) 78 FCR 437 and ACTEW Corporation Ltd v Pangallo [2002] FCAFC 325 ; (2002) 127 FCR 1 relied upon by REX do not support the submission that Mr Clarke was limited to relief under Pt VIII of the Workplace Relations Act and, in particular, was required to commence any proceedings by way of counterclaim. Each of the decisions is authority for the proposition that the remedy provided by the Workplace Relations Act for breach of a statutory instrument (including a certified agreement) (s 178) is exclusive: Josephson at 701; Gordonstone at 441 and ACTEW at 18. That proposition is irrelevant to the disposition of this appeal. Neither the Magistrates' Court nor this Court was required to, or asked to, consider a breach of the Certified Agreement or to make a declaration of right in relation to it. 44 Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J.


case_title: Kidd v Savage River Mines (1984) 6 FCR 398


case_text: Finally, her Honour referred to and followed the decision of the Full Court of this Court in McLennan v Surveillance Australia Pty Ltd [2005] FCAFC 46 ; (2005) 142 FCR 105 which considered an Australian Workplace Agreement ("AWA") and held a training bond that was inconsistent with an AWA was unenforceable. I will consider this decision further later in these reasons. 26 This appeal raised three questions relevant to the question of the enforceability of the Training Bond and, in particular, the ability of REX to recover $7,500 from Mr Clarke: (1) the proper construction of the Training Bond and, in particular, whether it was inconsistent with the Certified Agreement and therefore unenforceable; (2) whether the decision of the Full Court in McLennan was distinguishable; (3) whether her Honour fell into error in " failing to recognise that, once [REX had] discharged its onus of proof (on the balance of probabilities) by proving that [Mr Clarke had breached] the Training Bond, the onus of proof shifted to [Mr Clarke] to prove his defence (on the balance of probabilities) that the Training Bond was inconsistent with any and which part of the Certified Agreement and, to that extent, was invalid and unenforceable ". As will become apparent, these questions and the answers to them are interrelated. 27 It is necessary to turn to consider the provisions of the Workplace Relations Act dealing with certified agreements. Certified agreements are a creature of statute. The relevant provisions are primarily to be found in Pt VIB of the Workplace Relations Act (ss 170L to 170NI). However, other parts of the Workplace Relations Act are relevant including Pt VIE (the no-disadvantage test), Pt VIII (compliance) and Pt XV (matters referred by Victoria). 28 The object of Pt VIB of the Workplace Relations Act is to " facilitate the making, and certifying by the Commission, of certain agreements, particularly at the level of a single business or part of a single business" : s 170L. That object is consistent with the overall object of the Workplace Relations Act: see s 3 and in particular, para 3(e). The term " single business " is defined in s 170LB, so far as is relevant, as " a business, project or undertaking that is carried on by an employer ". Section 170LB(2) provides that if two or more employers carry on a business, project or undertaking " as a joint venture or common enterprise ", the employers are taken to be one employer. In the present case, s 170LB(2) applies. 29 Division 2 of Pt VIB sets out the requirements that must be satisfied for applications to be made to the Commission to certify an agreement. Critically, " there must be an agreement, in writing, about matters pertaining to the relationship between" an employer and all persons who (at the time the agreement is in operation) are employed in the single business of the employer: s 170LI. As Black CJ and Moore J noted in McLennan at [42] and [43] when considering the analogous provision in relation to AWAs (s 170VF of the Workplace Relations Act), it is clear that not only does the certified agreement need not deal in a comprehensive way with terms and conditions of employment, it is not expected to do so. 30 There are two types of certified agreements agreements between employers and an organisation of employees (s 170LJ) and agreements between employers and employees (s 170LK). We are concerned with the former. 31 Under Div 4 of Pt VIB, the Commission must certify an agreement unless it is satisfied that the requirements of s 170LT are not met: s 170LT(1). The agreement must pass the no-disadvantage test set out in Pt VIE: s 170LT(2). An agreement passes the no-disadvantage test if " it does not disadvantage employees in relation to their terms and conditions of employment ": s 170XA(1). Subject to a number of provisions which are presently not relevant, s 170XA(2) provides that an agreement disadvantages employees in relation to their terms and conditions of employment only if its approval or certification would result, on balance, in a reduction in the overall terms and conditions of employment of those employees under, in this case, relevant awards. The relevant award is determined in accordance with s 170XF. It was not in dispute that the relevant award in this case was the same award considered by the Full Court in McLennan at [11]. 32 The effect of certified agreements is dealt with by Divs 5 and 6 of Pt VIB. A certified agreement comes into operation when it is certified and, subject to other sections which are presently not relevant, remains in operation at all times afterwards: s 170LX(1). It binds the employer and all persons whose employment is, at any time when the agreement is in operation, subject to the agreement: s 170M(1). The Letter of Offer expressly provided that Mr Clarke's position and conditions of employment were " in accordance with the [Certified Agreement]" . It also bound the Australian Federation of Airline Pilots ("the AFAP") who made the agreement with REX: s 170M(2). 33 Variations to certified agreements were provided for in Div 7 of Pt VIB. A certified agreement cannot be varied except by one of the means specified in s 170MD(7). One method of varying a certified agreement is in writing by agreement between the employer and the AFAP: s 170MD(1). However, any variation has no effect unless the Commission approves it (s 170MD(2)) and the Commission must not approve the variation unless it is satisfied that the variation passes the no-disadvantage test: s 170MD(3)(b). The manner in which both certified agreements and variations to them are negotiated is prescribed by Div 8 and Div 9 of Pt VIB. 43 Finally, the submission is contrary to the fact that the Workplace Relations Act recognises, and the authorities establish, that a certified agreement not only need not deal in a comprehensive way with terms and conditions of employment, it is not expected to do so: see s 170LI of the Workplace Relations Act and McLennan at [42] and [43]. 44 Although it is not possible to contract out of a statutory instrument ( Josephson at 700; Kidd v Savage River Mines (1984) 6 FCR 398 at 409-410; Byrne v Australian Airlines Limited [1995] HCA 24 ; (1995) 185 CLR 410 at 421; Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250 at [23] to [33] and McLennan at 125), that does not prevent an employment contract conferring additional benefits upon an employee over and above those conferred by a statutory instrument: Givoni at [29] to [35] and the authorities referred to. These latter cases were concerned with awards, however the same principles apply to certified agreements: see Ardmona Foods Ltd at [16] and [31]; Amcor Ltd v Construction, Forestry, Mining and Energy Union ("CFMEU") [2003] FCAFC 57 at [34] and Amcor Ltd v CFMEU [2005] HCA 10 ; (2005) 214 ALR 56 at [144] per Callinan J. 47 The question was not whether the Certified Agreement was comprehensive it clearly was not. The question was whether the term of the Training Bond, by which Mr Clarke agreed to pay $7,500 to REX if he left REX's employment within a specified time, was a matter pertaining to the relationship between REX and the pilots that the Certified Agreement dealt with and if so, whether that term effectively altered or varied the rights and obligations concerning that matter or those matters in the Certified Agreement to the disadvantage of Mr Clarke? If the answer is yes, then consistent with the decision of the Full Court in McLennan it was not open to REX to seek to recover $7,500 from Mr Clarke because "... [b]y clear implication, the [Workplace Relations] Act prohibits the alteration of such rights or obligations which might disadvantage the employee by means other than those provided in the Act and renders ineffectual any agreement which purports to do so" : McLennan at [48]. 