case_text: Australia and the administrators argued that questions 1 and 2 were founded on the false assumption that apart from cl 7.1, the plaintiffs had an unqualified right, superior to Lehman Australia itself, to conduct, prosecute or resolve litigation with that company's insurers. It argued that the construction of cl 11.5 was not a matter of controversy and that it related only to claims against Lehman Australia being released. It argued that this construction would defeat the plaintiffs' contention that cl 11.5 was wider than its apparent terms. (As appears above, Lehman Bros disputes this construction.) Lehman Australia also argued that if the impugned provisions could not be supported by Pt 5.3A of the Act, then the deed would still be valid but those clauses would not be an operative part of the deed. Lehman Australia argued that if question 6 were answered "no", it would not follow that the deed would then become ineffective or void. Accordingly it argued that question 6 was of no utility to resolve any issue. Lehman Australia referred to the dangers of separate issues discussed in Tepko Pty Ltd v Water Board [2001] HCA 19 ; (2001) 206 CLR 1 and Bass v Permanent Trustee Co Ltd [1999] HCA 9 ; (1999) 198 CLR 334. In Tepko (2001) 206 CLR at 55 [168]-[170], Kirby and Callinan JJ observed in their dissenting judgment that the attractions of trials of issues rather than of cases in their totality are often more chimerical than real. They noted that common experience demonstrated that saving in time and expense were often illusory, particularly when they overlapped within parties' preparation for other factual matters. They said that a party might feel aggrieved if their case were knocked out on the trial of a preliminary or single issue, and might suspect that the abbreviated course had been adopted to meet the court's, rather than the parties', interests. And they noted that there was a potential for further appeals, particularly if the separate issue having been decided one way initially were reversed on appeal and the matter sent back for a full trial of the whole of the issues.


case_outcome: cited

case_text: the evidence will be relevant to whether the meaning of the expression "Claims" when used in the impugned clauses extends to any claims that might be made against Lehman companies other than Lehman Australia, notwithstanding the definition of "Claims" in the deed. While, no doubt, substantial arguments will be used to illuminate the rival constructions, little evidence will be relevant to placing the Court into the position that a reasonable person in the position of the parties would have occupied so as to be able to understand the genesis of the transaction, the background, context and circumstances by reference to which the deed was resolved to be made: Toll (FGCT) Pty Ltd v Alphapharm Pty Ltd [2004] HCA 52 ; (2004) 219 CLR 165 at 178-180 [36] , [41] per Gleeson CJ, Gummow, Hayne, Callinan and Heydon JJ; Royal Botanic Gardens and Domain Trust v South Sydney City Council [2002] HCA 5 ; (2002) 186 ALR 289 at 292-293 [9] - [12] per Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ; Bowen Investments Pty Ltd v Tabcorp Holdings Ltd [2008] FCAFC 38 ; (2008) 166 FCR 494 at 510-512 [50] - [53] where I considered the authorities.


case_outcome: distinguished

case_text: Bros argued that a number of judgments tended to suggest that, in analogous statutory contexts, courts had allowed companies involved in re-organisations or arrangements to stipulate that their creditors give releases to third parties. Lehman Bros argued that it will be necessary to consider the whole factual context in order to be able to come to a conclusion about whether, in the circumstances established at a trial, the impugned provisions could have been included in the deed. It referred to the caution expressed about separate questions by Gleeson CJ, Gummow, Hayne and Heydon JJ in Woolcock Street Investments Pty Ltd v CDG Pty Ltd [2004] HCA 16 ; (2004) 216 CLR 515 at 524-525 [7] , noting that those remarks were made where all the parties had agreed to the use of the separate question, unlike the present case. Lehman Bros argued that there may be relevant facts, such as the existence of joint or joint and several liability on the part of one or more of the Lehman companies with Lehman Australia, that could affect how the Court would determine the extent of the power under Pt 5.3A to authorise the making of a deed to bind creditors in respect of their rights against third parties. Lehman Bros argued that because of the need to have regard to a variety of potential factual contexts, it was impractical to order a separation of issues concerning the ambit of the power in Pt 5.3A for a deed to bind creditors, in the absence of the full context of all of the circumstances. It contended that it wished to advance evidence to show a connection between, and justifying, the exercise of the power to make the impugned clauses and the circumstances of the case. Lehman Bros argued that that would involve a factual investigation into the degree of connection between the impugned provisions and the source of power in Pt 5.3A , not suitable for investigation in a separate question. It also contended that evidence could support the inclusion of the impugned provisions in relation to potential claims for contribution or indemnity that it or other Lehman entities might have against Lehman Australia were they sued by one of the plaintiffs or another dissenting creditor. The plaintiffs emphasised in reply that the only beneficiaries of the wider release in cl 11.5 were Lehman companies. They contended that the separate questions still had utility. They argued that the issue whether there was power under Pt 5.3A to give effect to the impugned clauses in the deed should be determined on the basis that if the Court came to the conclusion that further evidence than the deed itself and the relevant matrix of fact in which the creditors' meeting came to resolve that it be executed could affect the outcome, then those questions should not be answered. Nonetheless, the plaintiffs argued that the issue of power under Pt 5.3A was a stark one and that the questions were capable of receiving an affirmative answer. They argued that if there were no power, the onus to demonstrate that there was no prejudice would then be on any defendants who sought to uphold a validation of the deed or its amendment under the provisions in Pt 5.3A of the Act on which they had relied. In Woolcock Street 216 CLR at 524-525 [7] Gleeson CJ, Gummow, Hayne and Heydon JJ stressed the importance of recognising that there may be difficulties in using procedures for separate issues in cases in which it is necessary to consider developing, as distinct from applying, common law principles and continued: "The dangers of developing common law principle against an artificially constricted body of fact are self-evident. That is why, in some cases, even if the parties join in asking a court to determine a question separate from trial of the facts, it may be prudent for the court to decline to answer the question presented as being one which it is inappropriate to answer ( Bass v Permanent Trustee Co Ltd [1999] HCA 9 ; (1999) 198 CLR 334 at 357-358 [51] - [53] ). Indeed, as Bass v Permanent Trustee Co Ltd illustrates ( Bass [1999] HCA 9 ; (1999) 198 CLR 334 at 359 [56] . See also Malika Holdings Pty Ltd v Stretton [2001] HCA 14 ; (2001) 204 CLR 290 at 308-309 [61] .), in some circumstances to answer a question may be contrary to the judicial process. If the question is answered, it is important to identify any limitations which the procedure adopted may impose on the breadth of any principle that is to be identified as having been established or applied."


