case_text: In a third alternative explanation of the ground, Mr Silva drew analogy with an approach sometimes evident in judicial decision and well accepted in jurisprudence in England. That is, if a decision-maker does not give reasons, a court can presume that the decision-maker had no good reason, see Padfield v Minister of Agriculture, Fisheries and Food [1968] UKHL 1 ; [1968] AC 997, at 1053 to 1054, 1061 to 1062. That bare proposition clearly is inapplicable even if it could be said to represent Australian law. Here there is an express statutory exemption from a general obligation to give written reasons. To apply the presumption to which I had referred would make a nonsense of that exemption. 14 Mr Silva sought to avoid that inconvenient result by saying that if the decision was infected on its face by jurisdictional error and if no reasons were given, it is assumed there were no good reasons. The absence of reasons in this setting seems to serve no operative purpose given that a jurisdictional error has first to be discerned. 15 In short, however one seeks to package this particular ground of appeal and the constitutional question it raises, I am satisfied that it has no reasonable prospects of success. For that reason, I would not give leave for it to be raised on the appeal.


case_outcome: cited

case_text: In relation to ground 2, I am satisfied that the Tribunal afforded the appellant a reasonable opportunity to respond to adverse material in keeping with its obligations to accord natural justice. It is for the Tribunal, within recognised limits, to make findings as to credit: Re Minister for Immigration & Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 ; (2000) 168 ALR 407 at [67] . The weight to be given to particular evidence is a matter for the Tribunal. It was open to the Tribunal to reach the conclusions that it did given its observations regarding the demeanour of the appellant, and the inconsistency between the various accounts that he had provided. 22 Ground 3 is devoid of any meaningful content. Nothing further need be said about it. 23 The appeal should be dismissed with costs. I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 13 November 2007 The Appellant appeared in person Counsel for the Respondent: Ms E M James Solicitors for the Respondent: Clayton Utz Date of Hearing: 13 November 2007 Date of Judgment: 13 November 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1741.html


case_outcome: followed

case_text: That pursuant to Federal Magistrates Court Rule 19.02(1) the Respondent be found guilty of contempt of this Court for failing to comply with the order for discovery made by this Court on 1 July 2004 in that it did not discover the full chain of email correspondence dated 4 December 2001 variously between the Applicant and Ms Leesa Baker and then Ms Baker and Ms Hall and Ms Lindsay.' FACTS 3 Because of the manner in which the Federal Magistrate decided the case, he did not need to set out a chronology of events. It is best to do so in order to deal with the issues on appeal. The following statement of facts is substantially drawn from the submissions for the appellant. I am satisfied the facts are properly based in the evidence. It needs to be borne in mind that it was only the appellant's evidence which was relevant. The appellant was entitled to have that evidence considered at its highest ( May v O'Sullivan [1955] HCA 38 ; (1955) 92 CLR 654; Amalgamated Television Services Pty Ltd v Marsden [2001] NSWCA 32 ; (2001) 122 A Crim R 166 per Ipp AJA at 172 176). I shall discuss some of the evidence in more detail when considering the individual charges. 4 The appellant commenced full-time employment with the respondent as an accountant on 15 December 1997. In December 1998 the appellant was promoted to financial controller and received substantial pay increases during 1999 and 2000. In May 2000 the appellant married. In November 2000 the appellant became pregnant and in August 2001 gave birth to her son. In November 2001, during her maternity leave, the appellant met with Mr Stephen Byron, the respondent's Managing Director, and indicated that she would like to return to work in February 2002 on a part-time basis. Whilst Mr Byron said he would consider her request, the appellant was uneasy about the way in which he treated her; she generally considered that he had been evasive and was unlikely to accede to her request.


case_title: Australasian Meat Industry Employees' Union and Others v Mudginberri Station Pty Limited [1986] HCA 46 ; (1986) 161 CLR 98

case_text: The other two charges are different in nature as they involve alleged breaches of orders ( cf Australasian Meat Industry Employees' Union and Others v Mudginberri Station Proprietary Limited [1986] HCA 46 ; (1986) 161 CLR 98). 27 The subpoena in question was issued on 12 February 2004 directing the respondent to produce the documents on 26 February 2004 in the form described in paragraph [ 11 ] of these reasons. The full email chain containing six separate emails dated 4 December 2001 was not produced, although two of those six emails were produced. 28 The Federal Magistrate found that there was no prima facie case for the respondent to answer as the subpoena called for material from the server, not from the back-up tapes. He said that there was no evidence that the email chain in question was on the respondent's server at the relevant time. He was not prepared to infer that the full email chain was still on the server in February 2004.


case_outcome: applied

case_text: This is a circumstantial case. The Federal Magistrate was required to take into account all inferences most favourable to the appellant, which could reasonably be drawn from the primary facts (see the decision of the Privy Council in Haw Tua Tau v Public Prosecutor [1982] AC 136 at 150). In my opinion, it would not be possible, on the primary facts, to exclude the hypothesis that any destruction of the emails that took place was the result of actions by persons with no knowledge of the proceedings or potential proceedings or was a result of a procedure which did not take account of those proceedings. It is quite possible that a system could have existed which provided for the destruction of emails at fixed times during the year, at a particular length of time after an employee has left or as directed by some person in the administration or technology areas to suit the convenience of administration. In other words, any destruction may have been the result of a routine procedure. There is no inference available from the primary facts that would exclude that hypothesis unless there is speculation as to the circumstances of the alleged destruction. 24 Counsel for the appellant referred to the evidence of Mr Ferraro that it was not usual commercial practice to delete a former employee's email mailbox if that employee had played an important role in the organisation. Even if that evidence were admissible, it would not say anything about the commercial practices of this respondent and would not assist in denying the hypotheses to which I have referred.


case_text: This analysis is a symptom of what appears to me to be an underlying problem, namely, that the party charged with interfering with the course of justice is a corporation with a number of employees carrying out a number of functions. The principles according to which a corporation can be guilty of contempt of court by interfering with the course of justice were not a topic raised below and only surfaced during the course of argument on this appeal. Even if a corporation can be guilty of such a charge, it is not legitimate to aggregate the knowledge of individuals and attribute the aggregated knowledge to the corporation ( R v AC Hatrick Chemicals Pty Ltd (1995) 152 A Crim R 384 at 394; cf, in a different context, Krakowski v Eurolynx Properties Ltd [1994] HCA 22 ; (1995) 183 CLR 563 at 582 583). In the present case, it is not possible to know who deleted the emails (that is if they were deleted) or on whose instructions the emails were deleted. That being the case, it is not possible to attribute to those persons the knowledge held by others within the organisation as to the actual or potential litigation. The relevant knowledge as to the litigation would have to be held by the representative of the corporation who was also responsible for the deletion. Further, that person would need to be the directing mind of the corporation for guilt of such a charge--in effect, a common law offence requiring mens rea--being attributed to the company ( Tesco Supermarkets Ltd v Nattrass [1971] UKHL 1 ; [1972] AC 153). The evidence in this case simply does not permit any such finding to be made.


case_title: R v AC Hatrick Chemicals Pty Ltd (2005) 152 A Crim R 384


case_title: Tesco Supermarkets Ltd v Nattrass [1971] UKHL 1 ; [1972] AC 153


case_text: As to the second ground the appellant has not identified any information that the Tribunal was obliged to provide to him under s 424A(1) of the Act. As his Honour concluded (at [32]), the appellant's own evidence, on which the Tribunal's decision was based, falls within the exception in s 424A(3)(b). The Tribunal was not obliged to put to the appellant the Tribunal's own reasoning or inconsistencies that it found in the appellant's evidence. The Tribunal's subjective appraisals of the evidence do not amount to information for the purposes of s 424A ( SZBYR at [18]). Further, the Tribunal is not obliged to make the appellant's case for him ( Abebe v Commonwealth of Australia [1999] HCA 14 ; (1999) 197 CLR 510 at 576 per Gummow and Hayne JJ).


case_text: In relation to the second ground, his Honour concluded that the Tribunal's decision was based entirely on evidence obtained from the appellant and thus fell within s 424A(3)(b) of the Act. The Tribunal's own doubts by reason of its reasoning process or inconsistencies in relation to the appellant's evidence were not, his Honour said, information for the purposes of s 424A (at [30]-[31] citing SZBYR v Minister for Immigration & Citizenship (2007) 235 ALR 609 at [18]). 8 In his notice of appeal the appellant raises the following grounds: 1. The appellant believes the Tribunal rejected his claims on no reasonable grounds. The appellant claims that he has a fear of returning to China due to the facts that he renounced his membership of Chinese Communist Party in Australia and has became [sic] a political dissident. In the decision the Tribunal repeatedly said it does not accept his claims, but it never gives a sound reason. It breached the s 420 of the Migration Act , which requires the Tribunal to be fair and just when conducting a review. 2. The [Tribunal] decision was affected by jurisdictional error in that the Tribunal failed to invite the applicant to comment on adverse information. The Tribunal breached s 424A of the Migration Act . The Tribunal found the oral evidence the applicant gave was vague and evasive. The Tribunal never said this to the applicant during the hearing, and the applicant did no [t] think his evidence was vague and evasive. The appellant claims that the Tribunal should ask him to provide more details [sic] evidence. The Tribunal should have said to him that his evidence was vague and evasive, and then he would have given more evidence to the Tribunal. 9 The appellant, who appears in person assisted by an interpreter, made no submissions in elaboration of those grounds, either in writing or orally at the hearing. 11 As to the second ground the appellant has not identified any information that the Tribunal was obliged to provide to him under s 424A(1) of the Act. As his Honour concluded (at [32]), the appellant's own evidence, on which the Tribunal's decision was based, falls within the exception in s 424A(3)(b). The Tribunal was not obliged to put to the appellant the Tribunal's own reasoning or inconsistencies that it found in the appellant's evidence. The Tribunal's subjective appraisals of the evidence do not amount to information for the purposes of s 424A ( SZBYR at [18]). Further, the Tribunal is not obliged to make the appellant's case for him ( Abebe v Commonwealth of Australia [1999] HCA 14 ; (1999) 197 CLR 510 at 576 per Gummow and Hayne JJ).


