case_text: These grounds cannot succeed. The facts of this case are quite close to the facts of three unanimous decisions of Full Courts of this Court. The members of each court were different. The decisions are NAST v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 208 (Beaumont, Merkel and Hely JJ), NAVX v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 287 (French, Emmett and Dowsett JJ) and Minister for Immigration and Multicultural and Indigenous Affairs v VSAF of 2003 [2005] FCAFC 73 (Black CJ, Sundberg and Bennett JJ). In each case the court emphasised the proposition that the task of the Minister, through his delegate, and the Refugee Review Tribunal on appeal, pursuant to s 65 of the Migration Act 1958 (Cth), is to consider whether they are satisfied that the requirements for the grant of a visa have been satisfied. It will be difficult to achieve the requisite degree of satisfaction if the appellant does not provide sufficient information, such as by not attending a hearing. In the absence of a positive finding of satisfaction, a visa application must be rejected. In NAVX at paragraph [5] the Full Court said this: "In assessing the adequacy of [the Tribunal's] reasons, it must be kept in mind that the Tribunal had indicated to the appellant that it was unable to find in his favour on the basis of the material in its possession and invited him to attend to provide additional information. Clearly enough, the Tribunal was not obliged to accept at face value his short and very vague outline of his basis for fearing persecution in China. Having found that the outline was not sufficient to satisfy it that the appellant had a well-founded fear of persecution, it could do little more than offer him an opportunity to elaborate. When he failed to accept that opportunity, the inevitable consequence was the rejection of his application."


case_outcome: followed

case_title: NAVX v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 287


case_outcome: cited

case_text: In the Federal Magistrates Court, the appellants gave evidence that they did not open the post box where the invitation was sent until after the hearing date. Emmett FM did not accept that the letter was late in arriving. However, the authorities are clear that the reason for non-attendance at a hearing does not matter. If the Tribunal has complied with ss 425 and 425A of the Migration Act in inviting an applicant to attend a hearing, it may proceed under s 426A of the Act to consider and decide the matter without conducting any further inquiries. See NADK of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 184 , NALQ v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 121 , VNAA v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 136 FCR 407; [2004] FCAFC 134 , NASF v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 162 , Minister for Immigration and Multicultural and Indigenous Affairs v VSAF of 2003 and Others [2005] FCAFC 73 , Minister for Immigration and Multicultural Affairs and Indigenous Affairs and Another v SZFHC (2006) 150 FCR 439; [2006] FCAFC 73 , SZDPB v Minister for Immigration and Multicultural Affairs and Indigenous Affairs [2006] FCAFC 110 and Minister for Immigration and Multicultural Affairs v SZFDE [2006] FCAFC 142. In several of these cases the invitation was allegedly never received by the applicant. See VNAA v MIMIA , MIMIA v SZFHC and SZDPB v MIMIA .


case_title: VNAA v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 136 FCR 407; [2004] FCAFC 134


case_outcome: distinguished

case_text: In my opinion, the present case is to be contrasted with that which came before the High Court in Minister for Immigration and Multicultural Affairs v Bhardwaj (2002) 209 CLR 597. In that case the Immigration Review Tribunal, the procedural fairness requirements for which were materially analogous, came to decide a review application in ignorance of a request which had been made on behalf of the review applicant for a later hearing date because of an inability to attend the scheduled hearing. Because of an internal error within the Immigration Review Tribunal, that letter requesting the later hearing was not drawn to the Immigration Review Tribunal member's attention before the case was decided. Later, following representations by the visa applicant's agent, the Immigration Review Tribunal did hold a further hearing and made a second decision which was in favour of the visa applicant. The High Court by majority held that the Immigration Review Tribunal had power to make that second decision. Indeed, having regard to the reasons for judgment of certain members comprising the majority, the Immigration Review Tribunal's first decision was no decision at all because a requirement of the governing provisions had not been observed. 14 Here, though, a hearing was offered. It is just that the invitation was not availed of and the Tribunal then went on to decide the case on the basis of the material which it had before it. 15 Section 426A of the Migration Act makes provision for this type of situation. That section reads as follows: (1) If the applicant: (a) is invited under section 425 to appear before the Tribunal; and (b) does not appear before the Tribunal on the day on which or at the time and place at which the applicant is scheduled to appear; the Tribunal may make a decision on the review without taking any further action to allow or enable the applicant to appear before it. (2) This section does not prevent the Tribunal from rescheduling the applicant's appearance before or from delaying its decision on the review in order to enable the applicant's appearance before it as rescheduled.


case_text: The granting of a protection visa requires the engendering of a state of satisfaction on the part of the Minister or his delegates. There are authorities in this Court which stand, with respect unremarkably, for the proposition that it would be difficult for the Tribunal to achieve the requisite degree of satisfaction, standing as it does in the place of the Minister if an applicant does not put before the Tribunal sufficient information, for example, because of an absence of attendance at a hearing. Without that "satisfaction" engendered on the part of the Tribunal, the visa application has to be rejected see amongst the authorities for this Minister for Immigration and Multicultural and Indigenous Affairs v VSAF of 2003 [2005] FCAFC 73 per Black CJ, Sundberg and Bennett JJ.


case_text: Indeed, some judges have gone so far as to regard the rejection of an application in that circumstance as an "inevitable consequence" of non-attendance at a hearing see NAFX v Minister for Immigration and Multicultural Affairs [2004] FCAFC 287 at para 5. The bare statement provided in the visa application did not, for example, provide any basis for satisfaction in respect of an inability for the Appellants to secure state protection. 21 In these circumstances and hard though it may be, the result on the appeal is, in my opinion, clear. It must, for reasons which I have given, be dismissed. 22 The orders that I make in the appeal are: 1. The appeal is dismissed. 2. The Appellants are to pay the First Respondent's costs of and incidental to the appeal which are fixed in the amount of $2600.


case_text: The principles that govern the award of costs in this Court are well settled. Section 43(2) of the Federal Court of Australia Act 1976 (Cth) confers upon the Court a wide discretion which must, however, be exercised judicially: Re Wilcox; Ex parte Venture Industries Pty Ltd (No 2) (1996) 72 FCR 151 at 152 per Black CJ. Detailed provisions in relation to costs are to be found in Order 62 of the Federal Court Rules. These are predicated upon the assumption that costs orders will normally be on a party and party basis. However, it is clear that the Court has a discretion under s 43 in appropriate cases to award costs on some other basis.


case_outcome: considered

case_text: There is a useful discussion by Sheppard J of the principles under which indemnity costs can be ordered in Colgate-Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225. There should be present some special or unusual feature in the case to justify a departure from the usual order that costs be paid on a party and party basis. Sheppard J set out some examples of such features. They included the bringing of proceedings in wilful disregard of known facts or clearly established law, the making of allegations that ought never to have been made, and an imprudent refusal of an order to compromise. Nonetheless, it must be remembered that each case has to be considered in the light of its own particular facts and care must be taken not to circumscribe the broad discretion as to costs by reference to closed categories.


case_text: Indemnity costs have been awarded on the basis of actions and/or defences maintained without a proper foundation. See, for example, Davids Holdings Pty Ltd v Coles Myer Ltd (1995) ATPR 41-383 and Ogawa v Spender [2006] FCAFC 68 ; (2006) 151 FCR 228.


case_title: Ogawa v Spender [2006] FCAFC 68 ; (2006) 151 FCR 228


case_outcome: referred to

case_text: According to the respondent, even that slim hope must have dissipated once the respondent's evidence was filed on 15 May 2007. This set out clearly on oath the evidence of the three key individuals associated with the design of the Villa View, namely, Mr Di Natale, Mr de Weerd, and Mr Lazarovski. They each swore that the Villa View was based on changes made to earlier plans designed by the respondent over an extended period. They denied having seen, or having been aware of, any of the applicant's plans, or having inspected any of its homes: cf Barrett Property Group Pty Ltd v Metricon Homes Pty Ltd (2007) 74 IPR 52. 14 The respondent submitted that by that point it should have been obvious to the applicant and its advisers that its case could only succeed on the basis of subconscious copying and that this depended upon establishing sufficient points of similarity between the parties' plans to enable that inference to be drawn. However, such a case would be difficult to mount in the face of a credible and convincing explanation, supported by a clear documentary trail, of how the Villa View had independently evolved from the respondent's own earlier plans. 15 Finally, the respondent relied upon what it described as a Calderbank letter dated 17 August 2007. The purpose of such a letter is, of course, to encourage the recipient to consider carefully the consequences of proceeding further with the litigation. The party seeking a special costs order must show that the rejection of the offer that the letter contained was so unreasonable that the usual order should not be made.


case_text: The applicant referred to Dresna Pty Ltd v Linknarf Management Services Pty Ltd (in liq) (No 2) [2006] FCA 755 , where I said at [18] that the Court should not readily be persuaded that a case had no chance of success. The case in question had failed and, with hindsight, it might well have been anticipated that this was precisely what would occur. Nonetheless, there were some imponderables.


case_text: With regard to the Calderbank letter, the applicant submitted that the making of such an offer, and its rejection, did not of itself justify a special order for costs. To justify such an order, the respondent bore the onus of establishing that the rejection of the offer was "imprudent" or "plainly unreasonable": Black v Lipovac (by his next friend Lipovac) [1998] FCA 699 ; (1998) 217 ALR 386. It was also necessary to consider whether, in all the circumstances, the offer by the respondent represented any real element of compromise or whether it was an "offer to capitulate" made essentially to trigger a possible claim at a later time for indemnity costs.