case_text: This appeal is from a judgment of the Federal Magistrates Court, given on 3 October 2007, and designated as SZKRP v Minister for Immigration & Anor [2007] FMCA 1720. The learned Federal Magistrate dismissed an application by the appellant for judicial review of a decision of the Refugee Review Tribunal ("the Tribunal"), signed on 17 April 2007 and handed down on 8 May 2007. The Tribunal dismissed an application by the appellant for review of a decision of a delegate of the Minister for Immigration and Citizenship ("the Minister"), the first respondent to this appeal, refusing to grant to the appellant a protection visa under the Migration Act 1958 (Cth) ("the Migration Act "). 2 The appellant is a citizen of India. He first arrived in Australia on 26 October 2006. He returned to India on 5 November 2006 and re-entered Australia on 1 December 2006. He then applied for a protection visa on 7 December 2006. The Minister's delegate made the decision refusing to grant the visa on 6 February 2007. 3 Section 36 of the Migration Act provides that there is a class of visas to be known as protection visas. A criterion for a protection visa is that the person applying for it be a non-citizen in Australia to whom the Minister is satisfied Australia has protection obligations under the Refugees Convention as amended by the Refugees Protocol. The terms "Refugees Convention" and "Refugees Protocol" are defined in s 5(1) of the Migration Act to mean respectively the Convention relating to the Status of Refugees done at Geneva on 28 July 1951 and the Protocol relating to the Status of Refugees done at New York on 31 January 1967. It is convenient to call these two instruments taken together the "Convention." For present purposes it is sufficient to note that Australia has protection obligations to a person who: owing to a well-founded fear of being persecuted for reasons of race, religion, nationality, membership of a particular social group or political opinion, is outside the country of his nationality and is unable or, owing to such fear, is unwilling to avail himself of the protection of that country.


case_text: The grounds of appeal were in the following terms: 1. Federal Magistrate grossly breached the rules procedural fairness (and also appellant's fundamental right to be heard) by refusing to consider the written submission made by the appellant on the date of final hearing while taking oral submissions made by the legal representatives for the first respondent. [sic] 2. Federal Magistrate erred in law by rejecting to apply the law created by the High Court in Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550 and instead applying a Federal Court cases MIMA v Lay Lat [2006] FCAFC 61 and SZCIJ v MIMA [2006] FCAFC 62. This is contrary to the fact that the High Court applied " Kioa" in recent refugee cases in 2006 and 2005. [sic] 3. Federal Magistrate erred in law by ignoring the submission that the tribunal breached the s 441A thus the tribunal committed an jurisdictional error. [sic] 4. Federal Magistrate erred in law in her finding that the appellant is entitled to "limited" rules of procedural fairness. Appellant says that this is contrary to the findings of High Court in cases such as VEAL v MIMA [2005] HCA 72 , SAAP v MIMA [2005] HCA 24 , SZBEL v MIMA [2006] HCA 63 , and NAFF v MIMA [2004] HCA 62. [sic] PARTICULARS Federal magistrate found that the appellant is not entitled to the rules of procedural fairness established by the High Court of Australia; instead the appellant's only entitlement in procedural fairness is limited to the sections of the Act. 5. Federal Magistrate erred in law by ignoring an important procedural fairness issue raised in the application to the court; in particular the appellant complained that "the tribunal member while taking evidence did not allow the appellant to refer to his written notes and still regarded appellant's changed memory of date of assault (April 2001 and later April 2002) was a serious mistake". [sic] 6. Federal Magistrate erred in law by finding that the tribunal is entitled to obtain the independent information from whatever the sources it chooses. [sic] This is a serious misreading of s 424(1) of the Migration Act 1958 . I will now deal with each of the grounds of appeal in turn. 30 In dealing with ground 1 of the judicial review application in which the appellant had alleged failure by the Tribunal to comply with s 424A , the learned Federal Magistrate noted that he had referred in his written submissions to various extracts from judgments of the High Court in Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550. She said (at [35]): Counsel for the First Respondent correctly submitted that the common law principles of procedural fairness identified by the High Court in Kioa are not necessarily applicable to the proceeding before this Court. Section 422B of the Act has the effect that all that is required of the Tribunal in so far as procedural fairness is concerned is to comply with the provisions of the Act ( Minister for Immigration and Multicultural Affairs v Lay Lat [(2006) [2006] FCAFC 61 ; 151 FCR 214] and SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62). Accordingly, the Applicant's written submissions referring to the common law rule of procedural fairness are misconceived in so-far as they relate to the matter before this Court. 34 No separate submissions were made in respect of this appeal ground. It appears to be a revisiting of the Kioa [1985] HCA 81 ; 159 CLR 550 point. The scope of the hearing rule aspect of the rules of procedural fairness is limited by s 422B as already discussed. This ground therefore fails. 35 No submission was made in support of this ground. No factual basis for it was identified. This ground fails. 36 The appellant referred to s 424 empowering the Tribunal to obtain any information that it considers relevant. He contended that this did not authorise the Tribunal to get any information from any source. In this respect there is no basis for the contention that the Tribunal or the learned magistrate erred. In so saying I would express my concern about the quality of some of the information on which the Tribunal acted. A six year old report of a telephone conversation between somebody unknown in a Canadian agency, with somebody unknown in an American University, might not be thought to provide a particularly solid foundation for an important administrative decision which could affect the life or liberty of the person concerned. In fairness however, it must be acknowledged that the independent evidence relating to the treatment of Burghers in Sri Lanka was peripheral to the case and relevant to a matter which the Tribunal raised as a possible basis for the grant of a protection visa. The matter of persecution on the grounds of ethnicity had not been raised by the appellant.