case_outcome: considered

case_text: The appellants are husband and wife and are citizens of China. Their claim is based upon the husband's claim to fear persecution for reason of his political opinion. I shall refer to the appellants compendiously as 'the appellant'. The appellant's application for a Protection (Class XA) visa was refused by a delegate of the Minister. On an application for review the delegate's decision was affirmed by the Tribunal. An application for judicial review of the Tribunal's decision was dismissed by Scarlett FM ( SZKII v Minister for Immigration & Anor [2007] FMCA 1591). 2 Before the Tribunal the appellant confirmed that he had come to Australia to visit his sister in-law and not for a refugee related reason. He claimed that his political opinions had changed since he came to Australia and that, because of that change and actions that he took in Australia, he feared persecution upon return to China. 3 The Tribunal, in its reasons, set out the appellant's claims. During the course of the hearing the Tribunal alerted the appellant to its concerns about the veracity of his claims and also noted that the Tribunal had serious doubts about what the appellant had said at the hearing concerning his political opinions and activities in Australia. The Tribunal found the appellant to be ' a witness of low credibility '. It found that much of his evidence at the hearing was ' vague and evasive '. It found the appellant's account at the hearing of how he changed his political opinion and the end result of that to be ' entirely unconvincing '.


case_text: At a later stage in these reasons, I will refer to the decision of the Privy Council in Cudgen Rutile (No 2) Pty Ltd v Chalk [1975] AC 520 and that of the High Court in Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355. Both decisions address the effect of irregularities in the exercise of statutory power. However, in considering the consequences of any failure by the council to give notices pursuant to paras 6(1)(b) and (c), it is not necessary to have recourse to those decisions. In my view, the absence of notification is of no significance. Pursuant to subs 9(2) of the Land Holding Act, upon the council approving the Pollards' application, they became entitled to the grant of a lease in perpetuity over Lot 13, and the Governor-in-Council was authorized to grant such a lease. Pursuant to subs 10(1) the title to Lot 13 thereby divested from the council, and the land became Crown land. However, pursuant to subs 10(3), the Crown could only lease it in perpetuity to the Pollards. Nothing in the Land Holding Act supports the proposition that the rights conferred by subs 9(2) were liable to divesture in the event of non-compliance by the council with its obligations pursuant to paras 6(1)(b) and (c). 26 In the course of the hearing, I referred counsel to the decision of the Judicial Committee of the Privy Council in Cudgen Rutile (supra), where their Lordships said, concerning the power of the State of Queensland to alienate Crown land: 'As a starting point, their Lordships accept as fully established the proposition that, in Queensland, as in other states of the Commonwealth of Australia, the Crown cannot contract for the disposal of any interest in Crown lands unless under and in accordance with power to that effect conferred by statute. In Queensland the legal basis for this power, and for the limitations upon it, is to be found in the Constitution Act of 1867, of which section 30 provides for the making of laws regulating the sale, letting, disposal and occupation of the waste lands of the Crown, and s 40 vests the management and control of the waste lands of the Crown in the legislature. Numerous pronouncements in the courts in Australia have given effect to this principle ... . It follows as a logical consequence that when a statute, regulating the disposal of Crown lands, or of an interest in them, prescribes a mode of exercise of the statutory power, that mode must be followed and observed: and if it contemplates the making of decisions, or the use of discretions, at particular stages of the statutory process, those decisions must be made, and discretions used, at the stages laid down.' 27 No attempt has been made to distinguish this case upon the basis of any subsequent constitutional changes. My concern was that by parity of reasoning the only power to deal with land pursuant to the Land Holding Act would be by proceeding in accordance with the terms of that Act, and that both the council and the State were obliged to act on that basis. This would raise for consideration the question of whether or not any departure from that procedure, such as those to which I have referred, would invalidate the process leading to the issue of a lease. It was submitted that the decision in Cudgen should be limited in its application to the alienation of Crown land, strictly so described. It was submitted that Lot 13 is not Crown land. However I see no material distinction for present purposes. In any event, s 10 contemplated the relevant land becoming Crown land before the creation of any instrument of lease.


case_text: At a later stage in these reasons, I will refer to the decision of the Privy Council in Cudgen Rutile (No 2) Pty Ltd v Chalk [1975] AC 520 and that of the High Court in Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355. Both decisions address the effect of irregularities in the exercise of statutory power. However, in considering the consequences of any failure by the council to give notices pursuant to paras 6(1)(b) and (c), it is not necessary to have recourse to those decisions. In my view, the absence of notification is of no significance. Pursuant to subs 9(2) of the Land Holding Act, upon the council approving the Pollards' application, they became entitled to the grant of a lease in perpetuity over Lot 13, and the Governor-in-Council was authorized to grant such a lease. Pursuant to subs 10(1) the title to Lot 13 thereby divested from the council, and the land became Crown land. However, pursuant to subs 10(3), the Crown could only lease it in perpetuity to the Pollards. Nothing in the Land Holding Act supports the proposition that the rights conferred by subs 9(2) were liable to divesture in the event of non-compliance by the council with its obligations pursuant to paras 6(1)(b) and (c). 28 A more useful submission concerned the applicability of the decision of the High Court in Project Blue Sky (supra) at [93] where the majority (McHugh, Gummow, Kirby and Hayne JJ) said, concerning the question of failure to comply with a statutory requirement regulating the exercise of a statutory power: 'A better test for determining the issue of validity is to ask whether it was a purpose of the legislation that an act done in breach of the provision should be invalid. This has been the preferred approach of courts in this country in recent years, particularly in New South Wales ... . In determining the question of purpose, regard must be had to "the language of the relevant provision and the scope and object of the whole statute" ... .' 29 At [97] their Honours continued: 'Courts have always accepted that it is unlikely that it was a purpose of the legislation that an act done in breach of a statutory provision should be invalid if public inconvenience would be a result of the invalidity of the act ... .' 30 The Land Holding Act required that there be public notification of any application for the exercise of the council's power, and that any interested party should be heard in opposition. Observance of those requirements may well have been a condition precedent to the exercise of the power. However I see no reason why mere requirements as to the form of the application should be so treated. In any event, at the time of the application, s 40 of the Acts Interpretation Act [1954-1962] (Qld) provided: ' Variations of forms. Whenever, by any Act or by any instrument made thereunder, forms are prescribed, it shall be deemed to be provided, unless the contrary intention appears and provided that deviations from the prescribed forms occurring therein are not calculated to mislead, that forms to the like effect shall be sufficient.' 31 The application was clearly made by both Mr and Mrs Pollard. The absence of Mrs Pollard's signature could not, in any sense, mislead a person reading it. As to the inclusion of the children, the assertion that each had attained the age of 18 years was patently false, given the inclusion of their birthdays. In my view there was sufficient compliance with the statutory and regulatory requirements as to the form of the application. 32 Another matter of potential concern is the fact that the Pollards did not live at the property between 1994 and 2002. Section 18 of the Land Holding Act provided that the lessee must be a qualified person as defined in s 4. Such a person had to be, in the opinion of the council, a resident of the relevant community. Section 22 provided for forfeiture of the lease if the lessee ceased to be a qualified person or if the premises were not occupied 'by or on account of' the lessee for a continuous period of two years. The Pollards' absence from 1994 to 2002 was quite lengthy. One might have expected that questions would have arisen concerning the possible operation of s 18 or s 22. However it was for the council to act as it thought appropriate. It is not necessary to take this matter any further.


case_outcome: referred to

case_text: The order which is sought in the present case is in similar terms to an order made by Barrett J in Re Porter and Another as joint administrators of Priceright Construction Pty Limited (2006) 57 ACSR 206 at [7]. His Honour observed at [8] that it is now well recognized that the Court has the power to extend the convening period in a way that s 439A of the Act does not itself allow. See also the decision of Lindgren J in Re Double V Marketing Pty Ltd (in admin) [1995] FCA 1151 ; (1995) 16 ACSR 498.