case_text: The applicant referred to Alpine Hardwoods (Aust) Pty Ltd v Hardys Pty Ltd (No 2) [2002] FCA 224 ; (2002) 190 ALR 121 , where I observed that rejection of a reasonable offer was not the same as an unreasonable refusal to compromise. It was the latter that the respondent was required to establish. 24 The applicant also submitted that the offer made to it by the respondent, namely to withdraw and pay the respondent $35,000, might be viewed as not constituting a genuine Calderbank offer. That is particularly so in the light of doubts expressed in some of the authorities as to whether a "walk-away" offer can properly be characterised as an offer of compromise. The applicant noted that, despite an assertion in the supposed Calderbank letter that the sum of $35,000 was significantly less than outgoings already incurred, there was no evidence to support that statement. It submitted that it had not acted unreasonably in refusing to accept what it justifiably regarded as an ungenerous offer. 25 The present application is finely balanced. The respondent has acted reasonably and responsibly in pointing out to the applicant, from the outset, the weaknesses in the applicant's case. It has openly flagged its defence and repeatedly warned the applicant that it would seek indemnity costs if that defence ultimately succeeded. It also made an attempt to resolve this case without the need for a trial by its offer of 17 August 2007. 26 On the other hand, it would have been irresponsible of those advising the applicant to counsel surrender merely on the basis of assertions contained in correspondence from the respondent's solicitors. The matter becomes more problematic once discovery has been completed and evidence has been filed. 27 After giving this matter anxious consideration, I am not persuaded that the case brought by the applicant was so weak that it was unreasonable to pursue it. Although the documentary trail leading back from the Villa View through to the Villa Grand and ultimately the Mawsons Lake home proved to be powerful evidence in support of the respondent's denial that copying had taken place, that trail was littered with obstacles that had to be carefully navigated. The trail was not self-evident. It had to be explained and evaluated. Mr Wines only departed from his original opinion after being cross-examined at considerable length and being taken through the earlier plans in great detail.


case_text: there is some level of uncertainty as to the burden of the "no reasonable prospect" formulae in s 31A: see e.g. Vans, Inc v Offprice.Com.Au Pty Ltd [2006] FCA 137 ; this is not a case in which it is necessary to explore that formula at any length. The claims made against the first and third respondents are doomed to failure as they disclose no reasonable causes of action in any event. The Amended Statement of Claim is itself embarrassing and must be struck out under O 11 r 16. As the applicant has been given every reasonable opportunity to replead and has been given adequate forewarning of what was needed and required, I will not give leave again to further amend the Amended Statement of Claim. Rather I will order the application be dismissed. I will consider the claims made against each respondent in turn.


case_title: Racz v Home Office [1994] 2 AC 45

case_text: are two bases on which relief was sought against the Minister. The first was that he was vicariously liable for the misfeasance tort of the second and third respondents. Accepting that an employer could be vicariously liable for such a tort: see Racz v Home Office [1994] 2 AC 45; Porter v OAMPS Ltd (2005) 215 ALR 327 at [108]; the applicant abandoned this claim when confronted with the constitutional reality in this country that public servants, such as the second and third respondents who are employed under the Public Service Act 1999 (Cth), are employees of the Commonwealth, not of the relevant portfolio Minister.


case_title: Porter v OAMPS Ltd (2005) 215 ALR 327


case_outcome: applied

case_text: is now well accepted, the misfeasance tort can take either of two forms. In one form (that of "targeted malice") it must be shown that the public officer in question has acted as such with an actual intent to cause injury to a person or persons. In its alternate form it must be shown either that the officer has actual knowledge both that his or her action was beyond power and would cause or be likely to cause injury, or else that the officer has acted with reckless indifference both to the possibility his or her action was beyond power and to the possibility that that action would cause or be likely to cause injury: see generally Sanders v Snell (No 2) [2003] FCAFC 150 ; (2003) 130 FCR 149 at [95] - [100] . The essence of the tort in either of its forms is the "dishonest abuse of power": L (a child) v Reading Borough Council [2001] EWCA Civ 346 ; [2001] 1 WLR 1575 at 1588.


case_title: L (a child) v Reading Borough Council [2001] EWCA Civ 346 ; [2001] 1 WLR 1575


case_text: I am willing for present purposes to assume (I do not so find) that the language of the definition of 'work' in s 94(5) admits of some qualification of the usual broad meaning of the word 'work' (but see Re Crossland and Secretary Department of Family and Community Services [2004] AATA 864). However, I do not accept that the Act discloses an intention that a person with tertiary qualifications is to be regarded as a person with a continuing inability to work, and thus as a person entitled to taxpayer funded DSP, just because the person's impairment prevents him or her from undertaking professional or other high status employment. A person able to do work of a character undertaken by a very large number of Australian taxpayers (ie customer service, call-centre or light retail work) is not, in my view, a person with a continuing inability to work within the meaning of the Act. 28 I see no reason to conclude that the Tribunal erred in its understanding of the words 'any work' in s 94(2)(a) of the Act. 29 As mentioned above, the Tribunal identified the question of whether Mr Croker's bilateral hand discomfort and his somatoform disorder are separate conditions or otherwise merit separate impairment assessment as an essential question for its determination. It gave careful consideration to this question by reference to the expert evidence before it. It noted that there was no evidence that any past examination had revealed a basis for RSI as a medical condition suffered by Mr Croker. The Tribunal concluded that Mr Croker's 'RSI' was not a separate condition from his somatoform disorder. It concluded that the only diagnosis that could be assigned a rating under the Impairment Tables was Mr Croker's somatoform disorder. In this respect the Tribunal referred to [4] of the introduction to the Impairment Table which states: 'A rating is only to be assigned after a comprehensive history and examination. For a rating to be assigned the condition must be a fully documented, diagnosed condition which has been investigated, treated and stabilised.'


case_text: Mr Croker's reference to work that is 'benign' appears to derive from an observation made by the Full Tribunal in Re Hamal and Secretary, Department of Social Security (1993) 30 ALD 517 when considering the application, in the circumstances of that case, of s 94(2) of the Act before it was amended to its present form. At [43] the Full Tribunal said: 'When considering the issue of work in this context, the tribunal is of the view that it is the "normal" workplace against which a person's abilities are to be judged, not the workplace of the "benign employer".' 26 It appears that Mr Croker's real complaint is that the Tribunal gave consideration to types of employment that were not sufficiently intellectually challenging for him, or alternatively of an insufficient status, when it accepted evidence that he was capable of undertaking customer service, call-centre or light retail work where excessive or repetitive use of his hands would not be required. Mr Croker submitted: 'I don't think there is any real benefit in doing repetitive customer services even for 30 hours a week to a state where, well, at the moment I would say I wouldn't be using any of my intellect at all in a position like that, your Honour. ... Well, in the retail meat industry, you know, I suppose when I was working and the amount of time that has elapsed today it would not put me in a better position. I would say I would virtually be stepping back into really a position where I was doing things which I knew caused me injuries and obviously there could be potential harm or psychological harm again and even if there is a psychological injury as well the potential there would be raised even further.'


case_text: Whether or not one agrees with their Honours' anterior findings at [59], and I do not, that (1) there was nothing to support any conclusion that the Commissioner engaged in 'double counting' with any knowledge or belief that there was a failure in compliance with the provisions of the Act; and (2) the reasoning in Australia and New Zealand Banking Group Ltd v Commissioner of Taxation [2003] FCA 1410 ; (2003) 137 FCR 1 was fairly open to the construction that it supported the course taken in making the second amended assessment, the High Court's decision in Futuris reinforces the conclusion in [8] above.