case_outcome: followed

case_text: The grounds of appeal were in the following terms: 1. Federal Magistrate grossly breached the rules procedural fairness (and also appellant's fundamental right to be heard) by refusing to consider the written submission made by the appellant on the date of final hearing while taking oral submissions made by the legal representatives for the first respondent. [sic] 2. Federal Magistrate erred in law by rejecting to apply the law created by the High Court in Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550 and instead applying a Federal Court cases MIMA v Lay Lat [2006] FCAFC 61 and SZCIJ v MIMA [2006] FCAFC 62. This is contrary to the fact that the High Court applied " Kioa" in recent refugee cases in 2006 and 2005. [sic] 3. Federal Magistrate erred in law by ignoring the submission that the tribunal breached the s 441A thus the tribunal committed an jurisdictional error. [sic] 4. Federal Magistrate erred in law in her finding that the appellant is entitled to "limited" rules of procedural fairness. Appellant says that this is contrary to the findings of High Court in cases such as VEAL v MIMA [2005] HCA 72 , SAAP v MIMA [2005] HCA 24 , SZBEL v MIMA [2006] HCA 63 , and NAFF v MIMA [2004] HCA 62. [sic] PARTICULARS Federal magistrate found that the appellant is not entitled to the rules of procedural fairness established by the High Court of Australia; instead the appellant's only entitlement in procedural fairness is limited to the sections of the Act. 5. Federal Magistrate erred in law by ignoring an important procedural fairness issue raised in the application to the court; in particular the appellant complained that "the tribunal member while taking evidence did not allow the appellant to refer to his written notes and still regarded appellant's changed memory of date of assault (April 2001 and later April 2002) was a serious mistake". [sic] 6. Federal Magistrate erred in law by finding that the tribunal is entitled to obtain the independent information from whatever the sources it chooses. [sic] This is a serious misreading of s 424(1) of the Migration Act 1958 . I will now deal with each of the grounds of appeal in turn. 30 In dealing with ground 1 of the judicial review application in which the appellant had alleged failure by the Tribunal to comply with s 424A , the learned Federal Magistrate noted that he had referred in his written submissions to various extracts from judgments of the High Court in Kioa v West [1985] HCA 81 ; (1985) 159 CLR 550. She said (at [35]): Counsel for the First Respondent correctly submitted that the common law principles of procedural fairness identified by the High Court in Kioa are not necessarily applicable to the proceeding before this Court. Section 422B of the Act has the effect that all that is required of the Tribunal in so far as procedural fairness is concerned is to comply with the provisions of the Act ( Minister for Immigration and Multicultural Affairs v Lay Lat [(2006) [2006] FCAFC 61 ; 151 FCR 214] and SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62). Accordingly, the Applicant's written submissions referring to the common law rule of procedural fairness are misconceived in so-far as they relate to the matter before this Court. 31 In Minister for Immigration and Multicultural and Indigenous Affairs v Lat [2006] FCAFC 61 ; (2006) 151 FCR 214 the Full Court held that s 51A of the Act operates to exclude the common law fair hearing rule in relation to offshore visa applications. Section 51A relates to ministerial grants of visas to non-citizens. Its effect is similar to that of s 422B in its application to Tribunal hearings. Similar provision is made by s 357A in relation to Migration Review Tribunal hearings. The operation of these sections has been considered in a large number of authorities which were referred to by the Full Court in its judgment. The Court said, in relation to Subdiv AB in which s 51A is found: 66. What was intended was that Subdiv AB provide comprehensive procedural codes which contain detailed provisions for procedural fairness but which exclude the common law natural justice hearing rule. 67. Other aspects of the common law of natural justice, such as the bias rule are not excluded: see ( VXDC v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1388 ; (2005) 146 FCR 562 at [27] ). 68. The intention to exclude the common law rules in the present case is especially plain when s 51A(1) is read with s 57(3). The legislature could hardly have intended to provide the full panoply of common law natural justice to visa applicants who are required to be outside Australia when the visa is granted, while conferring a more limited form of statutory protection upon onshore applicants. The same Full Court in SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62 , said that s 422B excludes the common law natural justice hearing rule for the reasons given, in relation to s 51A, in Lat [2006] FCAFC 61 ; 151 FCR 214.