case_text: The order which is sought in the present case is in similar terms to an order made by Barrett J in Re Porter and Another as joint administrators of Priceright Construction Pty Limited (2006) 57 ACSR 206 at [7]. His Honour observed at [8] that it is now well recognized that the Court has the power to extend the convening period in a way that s 439A of the Act does not itself allow. See also the decision of Lindgren J in Re Double V Marketing Pty Ltd (in admin) [1995] FCA 1151 ; (1995) 16 ACSR 498. 18 In all the circumstances it seems to me that the orders that are sought ought to be made for the reasons set out in Mr Vouris's affidavit. The orders are in accordance with the terms which Barrett J described in Re Porter at [10] and [12] as appropriate orders to be made in an application of this type. 19 Accordingly I will make orders 1, 2 and 3 as set out in the originating process. I will order that the orders be entered forthwith. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jacobson. Associate: Dated: 7 May 2008 Counsel for the Applicants: Mr E C Muston Solicitor for the Applicants: Pigott Stinson Lawyers Date of Hearing: 30 April 2008 Date of Judgment: 30 April 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/622.html


case_title: Re Taylor (1995) 16 ACSR 774

case_text: The period of the permitted adjournment is within the approach which Brownie J took in Re Taylor (1995) 16 ACSR 774. The effect of what his Honour said was that a further extension which would more than double the period permitted by the Act ought not to be made. The present order would not do so.


case_text: The manner in which this Court exercises the discretion conferred by s 17F(1) is informed and assisted by the views expressed by the Australian Prudential Regulation Authority. This Court has long recognised the role played by the Authority and the reliance placed by the Court upon its review of the proposed scheme and its assessment as to whether or not it should oppose an order seeking confirmation. Albeit in the comparable context of a transfer under Part 9 of the Life Insurance Act 1995 (Cth) , in Colonial Portfolio Services Ltd v Australian Prudential Regulation Authority [1999] FCA 1779 , Mathews J observed: [28] It is relevant to note that APRA, which operates as something of a watchdog in relation to transfers under Pt 9 of the Act, had no objection to the confirmation of the scheme. Nor did APRA arrange for an actuarial report on the scheme, as it is entitled to do under s 192 of the Act. It can be inferred that APRA regarded the reports furnished by the applicants as adequate. ... Like comments have also been made in other cases: Re Royal & Sun Alliance Life Assurance Ltd [2000] FCA 1259 at [23] , [2000] FCA 1259 ; 104 FCR 37 at 40 per Katz J. See also: Application of Zurich Insurance Company and Converium Limited [2003] FCA 1519 at [4] per Hely J; Application of Advance Life Insurance Limited (Unreported, FCA, Sheppard J, 18 February 1997).


case_title: Application of Zurich Insurance Company and Converium Limited [2003] FCA 1519


case_text: Section 17C sets out those steps which must be undertaken before an application may be " made " for confirmation. For the purposes of s 17C, it is considered that an application for confirmation of a scheme is " made " at that point in time when a hearing is held which seeks confirmation and not at that point in time when proceedings are filed with this Court: Re Insurance Australia Ltd [2004] FCA 524 at [30] [37] per Lindgren J, [2004] FCA 524 ; 139 FCR 450 at 458 9. See also: Calliden Group Limited in the matter of Calliden Group Limited [2007] FCA 2019 at [81] .


case_title: Colonial Portfolio Services Ltd v Australian Prudential Regulation Authority [1999] FCA 1779


case_title: PMI Indemnity Ltd [2005] FCA 1842

case_text: The discretion conferred by s 17F is conferred in general terms and does not specify any criteria to be satisfied. It must, however, be a discretion exercised in a manner which promotes the objects of the Act, including the protection of the interests of policy holders in ways consistent with " the continued development of a viable, competitive and innovative insurance industry ". A " critical consideration " is " whether affected policyholders will be detrimentally affected by the implementation of the scheme ": PMI Indemnity Limited (No 2) [2005] FCA 1842 at [24] per Lindgren J. 14 Section 32 of the 1973 Act, it should further be noted, provides that the Authority may also determine " prudential standards " that must be complied with. Of immediate relevance to the present proceedings are three such standards, namely: (i) Prudential Standard GPS 110 -- which deals with " Capital Adequacy " and aims to ensure that the security of policy holder obligations of all insurers is established at an appropriate level by requiring that each general insurer maintain at least a minimum amount of capital; (ii) Prudential Standard GPS 310 -- which deals with audit and actuarial reporting and outlines the roles and responsibilities of a general insurer's Approved Actuary; and (iii) Prudential Standard GPS 410 -- which deals with the transfer and amalgamation of the insurance business of a general insurer. Also of relevance is: (iv) A " Prudential Practice Guide (Draft) " which deals with " Capital Adequacy " and " Capital Management ". 15 The " Summary of the Scheme " in the present proceedings was approved by the Australian Prudential Regulation Authority and sets out the effect of the Scheme as follows: Summary of scheme The following is a summary of the scheme: (a) All of the rights, liabilities and obligations of BIC under policies issued or underwritten by BIC in the conduct of BIC's Australian insurance business will be transferred to A&G and become rights, liabilities and obligations of A&G. BIC will be released and discharged from these liabilities and obligations and will cease to operate an insurance business in Australia. (b) A cash amount equal to the value of the liabilities assumed by A&G (net of reinsurance and third party recoveries) will be transferred from BIC to A&G. Reinsurance treaties held for the benefit of BIC will be assigned to A&G. (c) Except for A&G being substituted for BIC as insurer, the transfer will not result in any change to policy benefits or policy terms and conditions under policies issued or underwritten by BIC. (d) The rights, benefits, obligations and liabilities of holders of policies issued by BIC in Australia will be the same as if those policies had been issued or underwritten by A&G instead of BIC. Claims under such policies are to be made to A&G, instead of BIC. (e) BIC will bear the costs and expenses relating to the transfer and the scheme. (f) The transfer will take effect on the first business day after the date on which the scheme is confirmed by the Court.


case_title: Re Insurance Australia Ltd [2004] FCA 524


case_title: Re Royal & Sun Alliance Life Assurance Ltd [2000] FCA 1259


case_text: It is clear that regard must be had to the relevant conduct as a whole, and in context. See generally Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45. The question whether a representation made by a person to the public, or a section of it, would be likely to mislead or deceive must be answered without regard to whether that person intends to mislead or deceive. It is not a question of whether, if the person makes these representations, he or she would be acting honestly and reasonably. It is simply a question of whether potential members of the class to whom the representations are to be addressed (which include the astute and the gullible, the intelligent and the not so intelligent, and the well educated and the poorly educated) are at serious risk of being misled or deceived: see .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 at [12] [15] and National Exchange Pty Ltd v ASIC (2004) 49 ACSR 369.


case_outcome: discussed

case_title: Australian Society of Accountants v Federation of Australian Accountants Inc (1987) 9 IPR 282; [1987] FCA 298

case_text: In Australian Society of Accountants v Federation of Australian Accountants Inc (1987) 9 IPR 282, a body calling itself the "Federation of Australian Accountants" had published advertisements in the Australian Financial Review newspaper stating: "(FAA Coat of Arms) The Federation of Australian Accountants wish to invite suitably qualified accountants to join our federation. We are currently running examinations to increase your status to C.P.A. Any accountant who wishes to do so with our federation is encouraged to inquire. Any accountant that becomes a C.P.A. with our federation will be allowed to use our logos for advertising purposes. Federation of Australian Accountants Inc Box 87, GPO Adelaide 5001." Having regard to the issues raised in the present case, it is worth noting that the decision does not make clear whether the respondent Federation intended its members to be referred to as Certified Practising Accountants or Certified Public Accountants. 20 CPA Australia, which at that time was the Australian Society of Accountants, sought injunctive relief. In granting that relief, Woodward J stated (at 285 286): "Having studied the affidavits, and considered counsel's arguments, I am left in no doubt that, over the last three years, the applicant has gone to great trouble and expense -- to the tune of over $3 million -- to establish the status of its qualification of Certified Practising Accountant or CPA. I am satisfied that, even in that comparatively short space of time, it has built up a substantial reputation in the accountancy profession and in the general community for that qualification. The expression "Certified Practising Accountant" was apparently unknown in Australia before the applicant began its campaign, and there is no evidence to suggest that it is used in any other English-speaking country. It seems that the expression "Certified Public Accountant" has currency in the United States, but there is no evidence before me to indicate how widespread its usage is or just what status it conveys. The applicant is a large professional organisation of accountants, having some 53,000 members. Its antecedent bodies date back to 1887. It charges its members an annual subscription of $214, spends some $17 million each year on its professional objects, and employs 160 people. It is, in short, a very large and reputable professional body, which recruits some 2500 new members each year -- over 70 percent of those who graduate in accountancy from tertiary institutions. Along with the Institute of Chartered Accountants, it has provided the only regulation of the profession in most states of Australia over a number of years." 21 Having made those findings, Woodward J further accepted (at 286) that: "... the opening paragraph of the advertisement is likely to mislead students, and other persons wishing to obtain accountancy qualifications, into believing they can obtain the applicant's CPA qualification, or its equivalent, from the respondent federation. Users of accountancy services may also be misled into thinking that the federation is in some way connected with the applicant, or that any organisation can award such a qualification, thus devaluing it in the eyes of such potential clients." 23 Woodward J granted the injunctions sought, including orders that the respondents be restrained not only from publishing the advertisement in question, but also: "from representing by any other means that the firstnamed respondent is entitled to confer CPA (Certified Practising Accountant) status on members of the firstnamed respondent;" (For the relevant orders, see the unreported version: Australian Society of Accountants v Federation of Australian Accountants Inc [1987] FCA 298.) 31 In Australian Society of Accountants v Federation of Australian Accountants Inc Woodward J reached precisely the same conclusion regarding the words "Certified Practising Accountant". His Honour's decision was upheld by a Full Court. Of course, that decision turned on a question of fact in a case involving only one of the two parties before me. However, it is fair to say that his Honour reached that view on the basis of only three years of promotion of the designation "Certified Practising Accountant". The evidence before me is much stronger. The term has now been used for more than twenty-three years, and as previously indicated has found its way into both State and Commonwealth legislation. 32 For these reasons, Mr Dunn's argument that the word "certified" means nothing more than "qualified", and that as he has a degree in accounting, and practises as an accountant, he is entitled with impunity to describe himself as a "Certified Practising Accountant", must fail. The term has a distinct secondary meaning, and as a consequence Mr Dunn's use of it would be likely to mislead or deceive. 33 Mr Dunn's argument fails at other points as well. Though he has a degree, one would not normally describe the University that granted it to him as having "certified" him as a practising accountant. The reason is plain. Many graduates in accounting do not go on to practise in that field.