48 Mr Clarke submitted that the term of the Training Bond by which Mr Clarke agreed to pay $7,500 to REX if he left REX's employment within a specified time was referable to two matters pertaining to the relationship between REX and the pilots covered by the Certified Agreement training and termination. I agree. So much was made abundantly clear by the express terms of the Letter of Offer incorporating the Training Bond. However, that of itself is not sufficient. The question is whether that term of the Training Bond effectively altered or varied the rights and obligations concerning that matter or those matters in the Certified Agreement to the disadvantage of Mr Clarke. That requires a comparison between the relevant term or terms of the Certified Agreement and the specified term of the Training Bond. 49 In relation to the 'matter' of training, under cl 23 of the Certified Agreement, REX was not only responsible for arranging facilities to enable Mr Clarke to reach and maintain proficiency in such ground courses and such aeronautical skills as were required by REX (cl 23.1) but it was obliged to " pay all costs associated with obtaining and for renewing such rating or endorsement " (cl 23.2). The Training Bond altered or varied that matter to the disadvantage of Mr Clarke at a price of $7,500. That view is reinforced when one recalls that the Commission was required to assess the Certified Agreement against the terms of the relevant award: (see par [31] above) and, under cl 19.1 of that award, " all facilities and other costs associated with attaining and maintaining those qualifications [were] the responsibility of the employer ": McLennan at [11]. 50 Even if the Letter of Offer and the Training Bond did not alter or vary the 'matter' of training to the disadvantage of Mr Clarke, it did alter or vary the 'matter' of termination to the disadvantage of Mr Clarke. Under the Certified Agreement, the employment was terminable by Mr Clarke giving four weeks' written notice. Under the Letter of Offer incorporating the Training Bond, the employment was terminable by Mr Clarke giving four weeks' written notice and incurring a debt of $7,500 payable to REX on the same day that the employment terminated. 51 The facts in this case may be characterised in a variety of ways - the Training Bond effectively altered or varied the rights and obligations concerning a matter dealt with by the Certified Agreement to the disadvantage of Mr Clarke by means other than those imposed by the Workplace Relations Act; the Training Bond imposed an additional burden on Mr Clarke by means other than those imposed by the Workplace Relations Act; the Training Bond was an attempt to contract out of the Certified Agreement. Adopting any one of those characterisations, the Training Bond was unenforceable. 52 In McLennan, the Full Court considered a similar issue but in the context of another statutory instrument an AWA. The Court considered the training bond inconsistent with an AWA and therefore unenforceable. During the course of argument, Counsel for REX submitted (but subsequently abandoned the submission) that the decision of the Full Court was plainly wrong. It was not. On 11 August 2005, the High Court refused Special Leave to appeal on the basis that (without endorsing all of the reasoning of the Full Court) the conclusion reached by the Full Court was correct: Surveillance Australia Pty Ltd v McLennan [2005] HCATrans 603 (11 August 2005). 53 REX also submitted that the decision in McLennan was distinguishable because it dealt with a different statutory instrument and because there were some factual differences. In my view, that submission should also be rejected. The differences in statutory instrument relied upon by REX (that the AWA is an employment agreement between an employer and an individual employee as opposed to a collective instrument such as the Certified Agreement, that the variation to the AWA was made between the same parties whereas the variation by the Letter of Offer was not and that under AWAs the employee loses the safety net completely) did not provide any basis for distinguishing McLennan . In relation to the last matter referred to by REX, although an AWA (but not a certified agreement) applies to the exclusion of any award that would otherwise apply (s 170VQ(1)), a certified agreement does prevail over them to the extent of any inconsistency (s 170LY(1)) and does prevail over State awards and State industrial agreements to the extent of any inconsistency (s 170LZ(1)). 54 Moreover, the statutory architecture and express provisions of Pt VIB (dealing with certified agreements) and Pt VID (dealing with AWAs) are not significantly different and do not lead to a different result. Adopting what the Full Court said in McLennan at [47]: " Having regard to [the] protective legislative framework, it is unlikely that the legislature intended that the parties to [a certified agreement] could reach agreement under the umbrella of that protection about matters pertaining to the employment relationship, obtain [certification from the Commission] thereby removing protection which might be afforded by an award (made under the Act or a State award) or afforded by State law, and thereafter bargain without similar protection to reach a collateral agreement (enforceable under the common law) imposing additional burdens on an employee in relation to matters dealt with by the [certified agreement]. Indeed it is for this reason (and probably one other) that the [Workplace Relations] Act contains procedures with that protection for parties to [a certified agreement] to reach, and obtain approval for, a variation agreement. The other reason would be to allow the parties to [a certified agreement] to add to the [certified agreement] provisions concerning a matter not then dealt with by the [certified agreement]." 56 In adopting and applying the language of the Full Court in McLennan at [48], where a certified agreement deals with a particular matter pertaining to the relationship between an employer and an employee, then the parties to and those bound by the certified agreement can only alter their rights and obligations in relation to that matter in a way which might disadvantage the employee, by entering into and obtaining approval for the variation agreement in the manner presented by the Workplace Relations Act: see also McLennan at [50]. 57 Similarly, none of the factual differences between the decision in McLennan and the facts of this case assist REX. The facts of the present case are, if anything, more compelling than the facts in McLennan in one critical respect. Unlike the AWA in McLennan , cl 23.2 of the Certified Agreement obliged REX to "pay all costs associated with obtaining and for renewing such rating or endorsement. This will include all licensing fees and Civil Aviation Safety Authority charges ." No similar provision existed in McLennan : see [15]. 58 For these reasons, the Appeal should be dismissed. 59 REX also submitted that her Honour erred when, on 1 March 2006, she ordered costs against REX on the basis that the complaint was a proceeding instituted in the Magistrates' Court " without reasonable cause " under s 347 of the Workplace Relations Act. 60 Section 347 of the Workplace Relations Act provides: "A party to a proceeding ( including an appeal ) in a matter arising under this Act (other than an application under section 170CP) shall not be ordered to pay costs incurred by any other party to the proceeding unless the first-mentioned party instituted the proceeding vexatiously or without reasonable cause." (Emphasis Added) 65 The issue is finely balanced. As I have sought to explain, the actions of REX seeking to recover the Training Bond were, in my view, contrary to the statutory object of certified agreements in Pt VIB of the Workplace Relations Act and the decision of the Full Court dealing with analogous provisions in McLennan . The attempts to distinguish McLennan failed. However, in the circumstances of this case, I am not persuaded that the proceeding was commenced vexatiously or without reasonable cause. I would set aside the costs order of the Industrial Division of the Magistrates' Court of Victoria of 1 March 2006. 66 The respondent sought costs of the appeal and on an indemnity basis. That application is refused. This is an appeal to which s 347 of the Workplace Relations Act applies: see para [60] above. I am not persuaded that the appeal was instituted vexatiously or without reasonable cause. There will be no order as to costs in relation to the appeal. I certify that the preceding sixty-six (66) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gordon. Associate: Dated: Counsel for the Appellant: Mr N Green QC with Mr R Dalton Solicitor for the Appellant: Trindade Farr & Pill Lawyers Counsel for the Respondent: Mr J Snaden Solicitor for the Respondent: Peter Hull & Associates Date of Hearing: 18 June 2007 Date of Judgment: 29 June 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/957.html