case_title: SZCIJ v Minister for Immigration and Multicultural Affairs [2006] FCAFC 62


case_text: power to grant a dispensation from the need to comply with the requirement that an approved summary of the scheme has been given to every effected policy holder under s 17C(5) is not conditioned to occur at any particular time prior to the actual order for the making of the confirmation of the scheme. The conditions in s 17C(2) and its analogues under the Act are not preconditions to the power to order confirmation of a scheme and a failure to comply strictly with them will not prevent the Court confirming a scheme: Re Armstrong Jones Life Assurance Ltd (1997) 74 FCR 160 at 162C per Emmett J; Re Royal & Sun Alliance Life Assurance Ltd [2000] FCA 1259 ; (2000) 104 FCR 37 at 40 [16] - [18] per Katz J; Re Insurance Australia Ltd [2004] FCA 524 ; (2004) 139 FCR 450 at 458-459 [31] - [37] , 463 [62]-[63] per Lindgren J.


case_title: Re Royal & Sun Alliance Life Assurance Ltd [2000] FCA 1259 ; (2000) 104 FCR 37


case_title: Re Insurance Australia Ltd [2004] FCA 524 ; (2004) 139 FCR 450


case_outcome: referred to

case_text: However, the width of the meaning of the term creditor in the Deed is likely to bring SETL within the class of creditors to which s 444D(1) and 444E apply. (See: Smith v Carr (1993) 10 ACSR 427 per Debelle J at 432). The material facts recited in the pleading show that notwithstanding the limited relief sought by SETL against London Partners in this proceeding, it is plainly arguable that SETL may be a person who has a cause of action against London Partners at law or in equity that sounds in damages albeit at this point it may be of uncertain measure. It may be a claim for equitable compensation or compensation under s 1317H of the Act for involvement in a contravention of s 181 that exists independently of rectification of the register, or it may be a contingent claim that, for example, may arise in the event that it is the fact that London Partners holds the securities on trust for a bona fide purchaser for value without notice and is unable to deliver up the securities. In either circumstance it would follow that SETL would be a creditor of London Partners in respect of an unliquidated sum. (See: Re: R L Child & Co Pty Ltd (1986) 10 ACLR 673, per McLelland J at 674; FCT v Simionato Holdings Pty Ltd (1997) 15 ACLC 477 per Mansfield J at 481; Re McLean (1992) 108 ALR 360; Forshaw v Thompson (1992) 35 FCR 329; Petrochemical Industries Ltd v Dempster Nominees Pty Ltd (1994) 15 ACSR 468 per Murray J at 475-476).


case_title: Forshaw v Thompson (1992) 35 FCR 329


case_title: Re: R L Child & Co Pty Ltd (1986) 10 ACLR 673


case_title: Petrochemical Industries Ltd v Dempster Nominees Pty Ltd (1994) 15 ACSR 468


case_title: Smith v Carr (1993) 10 ACSR 427


case_outcome: considered

case_title: Addis v Burrows [1948] 1 KB 444

case_text: second case is Addis v Burrows [1948] 1 KB 444. There premises were let on a yearly tenancy "until the tenancy be determined at the end of the first or any subsequent year by one of the parties giving to the other of them six calendar months previous notice in writing." On the face of the tenancy agreement the period of the tenancy was from 1 January 1944 to 30 June 1945, not a term of one year. The lessors served a notice to quit on 28 June 1945. The notice required the tenant to quit "at the expiration of the year of your tenancy which will expire next after the end of one half year from the service of this notice". The Court of Appeal decided that the tenancy granted was for eighteen months and thereafter on a yearly tenancy. It also held that the notice to quit was valid. Evershed LJ dealt with the sufficiency of the notice in a lengthy passage between pages 452-456. He said (at 453) that that notice "puts plainly on the tenant the obligation of ascertaining the date meant by the form of words used. Prima facie, the problem is not very difficult. As [Lord Greene MR] observed during the argument, the tenant requires for its solution two things only, a modern calendar and the tenancy agreement. Armed with those two things he asks himself first: When was this notice served on me? ... [H]e is next required to find out when one half year ends after the service of the notice. ... [T]hen only remains the question: when does the year of his tenancy current on December 29, 1945, come to an end? It is true that involves the interpretation of the tenancy agreement. But, if I am right in the view which I have expressed, he should have no great difficulty in answering that question." Evershed LJ distinguished Phipps v Rogers . He said (at 455) of that case that there was "an accumulation of difficulties provided by the joint effect of the language of the tenancy agreement and the very unusual form of the notice to quit." Later (also at 455) he pointed out that the court had come "to the conclusion that the tenant was involved in so many difficulties that there was a failure on the landlord's part either to give a certain date or to supply the tenant with a formula from which certainty could be ascertained and that, therefore, the notice was not good." By way of contrast, as regards the case before the court the judge said that any ambiguity was capable of a clear answer. The last case is Allam & Co Ltd v Europa Poster Services Ltd [1968] 1 WLR 638. I need not go into the facts. I cite the case for the observation by Buckley J who looked closely at Phipps v Rogers and Addis v Burrows and (at 652) said this: "No doubt if those cases are both good law, as I must assume that they are, the question of the validity of the notice, the interpretation of which involves some question of law, must become a question of degree. There must be cases which, because of the difficulty or complexity of the case, fall within the principle of Phipps v Rogers . There must be others which, notwithstanding that some question of law arises, because of the simplicity or comparative simplicity of the problem fall within Addis v Burrows ."


case_text: last case is Allam & Co Ltd v Europa Poster Services Ltd [1968] 1 WLR 638. I need not go into the facts. I cite the case for the observation by Buckley J who looked closely at Phipps v Rogers and Addis v Burrows and (at 652) said this: "No doubt if those cases are both good law, as I must assume that they are, the question of the validity of the notice, the interpretation of which involves some question of law, must become a question of degree. There must be cases which, because of the difficulty or complexity of the case, fall within the principle of Phipps v Rogers . There must be others which, notwithstanding that some question of law arises, because of the simplicity or comparative simplicity of the problem fall within Addis v Burrows ."