case_title: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45


case_text: Mr Dunn is a qualified accountant. As previously indicated, he is not a member of the applicant. Nor is he a member of either of the other umbrella organisations of accountants. He describes himself as "proudly independent". He has no interest in joining any such organisation, and he exhibits barely disguised contempt for them. He has long been engaged in challenging their right to hold themselves out as having some special expertise which he lacks. See, for example, Dunn v Australian Society of Certified Practising Accountants (1996) ATPR |P41-461; Dunn v Australian Society of Certified Practising Accountants [1996] FCA 1193 ; Dunn v Australian Society of Certified Practising Accountants [1998] FCA 1199 ; and Dunn v Australian Society of Certified Practising Accountants [1999] FCA 651.


case_title: Dunn v Australian Society of Certified Practising Accountants [1996] FCA 1193


case_title: Dunn v Australian Society of Certified Practising Accountants [1998] FCA 1199


case_title: Dunn v Australian Society of Certified Practising Accountants [1999] FCA 651


case_text: Woodward J's decision was upheld on appeal to the Full Court: Federation of Australian Accountants Inc v Australian Society of Accountants [1988] FCA 101. Lockhart J with whom Northrop J agreed) described, and dismissed, the central argument raised by the Federation on appeal in these terms (at 10 11): "The principal argument on the appeal was that the absence from the advertisement of a stated and specific link between the initials "CPA" and the Society was fatal to the Society's case, and that his Honour's findings to the contrary were erroneous. ... The point which resolves the central issues in this appeal is that the letters CPA have plainly acquired a special and distinctive meaning in relation to the accountancy profession in Australia. It is plain that the opening paragraph of the advertisement is likely to mislead students and others wishing to obtain accountancy qualifications into believing that they can obtain the Society's CPA qualification from the Federation."


case_text: The principles which govern s 52 are well established. When determining whether particular conduct was, or is, likely to mislead or deceive it is unnecessary to prove that anyone was actually misled or deceived: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191 at 198. However, evidence that particular individuals have been misled or deceived is admissible, and may be persuasive: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 at 87. The test is objective, and the Court must determine the question for itself: Taco Company Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202. Finally, conduct is likely to mislead or deceive if there is a real and not remote possibility that it will do so. It is not necessary to establish that the degree of likelihood exceeds 50%: Global Sportsman at 87.


case_text: Much the same can be said about Mr Dunn's use of the phrase "Certified Public Accountant". That term closely resembles the designation "Certified Practising Accountant". The visual and aural similarities are real. It is clearly established that the use of different but similar words and phrases can constitute misleading or deceptive conduct. For example, in Mobileworld Communications Pty Ltd v Q & Q Global Enterprise (2003) 61 IPR 98 the Court was concerned with the use by one business of the name "Crazy Ron's". Allsop J held that that name was misleading or deceptive because of its similarity to the pre-established trade name "Crazy John's". His Honour further concluded that disclaimers would not be sufficient, and that injunctive relief was appropriate. 37 Finally, the use of the term "Certified Public Accountant" would be likely to mislead because it suggests that there is some organisation that awards that qualification, and that Mr Dunn has satisfied the requirements of that organisation in order to acquire that status. In fact, the evidence reveals that there is no such organisation. Mr Dunn has not undertaken any continuing education of the kind that the applicant requires in order to grant certification, and he has not undertaken any examinations which are a prerequisite to the designation in question. He may be a public accountant holding tertiary qualifications. However, he is not a "Certified Public Accountant" because no professional body or organisation has conferred that title upon him. 38 In my opinion, the applicant is entitled to the injunctive relief sought under s 80 of the Trade Practices Act . Mr Dunn acknowledged in his final submissions that, unless restrained, he will use one or other of the expressions "Certified Practising Accountant" or "Certified Public Accountant" in his letterhead. That would amount to a contravention of s 52 of the Trade Practices Act , and the applicant is entitled to prevent that from occurring.


case_text: It is clear that regard must be had to the relevant conduct as a whole, and in context. See generally Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45. The question whether a representation made by a person to the public, or a section of it, would be likely to mislead or deceive must be answered without regard to whether that person intends to mislead or deceive. It is not a question of whether, if the person makes these representations, he or she would be acting honestly and reasonably. It is simply a question of whether potential members of the class to whom the representations are to be addressed (which include the astute and the gullible, the intelligent and the not so intelligent, and the well educated and the poorly educated) are at serious risk of being misled or deceived: see .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 at [12] [15] and National Exchange Pty Ltd v ASIC (2004) 49 ACSR 369. 28 Statements that are capable of more than one meaning may be misleading or deceptive provided that the meaning for which the applicant contends is one that would be reasonably open, and might be drawn by a significant number of those to whom the representation is made. In the same way, a statement may contain a representation that is implied, rather than express. That is why a statement that is literally true can be misleading or deceptive: National Exchange at [48] [52].


case_text: Mr Dunn submitted that, even if an injunction were granted, he should not be required to pay the applicant's costs. His longstanding dispute with the applicant regarding its rights to describe its members in the way that it does reflects a genuinely felt sense of grievance on his part. In some respects, he might be regarded as a "stirrer". To paraphrase the remarks of Murphy J in Neal v The Queen [1982] HCA 55 ; (1982) 149 CLR 305 at 316 317, Mr Dunn is entitled to be a stirrer. He is not, however, entitled to exemption from the ordinary rules that govern proceedings in this Court. In accordance with normal practice, costs should follow the event. I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Weinberg. Associate: Dated: 12 December 2007 Counsel for the Applicant: Mr C Caleo SC with Mr J Moore Solicitor for the Applicant: Piper Alderman The Respondent appeared in person Date of Hearing: 10 December 2007 Date of Judgment: 12 December 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1966.html


case_title: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44 ; (1982) 149 CLR 191


case_text: In the context of this case it is particularly important to note that a descriptive name can acquire a secondary meaning that identifies a specific person and that person's goods or services: see S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 363.


case_text: The relevant legal principles are not difficult to state. The law has long protected the names of, and the names adopted by, societies of accountants. See, for example, The Society of Accountants in Edinburgh v The Corporation of Accountants Ltd (1893) 20 R 750 and Society of Accountants and Auditors v Goodway and London Association of Accountants Ltd [1907] 1 Ch 489. 30 I will deal firstly with the applicant's case based upon Mr Dunn's stated refusal to undertake not to use the term "Certified Practising Accountant" in his letterhead. I am satisfied, on the evidence, that those of the applicant's members who have been accorded the qualification of "Certified Practising Accountant" have acquired a reputation through that designation. I accept the applicant's submission that the combination of those three words have a secondary meaning, namely that a person who has that designation has obtained "membership of [the applicant] which, by its tests and examinations and by its rules and requirements as to qualification, confer[s] on its members a status different from that of other members of the profession" who do not have the same qualification: Society of Accountants and Auditors v Goodway and London Association of Accountants Ltd at 500.


case_title: Taco Company Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177


case_text: The relevant legal principles are not difficult to state. The law has long protected the names of, and the names adopted by, societies of accountants. See, for example, The Society of Accountants in Edinburgh v The Corporation of Accountants Ltd (1893) 20 R 750 and Society of Accountants and Auditors v Goodway and London Association of Accountants Ltd [1907] 1 Ch 489.