case_text: The more so because, following the hearing of the motions, the High Court handed down its judgment in Commissioner of Taxation v Futuris Corporation Limited [2008] HCA 32 ; (2008) 247 ALR 605. The joint judgment of Gummow, Hayne, Heydon and Crennan JJ contained the following relevant observations: '[67] It follows from what has been said respecting s 177(1) that not only is it not a privative clause, but there is not the conflict or inconsistency between s 177(1), s 175 and the requirements of the Act governing assessment which calls for reconciliation of the nature identified in Plaintiff S157/2002 v Commonwealth (2003) 211 CLR 476. The point sought to be made here respecting the relationship between ss 175 and 177(1) and those requirements was expressed in Deputy Commissioner of Taxation v Richard Walter Pty Ltd [1995] HCA 23 ; (1995) 183 CLR 168 by Dawson J as follows: "The requirements of the Act which govern the making of an assessment do not produce any inconsistency with the provision that a notice of assessment constitutes conclusive evidence in recovery proceedings. That is because s 175 provides that the validity of any assessment shall not be affected by reason of the fact that any of the provisions of the Act have not been complied with. ... Having regard to s 175, there is no inconsistency, apparent or otherwise, between the requirements of the Act relating to the making of an assessment and s 177(1), and no reconciliation is called for. Indeed, as I have said, s 177(1) does no more than give evidentiary effect to s 175." [68] It follows that there is no scope here for the operation of the so-called Hickman principle. Futuris framed its case as if Hickman was engaged and by adoption of Dixon J's words: "... provided always that its decision is a bona fide attempt to exercise its power, that it relates to the subject matter of the legislation, and that it is reasonably capable of reference to the power given to the body." But it was only the first mentioned consideration ("bona fide attempt") that was relevant at all in the judicial review proceeding. The notion of bona fides had the content explained earlier in these reasons and did not enter the case by the tortuous path of statutory construction and reconciliation with which Dixon J was concerned. [69] Something more should also be said respecting Richard Walter. That case decided first, that the Act permits the Commissioner to issue assessments on an alternative basis to different taxpayers in respect of the same income and, secondly, that s 177(1) does not limit the jurisdiction conferred by s 39B of the Judiciary Act . Neither holding is challenged in this litigation. [70] Various views were expressed in Richard Walter respecting the construction of and relationship between s 175 and s 177(1). Reference was made to the then accepted distinction between mandatory and directory provisions, and to what seems to have been some doctrinal status then afforded to Hickman. As to the first matter, Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 29 ; (1998) 194 CLR 355 has changed the landscape and as to the second, Plaintiff S157/2002 has placed "the Hickman principle" in perspective. Hence this appeal should be decided by the path taken in these reasons and not by any course assumed to be mandated by what was said in any one or more of the several sets of reasons in Richard Walter.' 13 Whether or not one agrees with their Honours' anterior findings at [59], and I do not, that (1) there was nothing to support any conclusion that the Commissioner engaged in 'double counting' with any knowledge or belief that there was a failure in compliance with the provisions of the Act; and (2) the reasoning in Australia and New Zealand Banking Group Ltd v Commissioner of Taxation [2003] FCA 1410 ; (2003) 137 FCR 1 was fairly open to the construction that it supported the course taken in making the second amended assessment, the High Court's decision in Futuris reinforces the conclusion in [8] above.


case_text: No allegation is made in the pleadings that in making the assessments the Commissioner did not exercise the power of assessment in good faith or did not otherwise satisfy the Hickman test from R v Hickman; Ex parte Fox and Clinton [1945] HCA 53 ; (1945) 70 CLR 598 at 615, merely that: (1) The Commissioner failed to turn his mind to certain factual matters; and (2) the Commissioner had regard to information which he should not have considered. These are matters relevant to proceedings under Part IVC of the Taxation Administration Act 1953 (Cth) and it is uncontroversial that there are proceedings pending in the Administrative Appeals Tribunal seeking review of the Commissioner's objection decisions. However, neither of these matters is sufficient to challenge the validity of the assessments.


case_text: The modern approach to statutory construction is to construe the relevant provision in its context so that it is consistent with the language and purpose of all the provisions of the statute; see CIC Insurance Limited v Bankstown Football Club Limited [1997] HCA 2 ; (1997) 187 CLR 384 at 408 (Brennan CJ, Dawson, Toohey and Gummow JJ); Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355 at [69] (McHugh, Gummow, Kirby and Hayne JJ). Recourse to extrinsic material, including the legislative history and explanatory material such as a Second Reading Speech is permitted; see Newcastle City Council v GIO General Limited [1997] HCA 53 ; (1997) 191 CLR 85 at 99 (Toohey, Gaudron and Gummow JJ) and at 112 (McHugh J); Isherwood v Butler Pollnow Pty Limited (1986) 6 NSWLR 363 at 387-388 (McHugh JA).


case_title: Isherwood v Butler Pollnow Pty Limited (1986) 6 NSWLR 363


case_title: Newcastle City Council v GIO General Limited [1997] HCA 53 ; (1997) 191 CLR 85


case_title: Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28 ; (1998) 194 CLR 355


case_text: Although this paragraph of the Supplementary Explanatory Memorandum refers to only two of the three types of decision referred to in s 300(4), these words can only be used as a guide to the meaning of the Act. They do not replace the statutory language; see Re Bolton; Ex parte Beane [1987] HCA 12 ; (1987) 162 CLR 514 at 518 (Mason CJ, Wilson and Dawson JJ); see also R v Young [1999] NSWCCA 166 ; (1999) 46 NSWLR 681 at [35] (Spigelman CJ).


case_title: Re Bolton; Ex parte Beane [1987] HCA 12 ; (1987) 162 CLR 514


case_title: Shi v Migration Institute of Australia [2003] FCA 1304 ; (2003) 134 FCR 326 considered

case_text: In Shi v Migration Institute of Australia [2003] FCA 1304 ; (2003) 134 FCR 326 (" Shi") , Tamberlin J considered this section. His Honour described the repeat registration system as a 'continuum' and found that s 300 operated as a deeming provision so that an agent is treated as if s/he were registered and has the same rights as if s/he were registered up to the time of the making of the decision not to renew. He concluded that a decision by the MARA not to renew has an operation capable of being stayed, pursuant to s 41(2) of the AAT Act . 9 However, on 1 July 2004, amendments contained in the Amending Act came into effect. By Item 63 in Schedule 1 of the Amending Act , s 300 was repealed and substituted with the following: "300 Automatic continuation of registration When agent's registration is automatically continued (1) Subsection (4) applies to continue a registered migration agent's registration beyond the last day (the expiry day) of the agent's registration if, before the end of the expiry day: (a) the agent made a registration application; and (b) the agent paid the registration application fee (if any) in respect of the application; and (c) the Migration Agents Registration Authority had not decided the application. Exception--suspension (2) However, subsection (4) does not apply to continue the agent's registration if, before the end of the expiry day, the Authority made a decision to suspend the agent's registration, unless: (a) the suspension had been completed before the end of the expiry day; or (b) there was a decision (other than a stay order) of the Administrative Appeals Tribunal or a court in force, immediately before the end of the expiry day, to the effect that the agent's registration is not suspended or cancelled. Exception--cancellation (3) Subsection (4) also does not apply to continue the agent's registration if, before the end of the expiry day, the Authority made a decision to cancel the agent's registration, unless: (a) there was a decision (other than a stay order) of the Administrative Appeals Tribunal or a court in force, immediately before the end of the expiry day, to the effect that the agent's registration is not suspended or cancelled; or (b) there was a decision of the Administrative Appeals Tribunal or a court in force to the effect that the agent's registration is suspended, and the suspension had been completed before the end of the expiry day. Period of continuation of registration (4) The agent's registration is taken to continue after the expiry day until the earliest of the following: (a) the Authority decides the application; (b) the Authority decides to suspend the agent's registration; (c) the Authority decides to cancel the agent's registration; (d) the end of the period of 10 months beginning on the day after the expiry day. Application granted if no decision within a certain period (5) If, before the end of the period of 10 months beginning on the day after the expiry day, the Authority has not: (a) decided the registration application; and (b) decided to suspend the agent's registration; and (c) decided to cancel the agent's registration; then the application is taken to have been granted at the end of that period. When registration takes effect (6) If the Authority grants the registration application, or the registration application is taken to have been granted under subsection (5), the registration is treated as having taken effect at the end of the expiry day. When Authority makes decision (7) For the purposes of this section, the Authority is taken to have made a decision even if the decision is later stayed." 10 The applicant was first registered as a migration agent on 15 April 1994. For reasons which are not clear, the applicant's registration came to expire on 23 May each year. 15 The learned Deputy President referred to the decision of Tamberlin J in Shi . However, he observed that Shi was decided on the Act as it stood before the Amending Act . The question for the Deputy President was therefore whether there was power to grant a stay under the new s 300 introduced by the Amending Act . 16 The AAT referred to the amendments to s 300 and the supplementary explanatory memorandum to the Amending Act . It noted that the effect of s 300(4)(a) was that the Applicant's registration as a migration agent ceased on 20 February 2006 when the MARA made its decision. 17 The AAT then considered s 300(7), stating at [17](d)] that:- "The clear import of section 300(7) is that a decision once made (and the term decision must include a decision under subsection 4(a)) stands notwithstanding that it might be the subject of a stay order." 31 Tamberlin J observed in Shi at [14] that Part 3 of the Act was introduced in 1992 with the purpose of establishing a comprehensive scheme for registration and control of migration agents. Prior to its introduction, there was no regulation of migration agents. The emphasis in Division 3, Part 3 on migration agents having sufficient training and good character, and the provisions relating to publication of disciplinary proceedings indicates a concern that the integrity of the visa scheme governed by the Act is maintained. 32 Section s 300 is to be construed in its context in light of the statutory scheme to which I have referred. It is to be borne in mind that a registered agent does not have a right to be re-registered. Applications must be made each year and the criteria for registration must be satisfied on each application. 33 It is true that s 300(1) operates so as to extend the period of registration of a registered migration agent beyond the expiry date of the agent's registration. The combined effect of ss 300(1) and (4) is that a registered agent's registration is taken to continue after the expiry date, provided that the requirements of s 300(1) (a) to (c) are satisfied.