case_text: these sections in mind Mr Horgan for ASP argued that the owner was forbidden from giving a notice that would determine the charter as that was prohibited by s 440C. He referred me to Barclays Mercantile Business Finance Ltd v Sibec Developments Ltd [1992] 1 WLR 1253 to support the view that this was a reasonably arguable proposition. I do not feel able to accept Mr Horgan's argument. The effect of s 440C is to prevent possession (actual or constructive) being taken of property in the hands of the administrators: Cinema Plus Ltd (Administrators Appointed) v Australia & New Zealand Banking Group Ltd [2000] NSWCA 195 ; (2000) 49 NSWLR 513, 545. The notice determining the charter, even if it were effective, did not remove possession of the vessel from Pan Australia. In any event, it is plain that s 441J permits the giving of a notice of termination. In Re Java 452 Pty Ltd (Administrators Appointed) (1999) 32 ACSR 507, 515 Byrne J said in relation to a notice to determine a tenancy that the result of ss 440C and 441J was that "although the lessor may not recover possession, it may take steps to perfect its right to possession which right might be exercisable, if available, at the end of the administration". This reasoning applies a fortiori to a charterparty. The English legislation considered in Barclays Mercantile, the Insolvency Act 1986 (UK), is in different terms. There is in any case nothing like s 441J in that statute.


case_text: do not feel able to accept Mr Horgan's argument. The effect of s 440C is to prevent possession (actual or constructive) being taken of property in the hands of the administrators: Cinema Plus Ltd (Administrators Appointed) v Australia & New Zealand Banking Group Ltd [2000] NSWCA 195 ; (2000) 49 NSWLR 513, 545. The notice determining the charter, even if it were effective, did not remove possession of the vessel from Pan Australia. In any event, it is plain that s 441J permits the giving of a notice of termination. In Re Java 452 Pty Ltd (Administrators Appointed) (1999) 32 ACSR 507, 515 Byrne J said in relation to a notice to determine a tenancy that the result of ss 440C and 441J was that "although the lessor may not recover possession, it may take steps to perfect its right to possession which right might be exercisable, if available, at the end of the administration". This reasoning applies a fortiori to a charterparty. The English legislation considered in Barclays Mercantile, the Insolvency Act 1986 (UK), is in different terms. There is in any case nothing like s 441J in that statute.


case_text: second question, whether termination was effected, gives rise to several difficult issues. The first is whether a notice of termination will bring the charter to an end or whether the charter remains on foot until the vessel is repossessed. Unfortunately this is still a controversial topic. In The Turakina (1998) 154 ALR 666, Tamberlin J held that a demise charter, under which possession and control of the ship had been given to the charterer, could not be terminated by notice alone. He said termination would only occur when the owner retook possession of the ship. In The Rangiora [2000] 1 Lloyd's Rep 36, the New Zealand High Court followed that decision, stating that the principle was a rule of the common law. Nonetheless, there is a view that the rule established in The Turakina may be avoided by careful drafting. In CMC (Australia) Pty Ltd v Ship 'Socofl Stream' [1999] FCA 1419 ; (1999) 95 FCR 403 it was held that the question whether a demise charter could be terminated without repossession depended upon the terms of the charterparty. The judge, Moore J, said (at 419): "[I]t is necessary to ascertain from the terms of the charterparty whether the continuing physical possession of a vessel by the charterer (pending the taking of physical possession by the owner either by redelivery or some other means) is co-extensive with continuing possession and absolute control of the vessel of the type characteristic of a demise charter." He went on to say (at 520) that it: "... is difficult to avoid a conclusion that if a charterparty expressly provided for its termination and the power to terminate was exercised, then the charterer ceased to be a demise charterer from the time of termination at least in the absence of provisions in the charterparty that suggested some other result." Comity requires me to apply The Socofl Stream and thus hold that in the case of this charterparty, in particular because of cll 28 and 29, the charter can be terminated on written notice. Clause 28 provides for termination by notice and cl 29 says that when the charter is at an end the charterer is the "gratuitous bailee" of the vessel. If I may say so, this is a troubling conclusion. It is troubling because until the owner actually withdraws the vessel not only does the charterer retain possession it still mans and supplies her. The problem becomes acute if the notice of termination is served while the vessel is at sea. Applying The Socofl Stream, she is not under demise while returning to port. If that be true it may surprise the owner to learn that the master now has ostensible authority to bind it. There is also the possibility that the owner may decide to retake possession at the next port of call or at a convenient port or place as contemplated by cl 29. The result of the application of The Socofl Stream is that the owner has control of the vessel during the voyage. The true position is probably different. I prefer the view that it is not until the vessel has been withdrawn that the demise comes to an end for it is only then that the charterer has lost exclusive possession of the vessel. That the charterparty describes the charterer's possession before delivery as that of "gratuitous bailment" is not to the point. The real relation between the charterer and the vessel cannot be disguised by the use of an inapposite label or description. I appreciate, however, that others take a different view.