case_text: The respondent says the 1995 Act by introducing the notion of a 'shape' within the definition of 'sign' in s 6 of the Act and thus within the definition of a 'trade mark' in s 17 of the Act as a ' sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person ' did not bring about the radical change of providing that a registered trade mark would have the effect of restricting access to functional features or innovations. The respondent says the trade mark law of this country recognises a continuing fundamental distinction between a shape, whether expressed in part or the entirety of the goods the subject of the registration, that has an element of 'functional significance' and a shape which bears no functional significance. The respondent says, consistent with observations in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494, were the 1995 Act to enable a registered trade mark to give the owner a monopoly over functional features (and thus suit for infringement of such a registered trade mark) it would indeed have made a radical change to trade mark law and nothing in the Act or in the discussions that preceded it suggest that such a result was intended. Therefore, it follows, it is said, that in the context of contended infringement, once the evidence demonstrates that the shape serves some functional significance, use of the shape (the trade mark) cannot be use as a trade mark. In such a case, it is said the shape adopted in the respondent's goods and consequential use of the shape in brochures and advertising material does not differentiate or distinguish the goods as a badge of origin of the user as a purveyor of those goods but serves to identify (distinguish) the content or features of the goods themselves. In other words, the respondent uses the shape to say in trade 'these are the goods that I sell' not 'know me as the seller or purveyor of these goods by this shape' (although, for trade mark use purposes, the seller need not be specifically identified). 10 The applicant says the respondent has misunderstood the true context in which issues of functionality were discussed Kenman Kandy and related authorities. In this case, the trade mark has been accepted by the Registrar and has been registered. The applicant is the registered owner of a valid shape mark which is not the subject of a challenge or cross-claim for cancellation or rectification of the Register on grounds of lack of distinctiveness . The applicant says that discussions in the authorities of whether a trade mark application is to be rejected if it consists of a shape expressed in the relevant goods so as to achieve a particular technical result or by reason of the nature of the goods or some other functional feature, do not inform in any determinative sense, whether a registered trade mark (assessed in accordance with s 41 of the Act throughout the application stage) is infringed by use of the trade mark or a substantially identical trade mark. In assessing whether the registered trade mark has been infringed for the purposes of s 120(1) of the Act, the applicant says that all the circumstances of use are examined to answer this orthodox question: has the respondent made use of the mark as a 'badge of origin' in the sense that the use indicates a connection in the course of trade between the goods and the user of the sign? Further, the applicant says the S loop, although it in part serves a purpose of catching a wire, the bottom section of the S shape (that is, the lower U-shape of the S loop), serves no functional purpose at all. Secondly, other shapes also catch the wires of a fence and the respondent's fence dropper need not incorporate the S loop, that is, need not use the applicant's trade mark, in order to function as a dropper incorporating a shaped catch. The applicant, in submissions, put it this way, ' ... it must have something that engages on the intermediate wire, but it doesn't have to have that shape. That is our case.' 11 The applicant says that, in fact, the respondent recognises by reliance upon contentions of the applicant's own witnesses, Mr Sachs, and Mr Bailey, that the applicant's article, the fence dropper, has become, through extensive use, well known and is distinguished in the relevant trade by the three dimensional S loop, that is, by the sign comprising the trade mark. The applicant says that a three dimensional shape mark that performs an aspect of function may, as in the case of this mark, distinguish the goods (fence droppers) in the applicant and although a mark may have a functional element, there is no point of principle derived from the authorities that a shape mark cannot serve as a bade of origin by a respondent to distinguish its goods from those of others. The question is whether, contextually, it has been so used by the respondent. An analogue in relation to word marks is a mark that contains a descriptive element which, nevertheless, in the context of contended infringing use, might be seen to serve as a badge of origin. A question will inevitably arise as to whether the use of words containing a descriptive element might make it difficult to demonstrate that the words have been used to distinguish the goods of the respondent, and that difficulty is likely to be all the more pronounced where the mark is a three dimensional shape forming part of the goods. 12 That question will require consideration in these reasons. 65 In Kenman Kandy, Stone J observed that: The 'inherent form' of goods, in my view, can only refer to those aspects of form that have functional significance. Were the 1995 Act to enable the registration of a trade mark that would give the owner a monopoly over functional features, it would indeed have made a radical change to trade mark law. [137] 66 The respondent's current brochure being the only brochure now used by the respondent (exhibit GS3 to the affidavit of Serisier - exhibit 12 in the proceeding) is endorsed on the back and front with a photograph of the dropper prominently displaying a fence wire engaged in the loop, other depictions of an installed dropper and a photograph of many droppers spread out enabling the loop to be plainly seen. None of these uses constitute use of the shape as a trade mark, nor does importing and offering for sale a dropper that contains an S loop constitute use as a trade mark. Although the earlier brochures of the respondent depicting the exploded view, in situ, of the shape of the S loop (thereby giving particular emphasis to the feature) and descriptive references to the ' unique loop ' impressionistically suggest use of the shape as a distinguishing feature of the goods in the course of trade going to origin, the references are ultimately properly seen as a reference to the configuration of the goods as goods that owe the shape of the S loop to an essential function of the article, that is, the nature of the goods themselves and the capacity of the loop to catch, fix and secure intermediate wires of a fence. There is a circularity involved when the shape in the goods is such an important functional part of the dropper that a user necessarily illustrates the S shape of the catch in the course of trade to convey the features of the dropper. Such use has all the appearance of selecting the shape as a distinguishing feature of the respondent's dropper as a badge of origin. However, such use is not use of the shape as a badge of origin, but rather a statement of the essential functional feature of the S loop inherent in the goods in the sense contemplated in Philips v Remington (supra) per Burchett J; Hill and Branson JJ agreeing and in Kenman Kandy (supra) per French J [45] and Stone JJ [137] and [140]. 81 A shape when formed is capable of describing something, as the shape is capable of conveying information. A continuous line drawn around a centre point where each point on the line is equidistant from that point, describes a shape in a particular plane. The name given to that shape is a circle and the shape when formed is commonly understood as describing a circle. A shape might take form in two dimensions or when the shape is to be applied to or embodied in an article, the shape will take form in three dimensions. A three dimensional shape to be embodied in goods is capable of describing those goods by that shape. That shape might also find expression in an analogue for the shape such as an alphabetic analogue like 'S shape' or 'S dropper' that sufficiently approximates the features of the shape that it becomes the name, by that analogue, of the article. In Philips Electronics N V v Remington Consumer Products (1998) 40 IPR 279 at 292 , Jacob J observed that: 'A picture of an article is equivalent to a description of it both convey information. If the picture is simply of an artefact which traders might legitimately wish to manufacture then to my mind it is just like the common word for it' . In that case, Jacob J was considering a question of capacity to distinguish. However those observations as they relate to the capacity of an image to convey information and thus describe an artefact or article are relevant to this issue. A picture is simply a two-dimensional image of the three dimensional article reflecting features of shape. His Honour's observation was adopted in Koninklijke Philips v Remington (supra) at p 101 [12], per Burchett J; Hill and Branson JJ agreeing.


case_text: The applicant says these considerations are made more pronounced by the respondent's reliance on the distinctiveness of the S loop and the use of Mr Bailey's evidence in another forum, tendered by the respondent as part of exhibit 17 in these proceedings that the ' S shape applied to the wire capturing feature has become synonymous with the products of Mayne Industries in the marketplace '. The applicant says such a powerful statement of acquired distinctiveness supports an inference that the respondent's use in the manner identified is use of a distinctive shape mark, as a trade mark. The applicant contends the shape mark has been ' thrown on ' to the respondent's advertisements to distinguish its droppers from others in the sense contemplated in the well-known passage from the judgment of Kitto J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75 ; (1963) 109 CLR 407 at 424-425 and used ' to make the goods more arresting of appearance and more attractive and thus to distinguish them from the goods of other traders ' which is the ' primary function ' of the mark ( Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107 at 118 per Black CJ, Sundberg and Finkelstein JJ). Coca-Cola v All-Fect recognised that a two-dimensional mark used in relation to goods can function as a trade mark even though it has become part of the goods. The 1995 Act makes it plain that a three-dimensional shape registered as a shape trade mark for embodiment in an article or part of an article, can operate as a trade mark and it follows, it is said, that use of the shape in the respondent's articles in circumstances of pronounced distinctiveness and the factors identified at [38]-[44] operates as trade mark use. 60 Section 120 of the Act expressly incorporates the notion previously implied ( The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (supra)) in both s 58(1) and s 62(1) of the Trade Marks Act 1955 (Cth) ('the 1955 Act') that infringing use of a mark is limited to use ' as a trade mark '. Use as a trade mark is use of the mark as a badge of origin in the sense that use indicates a connection in the course of trade between goods and the person who applies the mark to the goods. ( Coca-Cola v All-Fect (supra); Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 341 per Lockhart J and 351 per Gummow J). The registered owner of the trade mark has, subject to Part 3 of the Act, the exclusive rights to use the trade mark (and authorise others to use the trade mark) in relation to goods in respect of which the trade mark is registered (s 20(1))). Section 120(1) provides relevantly, that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with the trade mark in relation to goods in respect of which the trade mark is registered. A trade mark is a sign used or intended to be used, to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person (s 17) and a sign includes a shape (s 6). Section 7(4) provides that use of a trade mark in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Accordingly, has the respondent used, as a trade mark, the three dimensional sign in relation to goods by importation, sale and promotion of articles, embodying the shape, to distinguish those goods in the course of trade from the goods of others? 62 Similarly, a trade mark that comprises a three-dimensional shape for embodiment in goods or a part of goods where the shape serves in part a functional purpose might be thought to still serve as a badge of origin. Since the goods, or a part of the goods, take the form of the shape serving that functional purpose, it would be difficult to demonstrate that use of the shape of the goods serves the primary function of a badge of origin. Such use is very likely to convey something of the functional attributes of the goods, much akin, by analogy, to the use of the oil drop man to identify the qualities of the Shell Petrol in Shell v Esso (supra). Where the goods embody the shape, a seller of goods bearing the shape, might find it difficult to describe or illustrate the goods without reference to the shape in much the same way that Tansing ( Musidor BV v Tansing (1994) 52 FCR 363) found it necessary in the course of trade in unauthorised recordings of the Rolling Stones to use the trade mark ' Rolling Stones ' to describe the content of the goods being sold. Similarly, how might Disney Enterprises Inc describe an animated cinematic version of ' The Hunchback of Notre Dame ' without using the words ' The Hunchback of Notre Dame ' notwithstanding the registration of that title as a trade mark for entertainment services ( Christodoulou (supra)). Where the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark.