case_text: The phrase " matter arising under this Act " is not to be given a narrow meaning and, in this context, extends to include whether or not the Certified Agreement rendered the Training Bond unenforceable so as to prevent REX recovering the $7,500: see Transport Workers' Union of Australia v Graham Meyrick Lee [1998] FCA 756 citing Dixon CJ in R v Spicer; Ex parte Truth and Sportsman Ltd [1957] HCA 38 ; (1957) 98 CLR 48 at 53. The view that the phrase " matter arising under this Act " extends to include the issues in this appeal is reinforced by other provisions of the Workplace Relations Act including, but not limited to, s 413A in Division 1 of Part XIV that the Court may give an interpretation of a certified agreement on application by the Minister, an organisation or person bound by the certified agreement or a person whose employment is subject to the certified agreement.


case_title: Spotless Services Australia Limited v Marsh SDP [2004] FCAFC 155


case_title: Textile, Clothing and Footwear Union of Australia v Givoni Pty Ltd (2002) 121 IR 250


case_title: Transport Workers' Union of Australia v Graham Meyrick Lee [1998] FCA 756


case_outcome: distinguished

case_text: In this context, REX's reliance upon two further decisions was misplaced. In United Firefighters' Union of Australia v Country Fire Authority [2007] FCA 853 esp at [32], the Court considered the effect of an act done in breach of particular clauses of the relevant award and the relevant certified agreement. As I have said, this appeal was not concerned with an act done in breach of the Certified Agreement. The issue considered by Gray J did not arise in these proceedings.