case_text: administrators seek the revocation because they have a potential buyer for the business and the sale may not go ahead unless the buyer is able to charter the vessel. They also say that if the action in rem remains on foot the owner will incur legal costs that will be passed on to the company in administration. I think there is little substance in the first point. If the vessel is arrested the owner will put up security and obtain its release. That will happen quickly, as it always does with a vessel that can easily be demised. There is some substance to the second point. I accept the owner will incur some costs in sorting out the quantum of ASP's claim and a portion of the costs will be payable by Pan Australia, leaving less for the other unsecured creditors. But the costs will not be excessive, in my opinion. Anyway, I am of opinion that the interests of the general body of unsecured creditors should be subordinated to those of ASP whose claim over the vessel is proprietary in nature. See also in relation to a similar application: Morris v Ship Kiama (Mubum) (1998) 16 ACLC 945. For the foregoing reasons, I will make orders that Jaymont's motion be dismissed with costs and Pan Australia's application be dismissed but with no order as to costs. There will also be an order that ASP have leave to apply in proceeding no. VID 1099 of 2006 for the arrest of the vessel. I certify that the preceding thirty-six (36) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finkelstein. Associate: Dated: 20 October 2006 Counsel for the Plaintiff in proceeding nos. VID 1092 of 2006 and VID 1099 of 2006: Mr S Horgan Solicitor for the Plaintiff in proceeding nos. VID 1092 of 2006 and VID 1099 of 2006: Holman Fenwick & Willan Counsel for the Defendant in proceeding no. VID 1092 of 2006: Mr J Evans Solicitor for the Defendant in proceeding no. VID 1092 of 2006: Russell Kennedy Counsel for the Defendant in proceeding no. VID 1099 of 2006: Mr H N G Austin Solicitor for the Defendant in proceeding no. VID 1099 of 2006: Monahan + Rowell Date of Hearing: 12 October 2006 Date of Judgment: 18 October 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1379.html


case_text: first case is P Phipps and Company (Northampton and Towcester Breweries) Ltd v Rogers [1925] 1 KB 14 which, if I may say so, is the high watermark of this line of authority. The case concerned a yearly tenancy of a public house. Either party could determine the tenancy "upon giving to the other of three months' previous notice in writing of his or her intention to do so expiring on any one of the days appointed as special transfer sessions by the justices for the district in which the premises are situate..." The landlord gave the tenant a notice to quit which read: "We do hereby give you notice to quit and deliver up to us (or such other person as we may appoint) on the earliest day your tenancy can legally be terminated by valid notice to quit given to you by us at the date of the service hereof ...". The notice was declared invalid. Bankes LJ said (at 20) that: "It is not necessary that a notice should be clear and unambiguous in expressed terms provided it can be rendered clear and unambiguous by the application of the maxim 'Id certum est quod certum reddi potest'. ['That is sufficiently certain which can be made certain'.] There are many decided cases in the books where the Courts have imputed to the tenant knowledge which, when applied to the notice to quit served upon him, renders clear what would without that knowledge have been neither clear nor unambiguous." Bankes LJ, however, said that he was not prepared to impute or attribute to the tenant the knowledge of the facts or of the law that was required to enable the tenant to determine the day upon which the tenancy would come to an end. The situation was that several difficult construction questions and questions of fact had to be sorted out before the notice could be rendered certain. Among the points that needed to be resolved was whether the reference to "three months" meant three calendar months or three lunar months; whether an annual licensing meeting was or was not a special transfer session; and when the special transfer sessions were in fact going to be "held". Bankes LJ was unwilling to extend the maxim to embrace such a complex enquiry. Atkin LJ rejected the notice on similar grounds. He said (at 28): "But it appears to me to defeat the whole object of notice to leave the date to be ascertained by the tenant as a problem not of fact but of law ... A tenant receiving such a notice might have to consult his solicitor, who might have to consult counsel, who might have to advise an application to the Court for a declaration by action or summons." Scrutton LJ was in dissent. He was of opinion that a long-settled line of authorities had treated landlords and tenants as both knowing the law and had assumed that the tenant must know the necessary facts. This, he said, bound him to conclude that the notice was valid. The second case is Addis v Burrows [1948] 1 KB 444. There premises were let on a yearly tenancy "until the tenancy be determined at the end of the first or any subsequent year by one of the parties giving to the other of them six calendar months previous notice in writing." On the face of the tenancy agreement the period of the tenancy was from 1 January 1944 to 30 June 1945, not a term of one year. The lessors served a notice to quit on 28 June 1945. The notice required the tenant to quit "at the expiration of the year of your tenancy which will expire next after the end of one half year from the service of this notice". The Court of Appeal decided that the tenancy granted was for eighteen months and thereafter on a yearly tenancy. It also held that the notice to quit was valid. Evershed LJ dealt with the sufficiency of the notice in a lengthy passage between pages 452-456. He said (at 453) that that notice "puts plainly on the tenant the obligation of ascertaining the date meant by the form of words used. Prima facie, the problem is not very difficult. As [Lord Greene MR] observed during the argument, the tenant requires for its solution two things only, a modern calendar and the tenancy agreement. Armed with those two things he asks himself first: When was this notice served on me? ... [H]e is next required to find out when one half year ends after the service of the notice. ... [T]hen only remains the question: when does the year of his tenancy current on December 29, 1945, come to an end? It is true that involves the interpretation of the tenancy agreement. But, if I am right in the view which I have expressed, he should have no great difficulty in answering that question." Evershed LJ distinguished Phipps v Rogers . He said (at 455) of that case that there was "an accumulation of difficulties provided by the joint effect of the language of the tenancy agreement and the very unusual form of the notice to quit." Later (also at 455) he pointed out that the court had come "to the conclusion that the tenant was involved in so many difficulties that there was a failure on the landlord's part either to give a certain date or to supply the tenant with a formula from which certainty could be ascertained and that, therefore, the notice was not good." By way of contrast, as regards the case before the court the judge said that any ambiguity was capable of a clear answer. Asquith LJ delivered a short judgment in which he pointed out, at 457, that in Phipps v Rogers it was observed that "each case must be decided on its own facts and circumstances" and that "the circumstances there were that the tenant was forced by the form of notice to answer questions both of law and fact interlocked with each other and calling for a much more complex calculus than anything involved in the [instant] case." The other judge, Lord Greene MR, also put Phipps v Rogers to one side as being a difficult case to understand, observing, at 458, that the difficulties presented to the tenant in that case were difficulties of construction and difficulties of fact. He rejected the suggestion that a termination notice giving rise to a difficult question of construction was necessarily invalid. The last case is Allam & Co Ltd v Europa Poster Services Ltd [1968] 1 WLR 638. I need not go into the facts. I cite the case for the observation by Buckley J who looked closely at Phipps v Rogers and Addis v Burrows and (at 652) said this: "No doubt if those cases are both good law, as I must assume that they are, the question of the validity of the notice, the interpretation of which involves some question of law, must become a question of degree. There must be cases which, because of the difficulty or complexity of the case, fall within the principle of Phipps v Rogers . There must be others which, notwithstanding that some question of law arises, because of the simplicity or comparative simplicity of the problem fall within Addis v Burrows ."