case_text: However, s306AA is not concerned with a stay of a decision refusing an application for registration which was deemed continuing by force of s 300(1) and (4). Rather, s 306AA deals with orders staying a decision under s 303 to cancel or suspend the registration of an agent who has already been registered for the current year; that is, prior to the cancellation or suspension. This was illustrated in Tanari v Migration Agents Registration Authority [2005] AATA 419 (" Tanari "). 58 Section 300 lays down a different regime for deemed registration. Quite plainly, a migration agent whose application for registration in the current year is granted, is no longer deemed registered; s/he is actually registered. But the registration is treated as having taken effect at the end of the expiry date; ie from the commencement of the current year; see s 300(6). 59 Section 300(4)(b) and (c) therefore deal with the situation where the MARA decides, during the period of deemed continuation of registration (but before the grant of any application for registration), to suspend or cancel the agent's registration. The relevant regime is explained by reference to s 300(2) and (3) when read with s 300(4).


case_text: The native title claim group represented by the applicants has already had an application under the Native Title Act 1953 (Cth) struck out: see McKenzie v State Government of South Australia [2005] FCA 22. Before that matter was struck out (for reasons relating both to the identification of the claim group and to the alleged authority of the claimants), the applicants had amended their application on a number of occasions. Following the strike out decision, a fresh application was filed on 16 February 2006 resulting in the present proceedings. 3 Shortly thereafter the Aboriginal Legal Rights Movement ("the ALRM") notified the applicants of perceived deficiencies in its Form 1. Once again these related both to authorisation and to the composition of the claim group. Initially, the applicants sought simply to amend their application, the amendment seemingly being to change the composition of the claim group somewhat. It was then made plain to the applicants that leave was required. 4 The ALRM opposed the grant of leave on the ground that there was a reasonable basis for concluding that the Form 1 would still be defective for reasons similar to those given in the earlier McKenzie litigation. On 12 May 2006, the application for leave to amend was adjourned to allow the applicants to address the ALRM's concerns. Instead of proceeding further with that application, the respondents purported to discontinue this proceeding. They have now conceded correctly that that is not within their power to do so as of right and that the leave of the Court is required. 5 The basis of the discontinuance is set out in an affidavit of the solicitor for the applicants, Mr McDonald: "3. After the hearing before His Honour Justice Finn on 12 May 2006, which considered the ALRM's objections to the Form 1 in this matter, I took further instructions from the Applicants in Pt Augusta on the following weekend. 4. The purpose of those further instructions was to prepare supplementary affidavits of the Applicants to respond to the ALRM's objections. 5. While taking those instructions I became aware for the first time that Willy Austin should have been named as an apical ancestor as part of the claim group description. Willy Austin had been raised as a possible apical ancestor by Dr Daniel Vachon, the anthropologist for the Kuyani-Wilyaru people and his name was raised at the authorization meeting on 16 July 2005. It was decided at this meeting not to include Willy Austin as an apical ancestor but no detailed discussion as to his exclusion took place. 6. As mentioned above I only became aware on the weekend of 13 May 2006 that descendants of Willy Austin do identify themselves as Kuyani.


case_text: Although I advised the applicants and they have considered the possibility of amending the present proceedings, I have been instructed to discontinue and lodge fresh proceedings to avoid any argument in relation to a perceived lack of authorization in relation to these proceedings. The reference to my advice should not be taken as any waiver of legal professional privilege." The discontinuance is made under O 22 of the Federal Court Rules by reason of the named applicants' representative position with respect to the claimant group. Leave of the Court is required under subrule (2): see Ankamuthi People v State Government of Queensland (2002) FCA 897. Where leave to discontinue is sought in a proceeding, the Court normally will allow an applicant to discontinue if he or she wants to, provided no injustice will be caused to the defendant: Covell Matthews & Partners v French Wools Ltd [1977] 1 WLR 876 at 879 which has been adopted in a number of cases in this Court. I have determined that discontinuance in this matter will occasion no injustice, subject to the question of costs. 6 The Court has a general discretion under s 43 of the Federal Court of Australia Act 1976 (Cth) to make cost orders. The principles informing the Court's discretion in such cases are well known: see eg. Ruddock v Vadarlis (No 2) (2001) 155 FCR 229 at par 234. However, when costs are sought in discontinuance proceedings, somewhat different considerations obtain to those that obtain under s 43. It has been recognised that the underlying policy of the Rules is that the discontinuing party should be liable to pay the other party's costs unless the Court orders otherwise: see e.g. Grundy v Lewis [1998] FCA 563. That policy, though, has not itself solidified into a principle which parallels the usual rule under s 43 of costs following the event. The Courts have indicated that, on a motion for discontinuance, the conduct of the parties in the matter and the reasons for the discontinuance can bear heavily on the exercise of the discretion as to costs: see O'Neill v Mann [2000] FCA 1680 at par [13] . 7 The consideration of an award of costs in this particular proceeding must, of course, be seen under the shadow of s 85A(1) and (2) of the Native Title Act. Section 85A provides: "(1) Unless the Federal Court orders otherwise, each party to a proceeding must bear his or her own costs. Unreasonable conduct (2) Without limiting the Court's power to make orders under subsection (1), if the Federal Court is satisfied that a party to a proceeding has, by any unreasonable act or omission, caused another party to incur costs in connection with the institution or conduct of the proceeding, the Court may order the first-mentioned party to pay some or all of those costs."


case_title: Covell Matthews & Partners v French Wools Ltd [1977] 1 WLR 876


case_title: Ruddock v Vadarlis (No 2) (2001) 155 FCR 229


case_title: Grundy v Lewis [1998] FCA 563


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


case_text: The most authoritative statement of the matters which should inform the exercise of discretion in awarding costs in light of this section was given by Lee J in Ward v Western Australia [1999] FCA 580 ; (1999) 93 FCR 305, in comments later endorsed by the Full Court in De Rose v State of South Australia (No 2) [2005] FCAFC 137. His Honour noted first, that s 85A(1) is intended to remove the expectation that costs will follow the event but that despite this, the Court retains its discretion as to costs unlimited by subrule (1); secondly the "unreasonable conduct" of the parties is not a jurisdictional fact which preconditions the exercise of the discretion and, conversely, s 85A(2) will not control or limit the discretion in subrule (1); thirdly, whilst the exercise of the discretion when making a costs order should be judicial, the starting point is that each party will bear their own costs.


case_title: De Rose v State of South Australia (No 2) [2005] FCAFC 137


case_text: is not in dispute that the power summarily to dismiss a pleading as disclosing no reasonable cause of action is a power to be exercised with special caution, and only in the clearest of cases: General Steel Industries Inc v Commissioner for Railways (NSW) [1964] HCA 69 ; (1964) 112 CLR 125 ( General Steel) . Applying the General Steel test, in my judgment the contentions by the ACCC that the documents convey the alleged representations are at least arguable, with the consequence that those impugned paragraphs should not be struck out. This view is buttressed by the heading of the document, and the failure to refer to the absence of any previous communication between the recipients of the LAN documents and Australialink. The impugned paragraphs in relation to the Notice of Intention document are set out in par 15 of the Statement of Claim: 15.1 that Australialink had instituted or was in the process of instituting court proceedings against the Responding Recipient; 15.2 that the Notice of Intention was an official court form (rather than a form created by Australialink); 15.3 that the Notice of Intention was issued as part of court proceedings; 15.4 that a date had been fixed by the court, or alternatively Australialink, for the filing of a plaint with the court; 15.5 that the Responding Recipients' rights were affected by the issuing of the said Notice of Intention; ... 15.7 that the court process required the Notice of Intention to be executed by a person on behalf of the creditor and witnessed by another person, and these steps had occurred. While the representation pleaded in 15.2 does not to me appear to be as clear as the other representations in that paragraph, the representations alleged by the ACCC in par 15, and which are sought to be impugned, are in my opinion at least arguable. This conclusion is justified by the formatting and the subheading "Notice of Creditors Commencement of Proceedings at a Magistrates Court" which is expressed not as a future possibility but as a fact.


case_text: the purposes of deciding a strike-out motion, or whether the pleading discloses a reasonable cause of action, the Court is obliged to assume the truth of the allegations in the Statement of Claim, and draw all inferences favourable to the party against whom the strike-out motion is brought. This is because the question is whether the allegations in the Statement of Claim, even if proved, cannot succeed as a matter of law: Imobilari Pty Ltd v Opes Prime Stockbroking Ltd [2008] FCA 1920 ; (2008) 252 ALR 41 per Finkelstein J, at [4]. From the Statement of Claim and the annexures thereto, the applicant, the Australian Competition and Consumer Commission (the ACCC) makes the following allegations: 5.1. Australialink publishes business directories on the internet, and sells listings in those directories to persons and businesses throughout Australia. 5.2. The method by which Australialink primarily markets its services to potential clients and obtains listing orders is as follows. 5.3. Since at least January 2006, Australialink has obtained details of potential customers by purchasing customer lists from third party suppliers and from the online version of the Yellow Pages directory. 5.4. Australialink sends, by post or facsimile, a document called a "Listing Advice Notice" (" LAN ") to various businesses called " Recipients "), using the contact details obtained as described above. A copy of a LAN is Annexure A to the statement of claim. 5.5. A slightly different version of the LAN is sent to Recipients located in Queensland. This version (the " Qld LAN ") includes the following warning statement across the top of the document: THIS IS A SOLICITATION, NOT AN INVOICE FOR A DEBT INCURRED BY YOU. PLEASE DO NOT SEND ANY PAYMENT WHEN RETURNING. 5.6. An example of a Qld LAN is Annexure B to the statement of claim. 5.7 There will have been no dealings between Australialink and a Recipient prior to Australialink sending the document, other than that Australialink may have previously sent a LAN or Qld LAN to that business and not have received any reply. 5.8 When a Recipient signs and returns the LAN, Australialink then issues a tax invoice to the Recipient (called a Responding Recipient) claiming payment for a directory listing fee. If the Responding Recipient does not pay the invoice, after several subsequent reminder notices Australialink sends a letter of demand purporting to be from a commercial collection agency. 5.9 If the Responding Recipient does not comply with the letter of demand then Australialink sends a document entitled "Notice of Intention Notice of Creditor's Commencement Proceedings" (" Notice of Intention "). A copy of a Notice of Intention is Annexure C to the statement of claim. No court proceedings have been instituted at the time a Notice is sent by Australialink. The respondents attack paragraphs of the Statement of Claim which relate to the representations which the ACCC alleges are made by the sending out of the LAN documents and by the Notice of Intention document, which are annexed to the Statement of Claim.