case_text: The other decision on which REX relied was Yango Pastoral Company Pty Limited v First Chicago Australia Limited [1978] HCA 42 ; (1978) 139 CLR 410. That case concerned s 8 of the Banking Act 1959 (Cth) which prohibited a body corporate from carrying on any banking business in Australia unless it was in possession of an authority to do so. The provision went on to impose a penalty for each day of contravention. The first respondent in that case, First Chicago Australia Limited ("First Chicago"), had granted a mortgage which incorporated a guarantee given by the appellants. There was default and First Chicago sued on the guarantee. The appellants pleaded illegality on the basis that the mortgage and the guarantee was illegal and void because of s 8 of the Banking Act 1959 (Cth) or, that by reason of s 8 , a court would not assist the respondent to give effect to the transaction. The Court rejected the contention. Gibbs ACJ outlined four ways in which the enforceability of a contract may be affected by a statutory provision which renders particular conduct unlawful: at 413. In my view, the High Court decision does not assist the disposition of this appeal because, as was ultimately conceded by Counsel for REX, no provision of the Workplace Relations Act could be identified which rendered conduct of REX unlawful or, in particular, which precluded REX and Mr Clarke entering the Letter of Offer incorporating the Training Bond.


case_outcome: related

case_text: On 1 April 2008 I delivered reasons for judgment in this matter ( Vatera Pty Limited v Meribal Interiors NSW Pty Limited (Under Deed of Company Arrangement); in the Matter of Meribal Interiors NSW Pty Limited (Under Deed of Company Arrangement) [2008] FCA 404) and stood the matter over in order to consider the orders to be made. This judgment should be read with those reasons. 2 I am satisfied that Mr John Lord is appropriate for appointment as liquidator of the first defendant, Meribal Interiors NSW Pty Limited. He is a recognised liquidator and he has confirmed that he has had no dealings with the plaintiff, Vatera Pty Limited. There is no reason to believe that he will not do his duty as a liquidator of this company and deal with Vatera completely at arm's length. 3 As far as draft order 3 is concerned, it is clear that some such arrangement is necessary, as between the liquidator and the administrator. It is not clear to me that it is necessary that it be by way of order. It may be that the statute will simply operate. However, I can see no disadvantage in making the order which is by way of being ancillary to the other orders. I would only make it, however, on the rider, which is incorporated in the latest version, that the fees involved are only those incurred pursuant to the Deed of Company Arrangement (DOCA). I would not, at the moment, say anything about the costs of the administration; that is a topic best left for consideration by the liquidator.


case_text: It is unnecessary to set out again the factual and procedural history which is set out in the reasons for judgment published on 1 May 2006 Applicant S1140/2003 v Minister for Immigration & Multicultural & Indigenous Affairs [2006] FCA 526. These reasons, should be read together with those, for that purpose. 9 The husband, in the presence of his wife, and with her authority confirmed orally in Court, made submissions on behalf of both of them in support of their applications for leave to appeal against the learned magistrate's decisions. However, nothing that was said in support of those applications identified any error in the reasoning of the Federal Magistrates Court which would warrant the grant of such leave. As previously observed, the proposed draft notice of appeal does not disclose any viable grounds for a proposed appeal. There was reference to other cases in which it was said applicants had been allowed to proceed in the Federal Magistrates Court but there was no principle proposed, emerging from those cases, which suggested they would be of any assistance in this case. 10 A matter which was drawn to my attention by counsel for the respondent, and which was not dealt with in the previously published reasons, was that the wife's application for judicial review in the Federal Magistrates Court had been amended on or about 4 May 2005. A copy of the amended application appears in the Appeal Book relating to the wife. I assume that an amended application in like terms was filed in the husband's name. The amended application for judicial review of the Tribunal's 1998 decision asserts in substance that the Tribunal misconstrued the concept of persecution and ignored an important integer of the applicants' claim. It makes reference to s 91R of the Migration Act 1958 (Cth) which was not in force at the time of the Tribunal's decision. 11 The grounds of the amended application do not assist the applicants. Indeed they strengthen the proposition that the proceedings in this case were an abuse of process because they canvass matters which clearly were, or could have been, raised before Mathews J in 1998. 12 I am satisfied that there is no merit in the proposed appeal and that the Magistrate correctly found that the proceedings in the Federal Magistrates Court amounted to an abuse of process. The applications for leave to appeal will be dismissed. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice French. Associate: Dated: 18 May 2006 SZFMQ appeared on behalf of the Applicants Counsel for the Respondent: Ms B Griffin Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 17 May 2006 Date of Judgment: 18 May 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/588.html


case_text: it was not enough for Mr Young to formulate a claim in sweeping conclusory terms and to say on oath that he believed in his claim or was confident that he would be able to sustain it on a hearing: see, for example, Ebert v The Union Trustee Co of Australia Ltd [1960] HCA 50 ; (1960) 104 CLR 346 at 350-351; Bhagat v Global Custodians Ltd [2002] FCAFC 51 at [53].