case_text: The applicant says these considerations are made more pronounced by the respondent's reliance on the distinctiveness of the S loop and the use of Mr Bailey's evidence in another forum, tendered by the respondent as part of exhibit 17 in these proceedings that the ' S shape applied to the wire capturing feature has become synonymous with the products of Mayne Industries in the marketplace '. The applicant says such a powerful statement of acquired distinctiveness supports an inference that the respondent's use in the manner identified is use of a distinctive shape mark, as a trade mark. The applicant contends the shape mark has been ' thrown on ' to the respondent's advertisements to distinguish its droppers from others in the sense contemplated in the well-known passage from the judgment of Kitto J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75 ; (1963) 109 CLR 407 at 424-425 and used ' to make the goods more arresting of appearance and more attractive and thus to distinguish them from the goods of other traders ' which is the ' primary function ' of the mark ( Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107 at 118 per Black CJ, Sundberg and Finkelstein JJ). Coca-Cola v All-Fect recognised that a two-dimensional mark used in relation to goods can function as a trade mark even though it has become part of the goods. The 1995 Act makes it plain that a three-dimensional shape registered as a shape trade mark for embodiment in an article or part of an article, can operate as a trade mark and it follows, it is said, that use of the shape in the respondent's articles in circumstances of pronounced distinctiveness and the factors identified at [38]-[44] operates as trade mark use. 60 Section 120 of the Act expressly incorporates the notion previously implied ( The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (supra)) in both s 58(1) and s 62(1) of the Trade Marks Act 1955 (Cth) ('the 1955 Act') that infringing use of a mark is limited to use ' as a trade mark '. Use as a trade mark is use of the mark as a badge of origin in the sense that use indicates a connection in the course of trade between goods and the person who applies the mark to the goods. ( Coca-Cola v All-Fect (supra); Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 341 per Lockhart J and 351 per Gummow J). The registered owner of the trade mark has, subject to Part 3 of the Act, the exclusive rights to use the trade mark (and authorise others to use the trade mark) in relation to goods in respect of which the trade mark is registered (s 20(1))). Section 120(1) provides relevantly, that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with the trade mark in relation to goods in respect of which the trade mark is registered. A trade mark is a sign used or intended to be used, to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person (s 17) and a sign includes a shape (s 6). Section 7(4) provides that use of a trade mark in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Accordingly, has the respondent used, as a trade mark, the three dimensional sign in relation to goods by importation, sale and promotion of articles, embodying the shape, to distinguish those goods in the course of trade from the goods of others?


case_text: Section 120 of the Act expressly incorporates the notion previously implied ( The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (supra)) in both s 58(1) and s 62(1) of the Trade Marks Act 1955 (Cth) ('the 1955 Act') that infringing use of a mark is limited to use ' as a trade mark '. Use as a trade mark is use of the mark as a badge of origin in the sense that use indicates a connection in the course of trade between goods and the person who applies the mark to the goods. ( Coca-Cola v All-Fect (supra); Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 341 per Lockhart J and 351 per Gummow J). The registered owner of the trade mark has, subject to Part 3 of the Act, the exclusive rights to use the trade mark (and authorise others to use the trade mark) in relation to goods in respect of which the trade mark is registered (s 20(1))). Section 120(1) provides relevantly, that a person infringes a registered trade mark if the person uses, as a trade mark, a sign that is substantially identical with the trade mark in relation to goods in respect of which the trade mark is registered. A trade mark is a sign used or intended to be used, to distinguish goods dealt with or provided in the course of trade by a person from goods so dealt with or provided by any other person (s 17) and a sign includes a shape (s 6). Section 7(4) provides that use of a trade mark in relation to goods means use of the trade mark upon or in physical or other relation to the goods. Accordingly, has the respondent used, as a trade mark, the three dimensional sign in relation to goods by importation, sale and promotion of articles, embodying the shape, to distinguish those goods in the course of trade from the goods of others? 61 The answer to that question requires examination of the purpose and nature of the impugned use, the relevant context, the way the trade mark has been adopted or applied in relation to goods and the use of brochures, catalogues and advertisements ( Johnson & Johnson v Sterling at 347). A part of that contextual analysis involves an assessment of whether use of the trade mark might be illustrative or descriptive of the goods rather than use as a trade mark. In that context, the extent to which a three dimensional shape for the goods or a part of the goods serves function is an important element in the determination of whether use is distinctive of commercial origin or illustrative or descriptive of the embodied shape of the goods. Use of the trade mark must be demonstrated to be use that serves the primary function of a trade mark ( Johnson & Johnson v Sterling at 348 and 349; Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595). A word trade mark that contains a descriptive element may nevertheless still serve as a badge of origin as language does not necessarily convey only one idea ( Johnson & Johnson v Sterling ) although the descriptive element may make it difficult to demonstrate that the words serve the primary function of distinguishing the goods. ( Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 per Bennett J [29]). 105 Section 122(1) of the Act like s 64(1) of the 1955 Act, assumes infringing conduct on the part of the respondent that is excused when the person uses a sign in good faith to indicate one or more of the identified characteristics. Section 64(1)(b) contemplated use in good faith by a person 'of a description of the character or quality of his goods' whereas s 122(1)(b)(i) concerns use in good faith to indicate a broader range of characteristics. The essential concern going to good faith in s 122(1) is that the use be honest. Something less than fraudulent intention in the common law sense will suffice to prevent use being in good faith ( Johnson & Johnson v Sterling (supra), per Gummow J at p 356). There must be however, identified conduct on the part of the respondent that demonstrates use of the sign in circumstances where Mr Hastie has engaged in conscious and deliberate acts to undermine the registered owner or the integrity of the trade mark. Has the respondent sought to undermine the trade mark by the 'assiduous efforts of an infringer? ( Johnson & Johnson v Sterling per Gummow J at p 355 adopting the phrase used by Windeyer J in Re Bali Brassiere Co Inc Registered Trade Mark: An Application by v Berlei Limited [1968] HCA 72 ; (1968) 118 CLR 128 at 133). A conscious decision to try and render generic, a trade mark which on advice from reputable patent and trade mark attorneys would be infringed by use is an example ( Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd (1990) 96 ALR 277 at 311 per Hill J). In that case, the decision by Johnson & Johnson to use the trade mark was made with 'full knowledge' of the registration with advice that use would constitute infringement of the mark; and in circumstances where use was part of an international strategy to undermine the mark by rendering it generic. Since those ulterior motives subsisted, the use was found not to be honest. In this case, Mr Hastie had worked with and had been responsible for manufacturing S shaped wire droppers since 1978. He knew of the licence agreement between National Nail and Cyclone and knew that the improved dropper was the subject of a patent in New Zealand. He knew that royalties had been paid under the licence until the expiry of the prolongation period of the patent in New Zealand in 1986. Before entering the New Zealand market in 1996, Mr Hastie sought advice as to the patent position in that country. He understood that any patent had expired for the S shaped dropper. He assumed that there was no patent protection for it in Australia. He sought advice in 1996 from patent attorneys and he says he at least asked about the position in Australia. There is no independent written advice to Mr Hastie going to the position in Australia. I accept that Mr Hastie assumed in 2003 that there was no patent on foot in Australia but that he did not seek advice in 2003 as to the intellectual property position in Australia concerning the S dropper.


case_text: The answer to that question requires examination of the purpose and nature of the impugned use, the relevant context, the way the trade mark has been adopted or applied in relation to goods and the use of brochures, catalogues and advertisements ( Johnson & Johnson v Sterling at 347). A part of that contextual analysis involves an assessment of whether use of the trade mark might be illustrative or descriptive of the goods rather than use as a trade mark. In that context, the extent to which a three dimensional shape for the goods or a part of the goods serves function is an important element in the determination of whether use is distinctive of commercial origin or illustrative or descriptive of the embodied shape of the goods. Use of the trade mark must be demonstrated to be use that serves the primary function of a trade mark ( Johnson & Johnson v Sterling at 348 and 349; Christodolou v Disney Enterprises Inc [2005] FCA 1401 ; (2005) 66 IPR 595). A word trade mark that contains a descriptive element may nevertheless still serve as a badge of origin as language does not necessarily convey only one idea ( Johnson & Johnson v Sterling ) although the descriptive element may make it difficult to demonstrate that the words serve the primary function of distinguishing the goods. ( Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242 per Bennett J [29]).