case_text: Review Australia Pty Ltd ("Review") is the owner of Design Registration No 307708 ("the Review Design") under the Designs Act 2003 (Cth) ("the Designs Act "). As explained in Review 2 Pty Ltd v Redberry Enterprise Pty Ltd [2008] FCA 1588 (" Redberry" ), Review acquired the Review Design from Review 2 Pty Ltd (in liquidation) ("Review 2") on 28 February 2007 as part of a corporate restructure. 2 This is an action for design infringement and a cross-claim for design invalidity. For the reasons stated below, I would uphold the claim for design infringement and dismiss the cross-claim for invalidity. 3 In its statement of claim, Review alleges that the respondents New Cover Group Pty Ltd ("New Cover"), Maco Collection Pty Ltd ("Maco") and/or Biguang Pan have made, imported and sold garments in infringement of the Review Design. Since Mr Pan has never been served with the initiating process (or any other document in the proceeding), Review now seeks no relief against him. Various forms of relief are sought against New Cover and Maco, including declaratory and injunctive relief, and damages. As in Redberry , there are three principal questions: (1) have the respondents infringed the Review Design? (2) Is the Review Design valid? (3) If yes to these two questions, how should damages be assessed? 4 In accordance with orders made on 13 December 2007, the evidence in proceeding VID 286 of 2007 ( Redberry ) in so far as it relates to the Review Design is also evidence in this proceeding. The trials in Redberry and that part of the present proceeding that concerns the Review Design took place together. This leaves for the future the trial in this proceeding with respect to the alleged infringement of registered design No 306802. 5 New Cover and Maco were unrepresented at trial. The Court gave Ms Yasemin Dolcel leave to tender on their behalf the affidavits, with exhibits, that had already been filed (subject to Review's objections as to admissibility). These affidavits were the affidavit of Ms Dolcel sworn on 5 November 2007, and the affidavits of Wei Hong Meng (also known as Jim Meng) sworn on 5 November 2007, 24 September 2007 and 4 February 2008. The following were not relevant in this part of the proceeding: paragraphs 18 and 19 and parts of paragraphs 24 to 26 of Mr Meng' s 24 September 2007 affidavit; paragraphs 15 to 20 of Mr Meng' s 5 November 2007 affidavit; and paragraphs 8 and 9 of Mr Meng' s 4 February 2008 affidavit. The following paragraphs were inadmissible: paragraphs 21, 23 (parts), 27 and 28 of Mr Meng' s 24 September 2007 affidavit; paragraphs 24 to 38 of Mr Meng' s 5 November 2007 affidavit; and paragraphs 4, 5, 7 and 10 of Mr Meng' s 4 February 2008. Notwithstanding that Review gave notice that Mr Meng was required for cross-examination, Mr Meng did not attend Court. I bear this in mind in determining the weight to be given to his affidavit evidence. 6 As depicted on the Register and in the Certificate of Registration, the Review Design is for a sleeveless, cross-over (or fixed-wrap) dress, having: • a V-Neck made by a cross-over from left to right over a right to left cross-over; • a left to right cross-over from shoulder to the left side of the waist with gathering on the left side of the waist; • some gathering on both shoulders; • figure hugging effect to the waist with a brown ribbon sash tying around a fixed waist; • a square high back; • a panelled skirt (3 panels in the front and panels in the back); • a hem knee-length or below the knee; • a figure hugging skirt for over half the way to the hem, when it sharply expands, so that the dress at the hem has a ruffled effect; and • a patterned fabric in natural tones with orange, brown and blue fine 'fronds leaf' pattern, with an African or tropical look. 11 The business operations of New Cover and Maco are evidently intertwined to such an extent as to justify the two companies being treated in the same way in this proceeding. The labels under which New Cover and Maco sold their garments were evidently the same or virtually the same, including Spicy Sugar, Rose Burg, Tea Berry, Tea Berry Gold and New Cover: compare Ms Dolcel's affidavit of 29 October 2007 (filed in Redberry ) and Mr Meng's affidavit of 24 September 2007 (filed in this proceeding). Ms Dolcel described herself as the business development manager for Maco (29 October 2007 affidavit) and as New Cover's full-time business development manager (5 November 2007 affidavit). In evidence in chief, Ms Dolcel described herself as "[b]usiness development manager for the New Cover Group, aka Maco Collection Group", having the same identity. This was consistent with Mr Meng's affidavit of 24 September 2007 (par 3). Ms Dolcel's evidence was that she promoted New Cover/Maco styles to New Cover and Maco customers. These clients included "other fashion boutique retailers, fashion agents and major chain retailers". Ms Dolcel did not suggest that New Cover's customers were different from Maco's customers. 12 The solicitors for Review wrote to New Cover about the sale and purchase of the Spicy Sugar garments on 26 September 2006 and 9 January 2007, before this proceeding was begun. They also wrote to Maco on 6 December 2006 and 24 January 2007. In a statement of claim dated 10 April 2007, Review specifically alleged that New Cover and Maco had, without its licence or authority, made, imported and sold garments embodying a design that was substantially similar in overall impression to the Review Design. 13 The Spicy Sugar garments are sleeveless fixed-wrap or cross-over dresses. The fabric from which they are made crosses over at the neckline (creating a V-neck) in the same way as the Review Design and falls down to the left side of the waist, where the fabric is gathered. The dresses have gathering at the shoulders just like the Review Design. The Spicy Sugar dresses each have a fitted waist and a square high back. Each has a satin ribbon as a waist tie. The Spicy Sugar dresses all have the same skirt. This skirt has three panels at the front and back and is figure hugging for over half the way to the hem, when it expands, so that the dress at the hem has a ruffled effect. The skirt is to or just below the knee. The Spicy Sugar garments differ in two respects only. Style 050620-2SS is in a black 'sunflower' on white background fabric, with a black satin ribbon waist tie. Style 050620SS is all black, with a red satin ribbon waist tie. 20 Review alleges, and New Cover/Maco denies, that New Cover/Maco made, imported and sold the Spicy Sugar garments. The respondents' position was that New Cover/Maco imported and sold women's clothing. As noted in Redberry , the question whether New Cover/Maco made Spicy Sugar garments, as opposed to importing and selling them, does not affect the outcome of Review's principal allegation that New Cover/Maco has infringed the Review Design. It affects the discussion of s 75(2) of the Designs Act, below. 21 The Spicy Sugar garments will infringe the Review Design if they embody a design that is substantially similar in overall impression to the Review Design: compare the Designs Act, s 71(1)(a). In determining whether a design is substantially similar in overall impression to a registered design, the factors in s 19 fall for consideration: see s 71(3). Section 19 provides: (1) If a person is required by this Act to decide whether a design is substantially similar in overall impression to another design, the person making the decision is to give more weight to similarities between the designs than to differences between them. (2) The person must also: (a) have regard to the state of development of the prior art base for the design; and (b) if the design application in which the design was disclosed included a statement (a statement of newness and distinctiveness) identifying particular visual features of the design as new and distinctive: (i) have particular regard to those features; and (ii) if those features relate to only part of the design have particular regard to that part of the design, but in the context of the design as a whole; and (c) if only part of the design is substantially similar to another design, have regard to the amount, quality and importance of that part in the context of the design as a whole; and (d) have regard to the freedom of the creator of the design to innovate. (3) If the design application in which the design was disclosed did not include a statement of newness and distinctiveness in respect of particular visual features of the design, the person must have regard to the appearance of the design as a whole. (4) In applying subsections (1), (2) and (3), the person must apply the standard of a person who is familiar with the product to which the design relates, or products similar to the product to which the design relates (the standard of the informed user). (5) In this section, a reference to a person includes a reference to a court. Since there was no statement of newness and distinctiveness in the Review Design application, s 19(3) of the Designs Act applies. In considering whether a design embodied in the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court is therefore obliged to consider the appearance of the Review Design as a whole, considered by reference to the standard of the informed user. 22 I refer to my discussion of the standard of the informed user in Redberry . As stated in Redberry , the informed user must be a person who is familiar with the product to which the design in question relates. The informed user must also be a user of the class of product in question, in this case, ladies' garments, or perhaps, more narrowly, ladies' dresses. A designer or manufacturer of such garments is not an informed user merely because he or she designs or manufactures them. Further, this user is not simply an ordinary consumer: the user must be an informed user. 23 As also noted in Redberry , the Australian Law Reform Commission's Report No 74 , Designs (Sydney, 1995) ("ALRC Report No 74") and the Designs Act which implemented it (see Explanatory Memorandum to the Designs Bill 2002 at 1) borrowed the concept of the informed user from the European Community design law: see ALRC Report No 74, at 5.17 - 5.21, 6.12 and 6.13. ALRC Report No 74, at 5.17, described the informed user as "a person who is reasonably familiar with the nature, appearance and use of products of the relevant kind". I refer to but do not repeat the other parts of the Report's discussion of the informed user standard, which are set out in Redberry : see ALRC Report No 74, at 5.18, 5.19, 5.21 and 6.13. 24 Since the informed user standard has been adopted by the Registered Designs Act 1949 (UK), the explanation of the standard by courts in the UK provides some guidance. In Redberry , I referred to the exposition of the informed user standard in Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 (" Architectural Lighting "). In this case, his Honour Judge Fysh QC (at [50]) defined the concept of an informed user as follows: First, this notional person must obviously be a user of articles of the sort which is subject of the registered design and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of 'the man in the street'. 'Informed' to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of 'what's about in the market?' and 'what has been about in the recent past?'. I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the 'man skilled in the art' whose 'nerd-like' (and other) attributes seem too technical: Technip France SA's Patent [2004] EWCA Civ 381 ; [2004] R.P.C. 46 at [6-12] (CA). (Emphasis original) The properly informed eye of the court must make its decision as a matter of degree as a matter of overall impression: see Architectural Lighting at [52]. 25 As noted in Redberry , in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 ; [2007] FSR 13 (" Proctor & Gamble Co v Reckitt Benckiser ") at [31] et seq, where Lewison J (Chancery Division Patents Court) considered and approved the Architectural Lighting observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936 ; (2007) 73 IPR 605 (" Proctor & Gamble ") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. Jacob LJ noted (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law". 26 As also noted in Redberry , in January 2007, the Design Registrar of the UK Intellectual Property Office had cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 28 As noted in Redberry , the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry . 30 As noted in Redberry , there may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. I indicated in Redberry , for the reasons stated there, that I preferred the former approach. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user. 31 Review's claim that the Spicy Sugar garments (see PS 10 and PS 11 to the affidavit of Peter Strain of 20 September 2007) are substantially similar in overall impression to the Review Design should be upheld. In reaching this conclusion, I have had regard to the evidence of Ms Ellis, particularly that referred to in Redberry at [29]-[30]. As noted in Redberry , as a designer rather than an informed user, Ms Ellis's evidence assists in identifying the basis of Review's claim on infringement and, to a limited extent, the similarities and differences between the Review Design and the design embodied in each of the Spicy Sugar garments although, in this case especially, a great deal is self-evident. For present purposes, however, I disregard her evidence about points of construction and interior similarities and differences as not relevant to the issue of infringement. 32 In this connection too, I have also had regard to the evidence of Ms Ella Mudie, since this was, pursuant to order, also to be treated as evidence in this proceeding: see Redberry at [31]-[34]. As stated in Redberry , Ms Mudie was in the nature of an informed user and was a careful and truthful witness. As explained in Redberry , I found her evidence helpful, notwithstanding the criticisms leveled at it by the applicants in that case. Although some of Ms Mudie's evidence was specifically directed to an analysis of the Redberry garment as compared with the Review Design (and this is plainly not relevant here) other parts of her evidence assist in placing the Court in the shoes of the informed user. Thus, Ms Mudie's evidence was that, from her perspective, the overall appearance of a dress was principally determined by style, cut, fit, colour/print, and materials. This led Ms Mudie to identify two distinct differences between the Review Dress (and indirectly the design that it embodied) and Redberry dress, being their skirts, and the patterns and colours. Of course, as I stated in Redberry , the Court does not simply adopt Ms Mudie's assessment as its own, but makes its own objective determination. The Court must, of course, make the same sort of assessment in this case. 33 Considered by reference to the standard of the informed user, in deciding whether the design embodied in each of the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court must: (1) give more weight to similarities between the designs in question than to differences (s 19(1)); (2) have regard to the state of development of the prior art base for the Review Design (s 19(2(a)); and (3) have regard to the freedom of the designer to innovate (s 19(2)(d)). There are, plainly enough, differences between the patterns as depicted in the design as compared with the two styles of the Spicy Sugar garments. Hence, only part of the design embodied in each style of the Spicy Sugar garments is substantially similar to the Review Design, with the consequence that the Court must have regard to the amount, quality and importance of that part in the context of the design considered as a whole (s 19(2)(c)). Furthermore, since the design application for the Review Design did not include a statement of newness and distinctiveness, the Court must have regard to the appearance of the Review Design as a whole (s 19(3)). 