case_text: general purpose of the moratorium provisions to which I have referred is to prevent outside intervention that could jeopardise the continuation of the company's business during its administration: National Australia Bank Ltd v King (2003) 45 ACSR 413. By keeping outsiders at bay there is greater likelihood that the objects of Pt 5.3A will be achieved: Re Ansett; Intrepid Aviation Partners VII LLC v Ansett Australia Ltd [2001] FCA 1360 ; (2001) 115 FCR 175. Those objects are to maximise the chances of the company or as much as possible of its business continuing in existence and, if that is not possible, to achieve a better return for the company's creditors and members than would result from an immediate winding up of the company: see s 435A. Holding those objects in mind, I am nonetheless of the view that the leave order should not be revoked. Shortly after their appointment the administrators decided that they did not wish to retain the vessel and wrote to the owner advising that the vessel would be redelivered. Thus, the administrator cannot say indeed they do not say that the removal of the vessel from their control by its arrest will impede the administration.


case_outcome: applied

case_title: Re Java 452 Pty Ltd (Administrators Appointed) (1999) 32 ACSR 507


case_text: owner contends that the fourth paragraph constitutes the notice of termination. ASP says that when regard is had to the entirety of the letter that paragraph could not stand as a notice of termination for it is neither clear nor unequivocal. In this regard the parties accept that under English law, which is the governing law, a notice of termination must clearly and unambiguously indicate that the owner has decided to terminate the charter. In The Aegnoussiotis [1977] 1 Lloyd's Rep 268, Donaldson J said (at 275): "No particular form of words or notice is required [to terminate a charter], but the charterers must be informed that the owner is treating the non-payment of hire as having terminated the charterparty." Although notice of termination may be informal, what is required is "an unequivocal act or statement [by the owner] communicated to [the charterer] showing that [the owner intends to terminate the charter]": The Mihalios Xilas [1979] 2 Lloyd's Rep 303, 307 per Lord Diplock. Put rather more simply, the owner must make plain his decision to terminate the charter, not to lawyers but to the person who is to act on the notice.


case_title: The Mihalios Xilas [1979] 2 Lloyd's Rep 303


case_title: The Rangiora [2000] 1 Lloyd's Rep 36

case_text: second question, whether termination was effected, gives rise to several difficult issues. The first is whether a notice of termination will bring the charter to an end or whether the charter remains on foot until the vessel is repossessed. Unfortunately this is still a controversial topic. In The Turakina (1998) 154 ALR 666, Tamberlin J held that a demise charter, under which possession and control of the ship had been given to the charterer, could not be terminated by notice alone. He said termination would only occur when the owner retook possession of the ship. In The Rangiora [2000] 1 Lloyd's Rep 36, the New Zealand High Court followed that decision, stating that the principle was a rule of the common law. Nonetheless, there is a view that the rule established in The Turakina may be avoided by careful drafting. In CMC (Australia) Pty Ltd v Ship 'Socofl Stream' [1999] FCA 1419 ; (1999) 95 FCR 403 it was held that the question whether a demise charter could be terminated without repossession depended upon the terms of the charterparty. The judge, Moore J, said (at 419): "[I]t is necessary to ascertain from the terms of the charterparty whether the continuing physical possession of a vessel by the charterer (pending the taking of physical possession by the owner either by redelivery or some other means) is co-extensive with continuing possession and absolute control of the vessel of the type characteristic of a demise charter." He went on to say (at 520) that it: "... is difficult to avoid a conclusion that if a charterparty expressly provided for its termination and the power to terminate was exercised, then the charterer ceased to be a demise charterer from the time of termination at least in the absence of provisions in the charterparty that suggested some other result."