case_title: Wellness Pty Ltd v Pro-Bio Living Waters Pty Ltd (2004) 61 IPR 242


case_title: Musidor BV v Tansing (1994) 52 FCR 363

case_text: Similarly, a trade mark that comprises a three-dimensional shape for embodiment in goods or a part of goods where the shape serves in part a functional purpose might be thought to still serve as a badge of origin. Since the goods, or a part of the goods, take the form of the shape serving that functional purpose, it would be difficult to demonstrate that use of the shape of the goods serves the primary function of a badge of origin. Such use is very likely to convey something of the functional attributes of the goods, much akin, by analogy, to the use of the oil drop man to identify the qualities of the Shell Petrol in Shell v Esso (supra). Where the goods embody the shape, a seller of goods bearing the shape, might find it difficult to describe or illustrate the goods without reference to the shape in much the same way that Tansing ( Musidor BV v Tansing (1994) 52 FCR 363) found it necessary in the course of trade in unauthorised recordings of the Rolling Stones to use the trade mark ' Rolling Stones ' to describe the content of the goods being sold. Similarly, how might Disney Enterprises Inc describe an animated cinematic version of ' The Hunchback of Notre Dame ' without using the words ' The Hunchback of Notre Dame ' notwithstanding the registration of that title as a trade mark for entertainment services ( Christodoulou (supra)). Where the trade mark comprises a shape which is demonstrated to involve a substantial functional element in the goods, references to the shape are almost certainly references to the nature of the goods themselves rather than use of the shape as a trade mark.


case_text: The respondent also pleaded and contended throughout the proceedings, until the point was abandoned in addresses, that the elements of s 24(1) of the Act were made out on the footing that the registered trade mark consists of a sign that, after the date of registration of the trade mark, has become 'generally accepted' within the relevant trade as the sign that describes or is the name of an article. As a result, s 24(1) has the effect of enlivening a limitation under s 24(2) of the Act on the exclusive rights of the registered owner to use or authorise others to use the sign in relation to the article and by operation of s 24(2)(b), the registered owner ' is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4). ' Subsection (4) provides that ' a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article ... '. Although the respondent contends that the trade mark consists of a sign that has become generally accepted in the relevant trade as the sign that describes a fence dropper containing an S loop, the respondent says it cannot satisfy the temporal element and show that the sign became so 'generally accepted' after the date of registration of the trade mark. Accordingly, a defence in reliance upon s 24 of the Act has been abandoned. 16 The respondent relies upon a defence under s 25 of the Act on the footing that the trade mark contains a sign (the S loop shape) that describes a fence dropper that was formerly exploited by the applicant (or its predecessors in title) under a patent lodged on 9 October 1968 under the Patents Act 1952 (Cth) for a term of 16 years which expired on 9 October 1984. Thus, s 25(1)(a) and (b) are satisfied. The respondent says, consistent with s 25(1)(c) of the Act, the evidence demonstrates that ' the sign is the only commonly known way to describe or identify the article ... '. The respondent says that since the trade mark consists of the sign, the registered owner by reason of s 25(2)(a) and (b) does not have any exclusive rights to use or authorise others to use the sign in relation to the article and is taken to have ceased to have those rights from the end of the period of 2 years after the patent expired or ceased. 17 Section 25 is in these terms: 25 Trade mark relating to article etc formerly manufactured under patent (1) This section applies if: (a) a registered trade mark consists of, or contains, a sign that describes or is the name of: (i) an article or substance that was formerly exploited under a patent; or (ii) a service that was formerly provided as a patented process; and (b) it is at least 2 years since the patent has expired or ceased; and (c) the sign is the only commonly known way to describe or identify the article, substance or service. (2) If the trade mark consists of the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. (3) If the trade mark contains the sign, the registered owner: (a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to: (i) the article or substance or other goods of the same description; or (ii) the service or other services of the same description; and (b) is taken to have ceased to have those exclusive rights from the end of the period of 2 years after the patent expired or ceased. 18 The applicant says s 25 of the Act has no application because as a matter of orthodox language a trade mark consisting of or containing a three dimensional shape sign cannot 'describe' an article (formerly exploited under a patent) as only words can do that and the trade mark is not a word mark. Further, if the sign describes anything at all, it describes the S loop in the fence dropper which is only a part of an article not the article for the purposes of s 25(1) of the Act. If, however, s 25 does apply, the sign is not the 'only commonly known way' to describe the article. The applicant says the evidence shows other commonly known ways of 'describing' or 'identifying' the article. 19 The respondent also relies upon s 122 of the Act which provides for classes of conduct that 'in spite of s 120' do not constitute infringing conduct. The respondent says, consistent with s 122(1)(b)(i) that it has depicted the 'unique loop' in good faith to indicate the kind, quality, or intended purpose of the respondent's fence dropper or the characteristic of the respondent's dropper of effecting 'constituent, efficient securing loop(s)'. The respondent also relies upon s 122(1)(c) of the Act on the footing that the respondent has used the trade mark in good faith to indicate the intended purpose of goods. The applicant says the respondent has used the trade mark as a badge of origin not as an indication of those identified characteristics, and, in any event, the respondent did not do so in 'good faith.' 20 The respondent brings a cross-claim as a person aggrieved. 63 In Koninklijke Philips Electrics NV and Another v Remington Products Pty Ltd [2000] FCA 876 ; (2000) 100 FCR 90, the Full Court considered in the context of contended infringement of a two dimensional device mark for the configuration of three rotary shaving heads arranged in an equilateral triangle and a second two dimensional device mark (described as a three dimensional mark because the depiction was said to represent a three dimensional appearance) whether dealing (manufacture, importation and sale) in goods having that shape, being a functional shape depicted in each of the two dimensional device marks, constituted use of the mark ' upon, or in physical or other relation to the goods ', the subject of the registration. In addressing that question, the Court was considering marks depicting a configuration for rotary shaving heads forming part of an electric shaver that had been popular for over 30 years and a configuration of rotary heads that ' although not the only way in which to make an efficient rotary electric shaver, it is one of the best ways to do so and this model has proved extremely successful '. In respect of the second two dimensional mark, the applicants had incorporated within the registration a so-called ' disclaimer ' to the effect that 'registration of the mark would neither confer nor recognise any right to use its features as a design applied to an article of manufacture. Burchett J with whom Hill and Branson JJ agreed, concluded that a shape that goods possess because of their nature and the need for a particular functional or technical result, could not operate as a trade mark ([12]-[22]), that is: ... merely to produce and deal in goods having the shape, being a functional shape, of something depicted by a trade mark (here the marks do depict, one more completely than the other, a working part of a triple rotary shaver) is not to engage in a 'use' of the mark 'upon, or in physical or other relation to the goods'. [12]. And: The alternative ways of using a trade mark in relation to goods do not include simply using the goods themselves as a trade mark. [12].


case_text: Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42 ; (1967) 116 CLR 628 at 639-640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke Philips Electronics NV & Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 that the 1995 Act's introduction of shape signs (although intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods , and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. [15]. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]: The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is 'extra', added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, 'an existence independently of the mark' which is imposed upon them.


case_title: Koninklijke Philips Electronics NV & Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167


case_text: Sections 24 and 25 of the 1995 Act are based on s 56 of the 1955 Act which owes its formulation in substantial part to s 15 of the United Kingdom Trade Marks Act 1938. Section 56(1) of the 1955 Act provided that the registration of a trade mark did not become invalid by reason only of the use, after the date of registration, of a word or words which the trade mark contained or of which it consisted, as the name or description of an article. As to invalidity, the Court in Campamor Sociedad, Limitada & Anor v Nike International Limited & Anor [2000] HCA 12 ; (2000) 202 CLR 45 per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ, approved the view of Taylor J in F H Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1964] HCA 38 ; (1965) 112 CLR 537 at 560-561 that s 56 operated as a provision intended to define exhaustively what manner of use after registration of a registered word trade mark would operate to invalidate the mark. Section 56(2)(b) of the 1955 Act provided that where an article was formerly manufactured under a patent, a period of two years had elapsed since the patent ceased or expired and the word which the trade mark contained or of which it consisted, was the only practicable name or description of the article, particular consequences arose. They were these. If the trade mark consisted solely of that word, the registration of the trade mark 'so far as regards registration in respect of the article ... or of any goods of the same description, ... shall be deemed for the purposes of s 22 to be an entry wrongly remaining in the Register' (s 56(3)). Section 22(1) of the 1955 Act provided that a prescribed Court 'may, on the application of a person aggrieved or the Registrar, order the rectification of the Register by [among other things] the expunging or amendment of an entry wrongly made in or remaining in the Register'. If, however, the trade mark contained that word and other matter, s 56(4) provided that a prescribed Court, in deciding whether the trade mark ought to remain in the Register in relation to the article or any goods of the same description, 'may, in the case of a decision in favour of the trade mark remaining in the Register, require as a condition that the proprietor shall disclaim any right to the exclusive use of that word in relation to that article or to any goods of the same description ... but no such disclaimer affects any rights of the proprietor of the trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made'. Section 56(5) contained a provision which had the effect of deeming rights of the registered owner to have ceased. That provision was in these terms: (5) For the purposes of any other legal proceedings relating to the trade mark - (a) if the trade mark consists solely of that word, all rights of the registered proprietor to the exclusive use of the trade mark; or (b) if the trade mark contains that word and other matter, all rights of the registered proprietor to the exclusive use of that word, in relation to the article ... or to any goods of the same description ... shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of sub-section (2) first became well-known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that sub-section.