34 The similarities between the Review Design and the design embodied in each of the two styles of the Spicy Sugar garments are self-evident. The cross-over bodice and V-neck is identical, or virtually identical. All have a fixed waist, with a satin ribbon tie. All have the same high back. In this case too, the Review Design skirt and the skirts in the designs embodied in the Spicy Sugar garments are identical, or virtually so. The Review Design and the designs embodied in the Spicy Sugar garments differ only as to pattern (including colour). 35 Similarities between the designs are to be given greater weight than the differences (s 19(1)). As noted in Redberry , however, in deciding whether the design embodied in each style of the Spicy Sugar garments is substantially similar in overall impression to the Review Design, the Court must also have regard to the prior art base, considered by reference to the standard of the informed user. That is, the significance of the similarities and differences between designs falls to be considered in light of the prior art, as discussed in Redberry . In that case, I concluded that, having regard to the prior art and the freedom of the designer to innovate, what gave the Review Design its different overall impression from the prior art, from the perspective of the informed user, was the shape and configuration of the skirt, combined with differences in pattern and ornamentation. 36 Redberry stated that this conclusion was significant for the question of infringement, more particularly as the Court, by reference to the informed user standard, reaches its conclusion on infringement having regard to the amount, quality and importance of that part of the challenged design that is substantially similar to the Review Design in the context of the Review Design as a whole. As noted above, in this case in contrast to Redberry , save for the pattern (and colour), each of the styles of the Spicy Sugar garments embodies a design that is substantially similar (if not identical) to the Review Design. In this case, having regard to the directions in ss 19(1), (2)(a), (c) and (d), 19(3) and 19(4), the informed user would conclude that the design embodied in each style of the Spicy Sugar garments is substantially similar in overall impression to the Review Design considered as a whole, principally because of the identity in the shape, configuration and ornamentation. Whilst, for the reasons explained in Redberry , differences in pattern (including colour) cannot be ignored, having regard to the statutory directions, these differences are insufficient in this case to create a different overall impression. Review's case on infringement therefore succeeds. 37 As I said in Redberry , the fact that a design is registered in colour through the use of colour photographs (unaccompanied by a statement of newness and distinctiveness) is relevant to determining the extent of the monopoly sought and given. Everything that is shown in the registered design (unless disclaimed in some way) forms part of the subject matter protected by registration. The pattern (including colour) that is shown on the Review Design as registered is thus part of what is protected, and is to be accorded some weight. In this regard, I refer to my discussion in Redberry at [47]-[52]. How much weight is to be given to pattern (and colour) will depend on the nature of the product and the relative importance of the different visual features of the registered design, as viewed by the informed user standard, having regard to the prior art, and the freedom of the designer to innovate. If colour is important, it will be so because the factors relevant to the registered design lead to this conclusion. As indicated in Redberry , pattern, including colour, is a feature that an informed user would consider important in creating the overall impression of the Review Design, a conclusion borne out by the use of colour photographs to depict the design in the registration application. In the case of the two styles of the Spicy Sugar garments, however, the differences as regards this feature are overborne by the identity of other visual features, with the result that the design embodied in each style is substantially similar in overall impression to the Review Design. 38 For the reasons stated in Redberry at [55]-[60], I reject the proposition advanced by New Cover/Maco that the Review Design was invalidly registered because it was not new and distinctive when compared with the prior art base as it existed before the priority date of the Design. 39 In Review's Outline of Submissions dated 1 February 2008, Review sought: (a) general damages for loss of profits in the sum of $103,509.20; (b) general damages for damage to reputation of $200,000; and (c) additional damages of $50,000. 40 Damages or an account of profits may, at the plaintiff's option, be granted for infringement: see s 75(1)(b) of the Designs Act. Subsections 75(2) to (5) further provide: (2) The court may refuse to award damages, reduce the damages that would otherwise be awarded, or refuse to make an order for an account of profits, if the defendant satisfies the court: (a) in the case of primary infringement: (i) that at the time of the infringement, the defendant was not aware that the design was registered; and (ii) that before that time, the defendant had taken all reasonable steps to ascertain whether the design was registered; or (b) in the case of secondary infringement that at the time of the infringement, the defendant was not aware, and could not reasonably have been expected to be aware, that the design was registered. (3) The court may award such additional damages as it considers appropriate, having regard to the flagrancy of the infringement and all other relevant matters. (4) It is prima facie evidence that the defendant was aware that the design was registered if the product embodying the registered design to which the infringement proceedings relate, or the packaging of the product, is marked so as to indicate registration of the design. (5) In this section: primary infringement means infringement of a kind mentioned in paragraph 71(1)(a). secondary infringement means infringement of a kind mentioned in paragraph 71(1)(b), (c), (d) or (e). 42 Review claimed general damages in an amount of $103,509.20 upon the basis of lost sales. As in Redberry , Review invited the Court to calculate general damages on the assumption that every sale by New Cover/Maco should be treated as if it had been a sale by Review of the Review Dress (and on the assumption that New Cover/Maco sold all 730 imported Spicy Sugar garments in style 050620-2SS). If the Court were to assess damages on this simple assumption, then the ultimate figure would need to be discounted to reflect the likelihood that Review would have made the additional sales had the New Cover/Maco garments not entered the market. Mr Meng and Ms Dolcel said that New Cover/Maco sold garments to "boutique fashion shop buyers" and "exclusive development customers". That is, New Cover/Maco made wholesale sales to retailers in probable competition with Review. Mr Meng also said that New Cover/Maco customers made retail sales at "a mark up of anything between 100 to 250% on top of a garments wholesale price". If this were true, then the Spicy Sugar garments sold at substantially less than the Review Dress. In weighing this latter statement, I bear in mind that Mr Meng failed to attend for cross-examination. The result is that I find that the likelihood of a retailer buying the New Cover/Maco garments and the garments being purchased by a retail customer instead of the Review Dress (if available: see below) relatively high. If I assessed damages on the assumption that Review invited me to make, I would discount the figure of $103,509.20 by about 30% to reflect this, resulting in the amount of $72,456.44. 43 As it happens, however, Review's analysis does not withstand scrutiny. This is because there is no evidence of lost sales. Review fails to establish any lost opportunity for sale. As stated in Redberry at [68], there is evidence of sales of the Review Dress in August 2005 but, whilst there is evidence of repeats of the garment being made and presumably sold, there is no evidence that the Review Dress was on sale a year later, when New Cover/Maco imported the Spicy Sugar garments from China. There is, therefore, simply no evidence that sales by Review 2 and/or Review were in any way adversely affected by the availability of the Spicy Sugar garments. The assumptions that Review invites the Court to make cannot overcome the fundamental difficulty that there is no evidence that, at the relevant time, the Review Dress was available for retail sale to customers. Furthermore, since Review did not acquire the business of Review 2 until February 2007, it might be thought that, as at August 2006, Review could not in any event have suffered any lost opportunity for sale. 50 For present purposes, I accept that the public was unable to view representations of the Review Design on the Australian Designs Data Searching facility prior to 6 July 2006: see Redberry at [79]. For present purposes, I also accept that, as Mr Meng deposed, no-one at New Cover/Maco knew that the Review Design had been registered until so advised by Review's solicitors. The infringing Spicy Sugar garments in style 050620-2SS were imported into Australia over a month later and presumably sold afterwards. As noted earlier, both this style and style 050620SS were being sold by New Cover/Maco on 14 September 2006, when an employee of Review purchased both styles of the Spicy Sugar garments. I reject the proposition that New Cover/Maco could not reasonably have been expected to have been aware that the Review Design was registered, given the lack of any evidence from New Cover/Maco to the contrary and the passage of time following the posting of the Review Design on the data searching facility. In these circumstances, New Cover/Maco failed to establish that they could not reasonably have been expected to be aware that the Review Design was registered, as required by s 75(2)(b) of the Designs Act. 51 If (contrary to the conclusion stated here) they were to be regarded as primary infringers, they could not satisfy s 75(2)(a), because there is no evidence that, before the time of the infringement, they took any steps, let alone any reasonable steps, to ascertain whether the design was registered. 52 Review also sought additional damages under s 75(3) of the Designs Act, which permits the Court to award such additional damages as it considers appropriate, having regard to the flagrancy of the infringement and all other relevant matters. Additional damages are not therefore confined to cases of flagrancy. 54 I am not satisfied that the infringement was flagrant. In the circumstances discussed above, I am inclined to accept that, at the time of the infringement, no-one at New Cover/Maco knew that the Review Design was a registered design. Further, for the reasons stated in Redberry at [80], I reject the applicants' submission that a swing tag on the Review Dress provided notice to persons such as New Cover/Maco that the Review Dress embodied a registered design and attracted s 75(4) of the Designs Act. New Cover/Maco did not, therefore, deliberately infringe Review's design rights: see Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 587 at 591 per Branson J. Further, Review did not contest the claim made by New Cover/Maco that they ceased their infringing conduct in October/November 2006, after becoming aware of Review's claim. 55 Review's case on additional damages was similar to its case for additional damages in Redberry . It rested largely on "the closeness of copying" and allegations that it was the apparent business practice of New Cover/Maco to engage in copying the garment designs of other designers. The similarity of the Spicy Sugar garments to the Review Design and the Review Dress that embodied it is self-evident. The closeness of the similarity makes it more probable than not that someone on the "[p]reparation, styling and research" side of the respondents' business copied the design embodied in the Review Dress in order to make the Spicy Sugar garments. Ms Dolcel's explanation that the similarity was mere "coincidence" was unconvincing. Furthermore, Ms Dolcel's evidence was to the effect that New Cover/Maco bought other designers' garments and incorporated aspects of them in their own garments. In response to the proposition that New Cover/Maco did not originate designs but merely copied them, Ms Dolcel accepted that "[t]hat's what fashion is". On the basis of Ms Dolcel's evidence, I accept that New Cover/Maco created garments by copying the designs of others, to a greater or lesser extent, depending on the garment in question. In the designs context, copying per se is not, however, unlawful and does not establish a design infringement. There is nothing relevantly reprehensible in this business practice providing it does not result in design infringement. Accordingly, copying alone does not attract additional damages. Copying resulting in design infringement can, of course, justify an award of general damages, but, in general, such copying must be flagrant to justify additional damages. I have found, however, that the copying in this case was not flagrant: see [54] above. 56 Review also relied on the affidavit of Keith Richards of 22 January 2008, which was filed shortly before the trial. Mr Richards' affidavit amounted to an allegation of copyright infringement against New Cover, based on the facts to which he deposed. Ultimately, for the reasons stated in Redberry , I would regard this evidence as irrelevant and, therefore, inadmissible. Furthermore, in contrast to Redberry , at best this evidence amounted to one instance of suspected copying. On its own, it could not amount to evidence of relevant propensity; and could not satisfy s 97 of the Evidence Act 1995 (Cth). 57 Review also referred me to its infringement allegations with respect to registered design No 306802. These allegations are the subject of the second part of this proceeding. At this stage, they can rise no higher than this. 58 I would, however, award additional damages upon the following basis. The affidavit evidence of Mr Meng, together with the evidence of Ms Dolcel, established that the fashion business conducted by New Cover/Maco was a substantial operation. Having regard to this evidence and to Mr Meng's failure to attend for cross-examination, I give little weight in this connection to the proposition that New Cover/Maco was unable to afford legal representation. Neither of Mr Meng's nor Ms Dolcel's statements in this regard was corroborated by any evidence. As noted above, New Cover/Maco discovered no relevant documents concerning the manufacture, importation and sale of Spicy Sugar style 050620SS. This omission was not satisfactorily explained. I did not find Ms Dolcel's evidence in this regard credible. Further, Ms Dolcel's explanation about New Cover/Maco's inadequate response to Review's notice to produce was also unsatisfactory and not credible. As already noted, Mr Meng did not attend Court in answer to a notice for cross-examination.