case_title: Commonwealth v Ling (1993) 44 FCR 397

case_text: present case concerns an assignment of a bare cause of action for unliquidated damages for breach of contract, not of a property right to which a cause of action is ancillary. The parties accepted that in these circumstances the assignment could be sustained only if Mr Young had a genuine commercial interest in taking the assignment and enforcing it for his own benefit: see Trendtex Trading Corporation v Credit Suisse [1982] AC 679 at 703, which has been followed in many cases in Australia including, but not limited to, Re Timothy's Pty Ltd and the Companies Act [1981] 2 NSWLR 706; Commonwealth v Ling (1993) 44 FCR 397 ; National Mutual Property Services (Australia) Pty Ltd v Citibank Savings Ltd (1995) 132 ALR 514 ; and see G Tolhurst, The Assignment of Contractual Rights (Hart Publishing, 2006) at [6.59]ff .


case_text: Federal Magistrate quoted as follows from my judgment in Glew v Harrowell of Hunt and Hunt Lawyers [2003] FCA 373 ( Glew ) at [8]-[9]: In order to avoid committing the act of bankruptcy identified in par 40(1)(g) of the Act, Glew and Tresider [the recipients of the bankruptcy notice] must satisfy the Court that they have a counter-claim, set-off or cross demand against Hunts of the kind described in that paragraph. What they must do in order to "satisfy the Court" for the purposes of par 40(1)(g) of the Act that they have the asserted counter-claim, set-off or cross demand has been variously described. The descriptions do not necessarily purport to be comprehensive definitions. To state that a debtor in receipt of a bankruptcy notice must show X does not necessarily imply that he or she need not also show Y, or that he or she will not be defeated if the creditor shows Z. There are authorities suggesting that Glew and Tresider must satisfy me of the following interrelated and sometimes overlapping matters: that they have a "prima facie case", even if they do not adduce evidence which would be admissible on a final hearing making out that case ( Ebert v The Union Trustee Co of Australia Ltd [1960] HCA 50 ; (1960) 104 CLR 346 (" Ebert ") at 350; Re Brink; Ex parte Commercial Banking Company of Sydney Ltd (1980) 44 FLR 135 (" Brink ") at 141; Gomez v State Bank of NSW Ltd [2002] FCAFC 101 at [17], [18]); that they have "a fair chance of success" or are "fairly entitled to litigate" the claim: Brink at 141; Re Gould; Gould v Day [1999] FCA 1650 at [27] , [28]; Re Capsanis; Capsanis v The Owners Strata Plan 11727 [2000] FCA 1262 at [11] ); and that they are advancing a "genuine" or "bona fide" claim ( Re Capsanis; Capsanis v The Owners Strata Plan 11727 [2000] FCA 1262 at [11] ). It may be that the first and second formulations are intended to cover the same ground. In Brink Lockhart J treated (at 141) the reference to a " prima facie case " in Ebert as a reference to "a fair chance of success". But it was not enough for Mr Young to formulate a claim in sweeping conclusory terms and to say on oath that he believed in his claim or was confident that he would be able to sustain it on a hearing: see, for example, Ebert v The Union Trustee Co of Australia Ltd [1960] HCA 50 ; (1960) 104 CLR 346 at 350-351; Bhagat v Global Custodians Ltd [2002] FCAFC 51 at [53].