case_title: F H Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1964] HCA 38 ; (1965) 112 CLR 537


case_text: Section 87(1) confers a discretion on the Court to order cancellation of the registration of the trade mark. That discretion is to be exercised according to its terms and, where appropriate, settled principle. The discretion is to be exercised subject to s 87(2) which identifies circumstances in which the Court might decide not to make an order. Similarly, the Court might by s 89 of the Act decide 'not to grant an application under s 87' and therefore refuse to make an order which, is itself, an exercise of the discretion, if the registered owner satisfies the Court that the ground relied on by the applicant 'has not arisen through any act or fault of the registered owner'. In terms, the discretion must not only be exercised taking account of s 87(2) and s 89 but having regard to the effect of s 25 on the right of the registered owner of the trade mark. It seems to me that all these matters must be weighed carefully in the balance to determine whether the Court ought to cancel the registration of a trade mark and, in consequence, extinguish rights conferred by the Act on the registered owner. The discretion is a true discretion in the sense that all the matters going to s 25 (the circumstances of this case) must be considered, the particular circumstances of the applicant, any relevant s 87(2) factors, the conduct of the registered owner and the effect upon the rights of the registered owner brought about by the operation of s 25. Some of these factors will weigh heavily as s 25, for example, has the applied effect of declaring that the registered owner has no exclusive rights. In that sense, the discretion may seem facultative only ( EOS (Aust) Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277, per Branson J). However, the Court is required to determine whether an order ought to be made or refused taking account of the identified considerations. Although those considerations are more limited than the reference in s 22(1)(b) of the 1955 Act which conditioned the discretion as 'subject to the Act', s 87(1) requires the Court to consider particular matters or circumstances by drawing within s 87(1) the specific matters, facts and circumstances contained in s 87(2) and s 89. Moreover, an order for cancellation of the registration of a trade mark is one of and perhaps the most significant intervention a Court might make in granting remedial orders inter-parties or on the application of the Registrar. That suggests that the Court is required to consider and weigh (within the bounds identified by the section) whether an order ought to be made in all the relevant circumstances. Accordingly, the term 'may' in s 87(1) ought not to be read as 'must upon the application of s 25 but subject to subsection (2) and section 89, order' etc. The power conferred on the Court in respect of cancellation under s 87(1) involves the exercise of a discretion as much as s 22 of the 1955 Act involved the exercise of a discretion in relation to expungement ( Campomar v Nike (supra) [87], p 80, the Court). 76 Section 87(2) like s 87(1) contemplates the application of either s 24 or s 25 in relation to a trade mark and uses the language 'because the trade mark contains a sign' and then sets out alternatives that fulfil the content of the application of either s 24 or s 25. The first alternative relates to the circumstances engaging s 24, namely, 'because the trade mark contains a sign that (a) has become generally accepted within the relevant trade as the sign that describes or is the name of an article ...'. The second relates to the circumstances engaging s 25, namely 'because the trade mark contains a sign that describes or is the name of an article that was formerly exploited under a patent'. In either case, the Court may decide not to make an order under s 87(1) and allow the trade mark to remain on the Register in respect of the article or goods of the same description subject to any condition or limitation the Court may impose. Section 25 of the 1995 Act maintains the distinction evident in s 56 of the 1955 Act between a trade mark that contains subject matter (a word or words in s 56) and one that consists of that subject matter. Differential consequences arise for each. Section 87(1) is predicated upon the application of s 25 which applies in the circumstances set out in s 25(1). Section 87(2) so far as s 25 is concerned, addresses a circumstance where s 25 applies because the trade mark contains a sign rather than consists of the sign and secondly, because the trade mark describes or is the name of an article. Section 87(2) does not also require for its operation that the sign is the only commonly known way to describe or identify the article. Once s 25 applies according to its terms, the discretion in s 87(1) is enlivened. Subject to its terms, the exercise of the discretion must take into account whether an order ought not to be made in the case of a trade mark containing a sign that describes or is the name of an article formerly exploited under a patent. Since the trade mark in this case consists of the sign rather than 'contains' a sign (among other elements) s 87(2) has no operation for the purposes of s 87(1). 77 Are the elements of s 25(1)(a), (b) and (c) satisfied? 78 The trade mark's legislation of the Commonwealth has been evolving over time and now comprehends any shape, colour, sound or scent as a possible trade mark. Section 25 must be given a purposive construction consistent with the evolution of the Act to contemporary circumstances. The elements of s 25(1) on the facts of this case, are these. 79 The trade mark consists of the sign as it is the entirety of the trade mark. 80 The sign is a shape.


case_text: The respondent says the 1995 Act by introducing the notion of a 'shape' within the definition of 'sign' in s 6 of the Act and thus within the definition of a 'trade mark' in s 17 of the Act as a ' sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person ' did not bring about the radical change of providing that a registered trade mark would have the effect of restricting access to functional features or innovations. The respondent says the trade mark law of this country recognises a continuing fundamental distinction between a shape, whether expressed in part or the entirety of the goods the subject of the registration, that has an element of 'functional significance' and a shape which bears no functional significance. The respondent says, consistent with observations in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494, were the 1995 Act to enable a registered trade mark to give the owner a monopoly over functional features (and thus suit for infringement of such a registered trade mark) it would indeed have made a radical change to trade mark law and nothing in the Act or in the discussions that preceded it suggest that such a result was intended. Therefore, it follows, it is said, that in the context of contended infringement, once the evidence demonstrates that the shape serves some functional significance, use of the shape (the trade mark) cannot be use as a trade mark. In such a case, it is said the shape adopted in the respondent's goods and consequential use of the shape in brochures and advertising material does not differentiate or distinguish the goods as a badge of origin of the user as a purveyor of those goods but serves to identify (distinguish) the content or features of the goods themselves. In other words, the respondent uses the shape to say in trade 'these are the goods that I sell' not 'know me as the seller or purveyor of these goods by this shape' (although, for trade mark use purposes, the seller need not be specifically identified). 64 Having regard to Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks [1967] HCA 42 ; (1967) 116 CLR 628 at 639-640 and an acceptance of the proposition put by Lehane J at first instance in Koninklijke Philips Electronics NV & Anor v Remington Products Australia Pty Ltd [1999] FCA 816 ; (1999) 91 FCR 167 that the 1995 Act's introduction of shape signs (although intended to effect the result that a shape trade mark would find embodiment in goods or a part of goods), did not bring about a radical change of long accepted principle concerning functional use, Burchett J concluded that there has been no abandonment of the idea that goods have an existence, as goods , and a shape trade mark has an existence in relation to goods. As a result, the shape of goods (or of a part of goods) embodied by reason of the nature of the goods or a technical or functional result to be achieved by the goods could not distinguish the goods of one trade source from similar goods of another. [15]. The shape might distinguish or differentiate the goods as goods but not the trade source. Dealing in goods of that shape is thus use of the goods not use of the shape of those goods as a trade mark. Burchett J observed at [16]: The special cases where a shape of the goods may be a mark are cases falling within, not without, the principle he expounded [Windeyer J in Smith Kline]. For they are cases where the shape that is a mark is 'extra', added to the inherent form of the particular goods as something distinct which can denote origin. The goods can still be seen as having, in Windeyer J's words, 'an existence independently of the mark' which is imposed upon them. 105 Section 122(1) of the Act like s 64(1) of the 1955 Act, assumes infringing conduct on the part of the respondent that is excused when the person uses a sign in good faith to indicate one or more of the identified characteristics. Section 64(1)(b) contemplated use in good faith by a person 'of a description of the character or quality of his goods' whereas s 122(1)(b)(i) concerns use in good faith to indicate a broader range of characteristics. The essential concern going to good faith in s 122(1) is that the use be honest. Something less than fraudulent intention in the common law sense will suffice to prevent use being in good faith ( Johnson & Johnson v Sterling (supra), per Gummow J at p 356). There must be however, identified conduct on the part of the respondent that demonstrates use of the sign in circumstances where Mr Hastie has engaged in conscious and deliberate acts to undermine the registered owner or the integrity of the trade mark. Has the respondent sought to undermine the trade mark by the 'assiduous efforts of an infringer? ( Johnson & Johnson v Sterling per Gummow J at p 355 adopting the phrase used by Windeyer J in Re Bali Brassiere Co Inc Registered Trade Mark: An Application by v Berlei Limited [1968] HCA 72 ; (1968) 118 CLR 128 at 133). A conscious decision to try and render generic, a trade mark which on advice from reputable patent and trade mark attorneys would be infringed by use is an example ( Sterling Pharmaceuticals Pty Ltd v Johnson & Johnson Australia Pty Ltd (1990) 96 ALR 277 at 311 per Hill J). In that case, the decision by Johnson & Johnson to use the trade mark was made with 'full knowledge' of the registration with advice that use would constitute infringement of the mark; and in circumstances where use was part of an international strategy to undermine the mark by rendering it generic. Since those ulterior motives subsisted, the use was found not to be honest. In this case, Mr Hastie had worked with and had been responsible for manufacturing S shaped wire droppers since 1978. He knew of the licence agreement between National Nail and Cyclone and knew that the improved dropper was the subject of a patent in New Zealand. He knew that royalties had been paid under the licence until the expiry of the prolongation period of the patent in New Zealand in 1986. Before entering the New Zealand market in 1996, Mr Hastie sought advice as to the patent position in that country. He understood that any patent had expired for the S shaped dropper. He assumed that there was no patent protection for it in Australia. He sought advice in 1996 from patent attorneys and he says he at least asked about the position in Australia. There is no independent written advice to Mr Hastie going to the position in Australia. I accept that Mr Hastie assumed in 2003 that there was no patent on foot in Australia but that he did not seek advice in 2003 as to the intellectual property position in Australia concerning the S dropper.