case_text: Since the informed user standard has been adopted by the Registered Designs Act 1949 (UK), the explanation of the standard by courts in the UK provides some guidance. In Redberry , I referred to the exposition of the informed user standard in Woodhouse UK Plc v Architectural Lighting Systems [2006] RPC 1 (" Architectural Lighting "). In this case, his Honour Judge Fysh QC (at [50]) defined the concept of an informed user as follows: First, this notional person must obviously be a user of articles of the sort which is subject of the registered design and I would think, a regular user at that. He could thus be a consumer or buyer or be otherwise familiar with the subject matter say, through use at work. The quality smacks of practical considerations. In my view the informed user is first, a person to whom the design is directed. Evidently he is not a manufacturer of the articles and both counsel roundly rejected the candidature of 'the man in the street'. 'Informed' to my mind adds a notion of familiarity with the relevant rather more than what one might expect of the average consumer; it imports the notion of 'what's about in the market?' and 'what has been about in the recent past?'. I do not think it requires an archival mind (or eye) or more than an average memory but it does I think demand some awareness of product trend and availability and some knowledge of basic technical considerations (if any). In connection with the latter, one must not forget that we are in the territory of designs and thus what matters most is the appearance of things; as Mr Davis reminded me, these are not petty patents. Therefore, focus on eye appeal seems more pertinent than familiarity with the underlying operational or manufacturing technology (if any). I feel uncomfortable with analogy to the 'man skilled in the art' whose 'nerd-like' (and other) attributes seem too technical: Technip France SA's Patent [2004] EWCA Civ 381 ; [2004] R.P.C. 46 at [6-12] (CA). (Emphasis original) The properly informed eye of the court must make its decision as a matter of degree as a matter of overall impression: see Architectural Lighting at [52]. 25 As noted in Redberry , in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 ; [2007] FSR 13 (" Proctor & Gamble Co v Reckitt Benckiser ") at [31] et seq, where Lewison J (Chancery Division Patents Court) considered and approved the Architectural Lighting observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936 ; (2007) 73 IPR 605 (" Proctor & Gamble ") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. Jacob LJ noted (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law". 26 As also noted in Redberry , in January 2007, the Design Registrar of the UK Intellectual Property Office had cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 30 As noted in Redberry , there may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. I indicated in Redberry , for the reasons stated there, that I preferred the former approach. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user.