case_text: Federal Magistrate quoted as follows from my judgment in Glew v Harrowell of Hunt and Hunt Lawyers [2003] FCA 373 ( Glew ) at [8]-[9]: In order to avoid committing the act of bankruptcy identified in par 40(1)(g) of the Act, Glew and Tresider [the recipients of the bankruptcy notice] must satisfy the Court that they have a counter-claim, set-off or cross demand against Hunts of the kind described in that paragraph. What they must do in order to "satisfy the Court" for the purposes of par 40(1)(g) of the Act that they have the asserted counter-claim, set-off or cross demand has been variously described. The descriptions do not necessarily purport to be comprehensive definitions. To state that a debtor in receipt of a bankruptcy notice must show X does not necessarily imply that he or she need not also show Y, or that he or she will not be defeated if the creditor shows Z. There are authorities suggesting that Glew and Tresider must satisfy me of the following interrelated and sometimes overlapping matters: that they have a "prima facie case", even if they do not adduce evidence which would be admissible on a final hearing making out that case ( Ebert v The Union Trustee Co of Australia Ltd [1960] HCA 50 ; (1960) 104 CLR 346 (" Ebert ") at 350; Re Brink; Ex parte Commercial Banking Company of Sydney Ltd (1980) 44 FLR 135 (" Brink ") at 141; Gomez v State Bank of NSW Ltd [2002] FCAFC 101 at [17], [18]); that they have "a fair chance of success" or are "fairly entitled to litigate" the claim: Brink at 141; Re Gould; Gould v Day [1999] FCA 1650 at [27] , [28]; Re Capsanis; Capsanis v The Owners Strata Plan 11727 [2000] FCA 1262 at [11] ); and that they are advancing a "genuine" or "bona fide" claim ( Re Capsanis; Capsanis v The Owners Strata Plan 11727 [2000] FCA 1262 at [11] ). It may be that the first and second formulations are intended to cover the same ground. In Brink Lockhart J treated (at 141) the reference to a " prima facie case " in Ebert as a reference to "a fair chance of success". The critical paragraph of the Federal Magistrates Reasons for Judgment is [58] which stated: As per Glew the essential element that I am required to be satisfied of is that there is a prima facie case. Before that can be established it will be necessary for a final determination as to the validity of the Deed of Assignment as the total claim depends on that effective transfer to Mr Young to enable him to mount his cross-claim. If the deed of assignment is found to be defective, Mr Young has not provided a second or alternative basis for a counter claim or set off. If the secondary claim did exist independent of the Deed then the failure to raise that claim in the District Court may be estopped by the principles in the Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45 ; (1981) 147 CLR 589. If the Deed is found to be valid and effective then the "Contract Confirmations" annexed to the second affidavit of Mr Young indicates that ICM Agriculture and entities other than AAC or its nominees have breached the licence agreement. As there has been no challenge as to the admissibility of those documents I am satisfied that a claim would exist and that Mr Young has a prima facie case for damages. The Federal Magistrate's reference to "Contract Confirmations" is a reference to seven documents so named by which ICM sold Kabuli Chickpeas to Agrinational Pty Ltd over the period 18 to 21 August 2003. The "prima facie" claim for damages referred to is no doubt a claim for damages by AAC for breach by ICM of clauses 2, 3, 8 and 9 of the Grower's Licence, referred to at [15] - [17] above. In sum, the Federal Magistrate noted, without attempting to resolve, the issue of the validity of the assignment, and considered that ICM's sale of the chickpeas raised a prima facie case of breach of the Grower's Licence by ICM. If an attempt had been made to read the affidavit as evidence of any facts under the heading "Claim for relief", there would have been an objection and the affidavit would have been rejected. First, the affidavit was nothing more than a statement of Mr Young's "belief"; his state of belief was not evidence of any of the primary facts, and was not able to satisfy the test discussed in Glew (set out at [67] above and [79] below). Second, and more importantly, if Mr Young had sworn that the allegations of fact in the statement of claim were true, his affidavit would still have been inadmissible because of the nature of the material in the statement of claim. It was an amalgam of conclusions, rather than a statement of facts. Indeed, before the Federal Magistrate Mr Young did attempt to read an affidavit sworn by him on 21 December 2007 which contained in paragraphs 18 and 19 the very material that appeared under the heading "Relief claimed" in the statement of claim. When objection was taken to the two paragraphs, they were not read. Counsel then appearing for Mr Young (not the Counsel who appeared for him on the present appeal) said that the non-reading of them was of little consequence at that stage because he proposed to tender the statement of claim which would show the monetary value of the counter-claim. Counsel appears to have thought that it sufficed to show how the counter-claim was calculated. In Glew , immediately following [8] and [9] quoted by the Federal Magistrate and set out at [67] above, I said: In Brink Lockhart J said (at 141) that the Court is not required to "undertake a preliminary trial of the counter-claim, set-off or cross demand". But, clearly, the application of the criteria above requires the Court to make some kind of preliminary assessment, though obviously not to determine the counter-claim, set-off or cross demand finally. And in Guss v Johnstone [2000] HCA 26 ; (2000) 171 ALR 598 , Gleeson CJ, Gaudron, McHugh, Kirby and Callinan JJ stated (at 606): "40 The state of satisfaction referred to in s 40(1)(g) , and s 41(7) , involves weighing up considerations as to the legal and factual merit of the claim relied upon by the debtor, and the justice of allowing the bankruptcy proceedings to go ahead or requiring them to await the determination of the claim." Plainly, in order to "satisfy" the Court for the purposes of par 40(1)(g), the debtor is not required to prove, as on a final hearing, the asserted entitlement to recover from the creditor. Accordingly, evidence tendered on an application to set aside is to be tested for admissibility, not as if the proceeding were one in which the debtor's claim was being finally determined, but by reference to the question whether the Court should be satisfied that the debtor has a claim deserving to be finally determined. Perhaps little more can usefully be said than that a debtor must satisfy the Court that there is sufficient substance to the counter-claim, set-off or cross demand asserted to make it one which the debtor should, in justice, be permitted to have heard and determined in the usual way, rather than be forced to comply with the bankruptcy notice by payment or to commit an act of bankruptcy. Mr Young's supposed affidavit verifying the material quoted at [57] above could not even begin properly to satisfy the Federal Magistrates Court that Mr Young had a counter-claim against ICM in an amount equal to or exceeding the amount of ICM's judgment against him. Mr Young submits that the point raised by the first ground of appeal was not raised before the Federal Magistrate until closing submissions, by which time it was too late for it to be raised. The notice stating grounds of opposition to the application to set aside the Bankruptcy Notice stated as a ground that Mr Young did not have a prima facie counter-claim, set-off or counter demand [sic] "within the meaning of s 40(1)(g) of the [Bankruptcy Act]". In order to be within s 40(1)(g) , a counter-claim, set-off or cross demand must be for an amount that is equal to or exceeds the amount of the judgment debt. Accordingly, there is no substance in Mr Young's argument that the point was raised too late below. ICM's first ground of appeal succeeds, subject to resolution of Mr Young's application to lead evidence on the appeal (see [130] below). Ground 2(a): Did the alleged counter-claim have insufficient legal or factual merit?