case_text: As noted in Redberry , in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 ; [2007] FSR 13 (" Proctor & Gamble Co v Reckitt Benckiser ") at [31] et seq, where Lewison J (Chancery Division Patents Court) considered and approved the Architectural Lighting observations, as did the Court of Appeal: see Proctor & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCACIV 936 ; (2007) 73 IPR 605 (" Proctor & Gamble ") at [24], [25], [32] per Jacob LJ, with whom May and Dyson LJJ agreed. Jacob LJ noted (at [28]) "the informed user is alert to design issues and is better informed than the average consumer in trade mark law". 27 In Walton , the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho had long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor & Gamble Co v Reckitt Benckiser ( Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].


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


case_outcome: discussed

case_text: As also noted in Redberry , in January 2007, the Design Registrar of the UK Intellectual Property Office had cited and applied the Architectural Lighting 'informed user' analysis in ruling on the validity of a clothing design registration: see Application by Pauline Ann Walton to invalidate UK Registered Design in the name of Zap Ltd (UK IPO, 0-027-07, 22 January 2007) (" Walton "). 27 In Walton , the applicant sought to invalidate a poncho design registered by Zap Ltd ("Zap") on the grounds that it lacked novelty, in part because it copied her earlier poncho designs: see Walton at [3], [32]. Zap defended on the grounds that the basic design of the poncho had long been known, and thus there was limited freedom to design: see [15]. Applying his Honour Judge Fysh QC's definition of informed user, as approved by Lewison J in Proctor & Gamble Co v Reckitt Benckiser ( Walton at [36]-[37]), the Registrar accepted Zap's submissions, concluding "I believe that an informed user would be aware that there is limited freedom to design a poncho which is not basically square or rectangular in shape": see Walton at [40]; also at [43]. Based primarily on a difference in neck design, the Registrar found that the Zap design would in fact create a different overall impression on an informed user and thus it was validly registered: see Walton at [39]-[45].


case_text: As noted in Redberry , the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry . 30 As noted in Redberry , there may be a difference in the discussion to date as to what is needed to have the requisite product familiarity. On one view, this familiarity is greater than the information possessed by the average user; on another view, this familiarity is that which is possessed by the ordinary user: compare Architectural Lighting at [50] with Apple at [14]. I indicated in Redberry , for the reasons stated there, that I preferred the former approach. I doubt that, generally, the ordinary user will be appropriately regarded as an informed user.


case_title: Icon Plastics Pty Ltd [2007] ADO 2

case_text: As noted in Redberry , the Australian Designs Office ("ADO") considered the informed user standard in Re Application in the name of Apple Computer Inc (2007) 74 IPR 164 (" Apple ") and Icon Plastics Pty Ltd [2007] ADO 2 (5 July 2007) (" Icon "): see Icon at [19], [21] and Apple at [11], [14]. I refer to, but do not repeat, the more detailed discussion of Apple and Icon in Redberry .


case_text: I turn first to Review's claim for general damages. Save for an exercise of discretion under s 75(2) of the Designs Act, Review is entitled to an amount representing general damages for the infringement. The measure of damages here is the diminution in the value of the design as a chose in action, which is reflected in loss of sales and injury to reputation and the like: see Prior v Lansdowne Press Pty Ltd [1977] VR 65 (" Prior v Lansdowne ") at 70 per Gowans J. 44 Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design.


case_text: Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design.


case_text: Review sought damages on an alternative basis, which is made out in the following way. I accept that the infringement resulted in a probable diminution in the value of the design as a chose in action because the infringement resulted in some probable diminution in the commercial value of the design in respect of its future use. Further, the reproduction of the design by New Cover/Maco under the Spicy Sugar label and the wholesale distribution of garments embodying the design to New Cover/Maco's various retail customers is likely to have had some adverse effect on the reputation of the design and its "exclusivity" (or "freshness" as Gowans J said in Prior v Lansdowne at 70; applied by von Doussa J in Milpurrurru v Indofurn Pty Ltd (1994) 30 IPR 209 at 243). See also Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 (" Innovative Lifestyle ") at [31] per Jessup J. That is, on the evidence before the Court (to which I am about to refer), the reproduction of the Review Design under the cheaper Spicy Sugar label had the distinct potential to diminish customer interest in the Review Design and, in consequence, consumer demand for garments embodying the Review Design. 47 In this circumstance, a further question arises as to whether New Cover/Maco can successfully rely on s 75(2)(b) of the Designs Act. The evidence of Mr Meng and Ms Dolcel was that New Cover/Maco prepared the companies' clothing range in Australia and carried out sampling, grading and manufacturing in China, after which they imported the garments into Australia. If the garments had been made in Australia, then I would be bound to find that New Cover/Maco had made the garments in contravention of s 71(1)(a) of the Designs Act. They would have been liable for a primary infringement: compare Innovative Lifestyle at [21]. Section 75(2)(b) would not have been available to them.


case_text: The evidence establishes, however, that the infringing garments were made in China and were thereafter imported into Australia and sold here. Section 21(1)(b) of the Acts Interpretation Act 1901 (Cth) provides that, in any Act, unless the contrary intention appears, "references to localities jurisdictions and other matters and things shall be construed as references to such localities jurisdictions and other matters and things in and of the Commonwealth". This provision reflects the common law presumption that statutes are read "as being prima facie restricted in their operation within territorial limits": see Jumbunna Coal Mine NL v Victorian Coal Miners' Association [1908] HCA 95 ; (1908) 6 CLR 309 at 363 per O'Connor J, discussed in DC Pearce and RS Geddes, Statutory Interpretation in Australia (6 th ed, 2006) at [5.5]. The effect of s 21(1)(b) of the Acts Interpretation Act 1901 (Cth) is implicitly acknowledged in s 4 of the Designs Act. Section 21(1)(b) of this Act operates to confine the making or offering to make, with which s 71(1)(a) of the Designs Act is concerned, to a making or an offering to make in Australia (as s 4 of the Designs Act reflects): compare Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86 (" Hella-Australia "), which Gummow J cited with approval in Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (" Carnival Cruise ") at 509. In Hella-Australia , Street J refused an interlocutory injunction on the basis that an article did not infringe a registered design under s 30(b) of the Designs Act 1906 (Cth) unless the design had been applied to the article in Australia. Following Hella-Australia , Parliament amended s 30, with the result that the importation and sale of articles to which the design had been applied outside Australia were also infringements: see Designs Amendment Act 1967 (Cth) ("the 1967 Amendment") and Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287 at 293. Although Hella-Australia concerned a provision in the former Act, nonetheless it and the authorities referred to in Carnival Cruise and Carnival Cruise itself, establish that, absent contrary statutory intent, infringements must occur within Australia. Accordingly, on the evidence, the liability of New Cover/Maco could not arise under s 71(1)(a) but only under s 71(1)(b), (c), (d) or (e).


case_title: Hella-Australia Pty Ltd v Quinton Hazell (Aust) Pty Ltd (1967) 10 FLR 86


case_title: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495


case_title: Polyaire Pty Ltd v K-Aire Pty Ltd [2005] HCA 32 ; (2005) 221 CLR 287


case_text: Additional damages may be awarded on principles similar to those that govern aggravated and exemplary damages at common law: compare Aristocrat Technologies Australia Pty Ltd v DAP Services (Kempsey) Pty Ltd (2007) 157 FCR 564 (" Aristocrat ") at 570 per Black CJ and Jacobson J. There are elements of penalty and deterrence in making an award of additional damages: Aristocrat at 570; also Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517 at 557 per Finkelstein J. A purpose of additional damages is to "strip the infringer of all pecuniary benefits received from the infringement" and the sufficiency of the compensatory damages may be a relevant matter: see Aristocrat at 571-72.


case_title: Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd (2006) 70 IPR 517


case_text: I am not satisfied that the infringement was flagrant. In the circumstances discussed above, I am inclined to accept that, at the time of the infringement, no-one at New Cover/Maco knew that the Review Design was a registered design. Further, for the reasons stated in Redberry at [80], I reject the applicants' submission that a swing tag on the Review Dress provided notice to persons such as New Cover/Maco that the Review Dress embodied a registered design and attracted s 75(4) of the Designs Act. New Cover/Maco did not, therefore, deliberately infringe Review's design rights: see Microsoft Corporation v Goodview Electronics Pty Ltd (2000) 49 IPR 587 at 591 per Branson J. Further, Review did not contest the claim made by New Cover/Maco that they ceased their infringing conduct in October/November 2006, after becoming aware of Review's claim.


case_title: Jones v Dunkel (1959) 101 CLR 298

case_text: New Cover/Maco might also readily have given evidence as to the commercial benefit that they obtained in selling the infringing garments, but they did not choose to do so. In its absence, I assume that this evidence would not have advanced their case: see Jones v Dunkel (1959) 101 CLR 298. In the circumstances, I assume, therefore, that New Cover/Maco ran a profitable operation and that the sales of the infringing garments contributed to this operation.