case_title: Hadley v Baxendale (1854) 9 Exch 341(156 ER 145)

case_text: even if all of the facts and conclusions referred to in Mr Young's District Court statement of claim were proved, he would have failed because his claim as formulated does not fit within either the first or second limb of Hadley v Baxendale (1854) 9 Exch 341 (156 ER 145); see Castle Constructions Pty Ltd v Fekala Pty Ltd (2006) 65 NSWLR 648 at [34], [39]. The leading of evidence of value on the appeal would not have overcome this problem. A complete reformulation of the alleged counter-claim would have been necessary. Second, in so far as AAC's losses are said to relate to "Royalties Due and Payable" in accordance with the Sublicence, those losses could not properly be said to have been caused by a breach of the Grower's Licence by ICM. They were caused by the insolvency of Namoi. It will be recalled that a voluntary administrator was appointed to Namoi on 11 July 2003, only four days after Mr Young wrote his letter of 7 July 2003 on the letterhead of Namoi. The creditors of Namoi passed a special resolution for the winding up of the company on 8 August 2003. For the two reasons last given, Mr Young could not have properly satisfied the Federal Magistrate that ICM was liable to AAC. I acknowledge that the second reason relates to only $54,855 of the total counter-claim of $257,355. The balance of $202,500 still exceeds (just) the amount of the Bankruptcy Notice of $198,278.06. Ground 2(b): the validity of the assignment


case_text: the validity of the assignment, ICM relied on two propositions before the Federal Magistrate: (a) The cause of action was unable to be assigned by AAC to Mr Young because it was a bare cause of action and Mr Young had no genuine commercial interest to support he assignment (ICM cited Salfinger v Niugini Mining (Australia) Pty Ltd (No 3) [2007] FCA 1532 at [108] - [124] ; Monk v The Australian & New Zealand Banking Group Limited (1994) 34 NSWLR 148 at 152 ( Monk )); (b) The assignment was procured in breach of fiduciary duties owed by Mr Young to the shareholders of AAC, and on this basis the proper exercise of the Court's discretion would be to refuse to set aside the Bankruptcy Notice (ICM cited Re Daley; ex parte National Australia Bank Ltd (1992) 37 FCR 390 at 395 ( Daley )). The circumstances of the present case are analogous to those in Monk in which the assignee's interest was that of obtaining a set-off against a judgment debt. In that case, Cohen J said (at 153): The plaintiff's only apparent interest is in the possibility of his becoming a creditor of the Bank. That is, his interest is in using the debt which might arise from the cause of action for his personal benefit. That no doubt is the interest of any assignee. The using of the debt as a set-off against the judgment debt is merely an example of obtaining some personal benefit. In that regard the plaintiff is in no stronger position than he would be if he had obtained an assignment of a cause of action for negligence by a customer of the Bank who claimed to have suffered injuries arising from unsafe premises. In the authorities where the Trendtex test has been applied, the commercial interest has gone beyond a mere personal interest in profiting from the outcome of the proceedings and has required an interest by the assignee in the assignor or its business affairs or activities which the assignment may in some way protect. These observations are applicable, mutatis mutandis , to the present case.


case_title: National Mutual Property Services (Australia) Pty Ltd v Citibank Savings Ltd (1995) 132 ALR 514


case_text: the validity of the assignment, ICM relied on two propositions before the Federal Magistrate: (a) The cause of action was unable to be assigned by AAC to Mr Young because it was a bare cause of action and Mr Young had no genuine commercial interest to support he assignment (ICM cited Salfinger v Niugini Mining (Australia) Pty Ltd (No 3) [2007] FCA 1532 at [108] - [124] ; Monk v The Australian & New Zealand Banking Group Limited (1994) 34 NSWLR 148 at 152 ( Monk )); (b) The assignment was procured in breach of fiduciary duties owed by Mr Young to the shareholders of AAC, and on this basis the proper exercise of the Court's discretion would be to refuse to set aside the Bankruptcy Notice (ICM cited Re Daley; ex parte National Australia Bank Ltd (1992) 37 FCR 390 at 395 ( Daley )). His Honour cited Heerey's decision in Daley. In Daley , the debtor, Mr Daley was a director and the sole beneficial shareholder of certain companies, and had guaranteed their liability to a bank. The bank had a judgment against Mr Daley on credit card liabilities and served a bankruptcy notice on him. One of the companies sued the bank for $45,811.28 which represented the total of the amounts of cheques drawn on the company's account which the bank had, allegedly wrongfully, honoured. That company, for a consideration of $1.00, assigned "the Debt" to Mr Daley. Daley is distinguishable because, first, Mr Young was not a guarantor of AAC; second, what was assigned in Daley was a debt rather than a bare cause of action for unliquidated damages for breach of contract as in the present case; and, third, Mr Daley was the sole shareholder in the assignor. At the date of the assignment, Mr Young held no shares in AAC. As noted at [51]-[54] above, it is agreed that the appeal is to be determined on the basis that at the time of the assignment Young's Rural Services Pty Ltd held one of six shares issued in AAC and Mr Young was the sole director and shareholder of Young's Rural Services Pty Ltd.


case_title: Re Timothy's Pty Ltd and the Companies Act [1981] 2 NSWLR 706


case_text: the validity of the assignment, ICM relied on two propositions before the Federal Magistrate: (a) The cause of action was unable to be assigned by AAC to Mr Young because it was a bare cause of action and Mr Young had no genuine commercial interest to support he assignment (ICM cited Salfinger v Niugini Mining (Australia) Pty Ltd (No 3) [2007] FCA 1532 at [108] - [124] ; Monk v The Australian & New Zealand Banking Group Limited (1994) 34 NSWLR 148 at 152 ( Monk )); (b) The assignment was procured in breach of fiduciary duties owed by Mr Young to the shareholders of AAC, and on this basis the proper exercise of the Court's discretion would be to refuse to set aside the Bankruptcy Notice (ICM cited Re Daley; ex parte National Australia Bank Ltd (1992) 37 FCR 390 at 395 ( Daley )).


case_text: referred to cl 10 at [18] above. Clause 10 was as follows: The Licensor or their agent shall sell the seed or product delivered to it by the grower (or otherwise subject to this agreement) via the payment schedule as per attachment. Clause 10 appears to be a promise by AAC to ICM that AAC or Namoi will sell seed and product delivered to "it" by ICM "via the payment schedule as per attached". It is common ground that at least the form of the Commercial Crop Contract was attached. There is a sort of payment schedule in cl 4 of the Commercial Crop Contract. That clause listed "Guaranteed Minimum Prices" promised to ICM as the grower. It appears that either AAC was, through its agent Namoi, a party to the Commercial Crop Contract as a principal whose existence and identity were not disclosed on the face of that document, or at least the agent Namoi entered into the Commercial Crop Contract in its own right but AAC approved of its doing so as the necessary and contemplated means of implementing the Grower's Licence. Even on the latter basis, it is arguable that AAC was bound by Mr Young's conduct on behalf of Namoi in the discussion on 29 May 2003. The date fixed for completion of the Commercial Crop Contract, 30 June 2003, was not intended to be of the essence of that contract. I mean that ICM was not entitled immediately following 30 June to terminate the contractual relationship for Namoi's failure to pay on that date. This is demonstrated by the second and last sentences of cl 3(c). The whole of cl 3(c) is as follows: Subject to normal seasonal conditions, delivery and payment under this contract is to be completed prior to 30 June 2003. If due to extraneous circumstances by either party that this contract is not completed by this date then mediation with regards to settlement terms must occur. A suggestion is that if the Grower is deemed to be at fault they would not charge the Licensor carry (storage) from this date and the credit limit in place would be renegotiated. If the Licensor is deemed to be at fault then a negotiated percentage of the balance of the products to be paid at this date. The present case concerns an assignment of a bare cause of action for unliquidated damages for breach of contract, not of a property right to which a cause of action is ancillary. The parties accepted that in these circumstances the assignment could be sustained only if Mr Young had a genuine commercial interest in taking the assignment and enforcing it for his own benefit: see Trendtex Trading Corporation v Credit Suisse [1982] AC 679 at 703, which has been followed in many cases in Australia including, but not limited to, Re Timothy's Pty Ltd and the Companies Act [1981] 2 NSWLR 706; Commonwealth v Ling (1993) 44 FCR 397 ; National Mutual Property Services (Australia) Pty Ltd v Citibank Savings Ltd (1995) 132 ALR 514 ; and see G Tolhurst, The Assignment of Contractual Rights (Hart Publishing, 2006) at [6.59]ff . The circumstances of the present case are analogous to those in Monk in which the assignee's interest was that of obtaining a set-off against a judgment debt. In that case, Cohen J said (at 153): The plaintiff's only apparent interest is in the possibility of his becoming a creditor of the Bank. That is, his interest is in using the debt which might arise from the cause of action for his personal benefit. That no doubt is the interest of any assignee. The using of the debt as a set-off against the judgment debt is merely an example of obtaining some personal benefit. In that regard the plaintiff is in no stronger position than he would be if he had obtained an assignment of a cause of action for negligence by a customer of the Bank who claimed to have suffered injuries arising from unsafe premises. In the authorities where the Trendtex test has been applied, the commercial interest has gone beyond a mere personal interest in profiting from the outcome of the proceedings and has required an interest by the assignee in the assignor or its business affairs or activities which the assignment may in some way protect. These observations are applicable, mutatis mutandis , to the present case.


case_title: Pradhan v Holmes [2001] FCA 1560

case_text: In the draft report, the Committee noted that Adjudicative Referral No 187 which had been issued to the applicant contained wording which was similar to the wording in investigative and adjudicative referrals considered by the Federal Court in the case of Pradhan v Holmes [2001] FCA 1560 ('Pradhan') and found by the Court in the Pradhan case to be invalid. The Committee said that it had withheld consideration of the matter until validating legislation, which retrospectively validated the Adjudicative Referral, became effective on 18 December 2002. It had then resumed consideration of the matter. 9 The applicant was invited to make submissions in respect of the draft report. The applicant's solicitor, Mr Malcolm J Ayoub, in an eight page letter dated 25 March 2004, made submissions on behalf of the applicant. In the letter, the applicant's solicitor pointed out that the submissions were not made with the benefit of a transcript. The solicitor also stated that the applicant had made errors in answers that he had given to certain questions at the hearing due to his ill health at the time. The solicitor said that the applicant had administered to himself strong pain killers that could cause confusion and drowsiness. It was also said that at the time of the hearing the applicant was also suffering from recognised health problems such as hypertension, Type II diabetes and hyperuricaemia. The solicitor referred to an enclosed copy of a medical certificate from Dr M D Hawkins dated 24 November 2000 which referred to certain conditions from which the applicant was suffering. The applicant's solicitor said that whilst it was recognised that the medical certificate was dated prior to the hearing, it did show 'evidence of [the applicant's] health at the time leading up to the hearing and shows evidence of what his health may have been at the time of the hearing...' 10 The applicant's submissions also referred to the delay between the hearing, which concluded on 26 July 2001, and the handing down of the draft report on 28 January 2004 a delay of some two and a half years. The letter went on to say: '...and it is of some concern that [the applicant's] decision was not prepared until specifically legislation had been amended...that validated Adjudicative Referral No 187. It seems clear that the decision was withheld until the law had changed so that there was no way that [the applicant] could not have been alleged to have committed any inappropriate behaviour until this validation of the amendments.'