case_title: The Turakina (1998) 154 ALR 666


case_text: The decision refusing the University's application was given on 1 December 2006: The University of Western Australia v Gray (No 6) [2006] FCA 1656. I noted in the reasons that Dr Gray did not contend that the material sought was irrelevant. He argued rather that it was of "tangential" relevance. It was not in issue that he treated patients during the relevant period but no issue about that treatment was raised on the pleadings. He maintained through his solicitors that it would be oppressive to require that he sort out and produce from the large number of documents in existence those which fell within the class the subject of the proposed order. I found the case advanced by the University for access to those records to be less than convincing. The class sought by its minute overreached in seeking a range of clinical data relevant to patients treated with an invention the subject of the proceedings. It was not limited to data flowing from such treatment. The description of records by reference to records of treatment with an "invention" would require judgments about what was meant by "invention". I also expressed reluctance about having the clinical data of individuals put in play in the proceedings without good reason. 7 The University has now adverted to discovery item 1804 which it had not previously raised in Court and seeks inspection of those documents. They may fall within, although they are not necessarily congruent with, the class of documents for which the University in effect sought additional discovery in October 2006. The question therefore is whether, clinical records having been discovered, the University is entitled to inspect them. 8 Order 15 relevantly provides: '1 After a directions hearing under Order 10, any party may, with the leave of the Court and within any period fixed by the Court for this purpose, by notice for discovery, in accordance with Form 21, filed and served on any other party, require any other party to give discovery of documents. 2(1) A party required to give discovery must do so within the time specified in the notice of discovery (not being less than 14 days after service of the notice of discovery on the party), or within such time as the Court or a Judge directs. 2(2) Unless the Court or a Judge orders otherwise, a party must give discovery by serving: (a) a list of documents required to be disclosed; and (b) an affidavit verifying the list. 3 Without limiting rule 3 or 7, the documents required to be disclosed are any of the following documents of which the party giving discovery is, after a reasonable search, aware at the time discovery is given: (a) documents on which the party relies; and (b) documents that adversely affect the party's own case; and (c) documents that adversely affect another party's case; and (d) documents that support another party's case. ... 6(1) A list of documents required by or under this Order shall, unless the Court otherwise orders, be in accordance with Form 22 and conform to the requirements of this rule. ... 6(7) A list of documents shall appoint a time within 7 days after service of the list when, and a place where, the documents in the list may be inspected. ... 10(1) Where a pleading or affidavit filed by a party refers to a document, any other party may, by notice to produce served on him require him to produce the document for inspection. (2) Where a notice to produce a document is served on a party under subrule (1), he shall, within 4 days after that service, serve on the party requiring production a notice: (a) appointing a time within 7 days after service of the notice under this subrule when, and a place where, the document may be inspected; (b) claiming that the document is privileged from production and sufficiently stating the grounds of the privilege; or (c) stating that the document is not in his possession, custody or power and stating to the best of his knowledge information and belief where the document is and in whose possession, custody or power it is. 11(1) Where: (a) it appears from a list of documents filed by a party under this Order that any document is in his possession, custody or power; ... the Court may, subject to any question of privilege which may arise, order the party: (d) to produce the document for inspection by any other party at a time and place specified in the order; or (e) to file and serve on any other party a copy of the whole or any part of the document, with or without an affidavit verifying the copy made by a person who has examined the document and the copy. (2) An affidavit made pursuant to an order under paragraph (1)(e) shall, unless the Court otherwise orders, state whether there are in the document copied any and, if so, what erasures, interlineations or alterations. ... 15 The Court shall not make an order under this Order for the filing or service of any list of documents or affidavit or other document or for the production of any document unless satisfied that the order is necessary at the time when the order is made.'


case_text: The requirement of necessity in O 15 r 15 may well find its place in the understanding of what is "disproportionate" for the purposes of the Civil Procedure Rules. In Kimberley Mineral Holdings Pty Ltd (In Liq) v McEwan [1980] 1 NSWLR 210 the Court of Appeal of New South Wales considered the operation of Pt 23 r 10(1) of the Supreme Court Rules (NSW). That conferred upon the Supreme Court a discretion to order the production of documents set out in the list of documents filed by a party save for those privileged from production. In the joint judgment of Hope and Glass JJA their Honours said that (at 215): '... there are grounds of objection in relation to the production of documents for inspection which may properly be taken other than grounds based on privilege. Without suggesting that that is the only purpose for the use of the word "may" in r 10, it would, nonetheless seem to provide one basis for that use.' Moffitt P agreed with the joint judgment and emphasised the court's discretion to adapt its orders to the exigencies of the case particularly where large quantities of documents are concerned (213). 17 Davies J in Holmes v Deputy Federal Commissioner of Taxation [1988] 2 ATC 4010 referred to O 15 r 15 as a rule which (at 4018): '... emphasises the principle which was clearly stated in Kimberley Mineral Holdings Ltd (In Liq) v McEwan [1980] 1 NSWLR 210, that a court's powers with respect to discovery and inspection are discretionary and ought to be exercised to prevent abuse of its process.'


case_title: Holmes v Deputy Federal Commission of Taxation [1988] 2 ATC 4010

case_text: Davies J in Holmes v Deputy Federal Commissioner of Taxation [1988] 2 ATC 4010 referred to O 15 r 15 as a rule which (at 4018): '... emphasises the principle which was clearly stated in Kimberley Mineral Holdings Ltd (In Liq) v McEwan [1980] 1 NSWLR 210, that a court's powers with respect to discovery and inspection are discretionary and ought to be exercised to prevent abuse of its process.'


case_text: In Trade Practices Commission v CC (New South Wales) Pty Ltd (1995) 58 FCR 426 Lindgren J said that O 15 r 15 requires that the Court to be satisfied that an order of the kind referred to in that rule is, at the time when the order is made, necessary "in the interests of a fair trial". He cited Percy v General Motors-Holden's Pty Ltd [1975] 1 NSWLR 289 at 292. He also referred to Boyle v Downes [1979] 1 NSWLR 192 dealing with a similarly expressed constraint in the Supreme Court Rules 1970 (NSW) relating to interrogatories. The criterion adopted in the latter case was whether the order sought was "reasonably necessary for the disposing fairly of the cause or matter". Lindgren J said (at 437): 'The notion of the "interests of a fair trial" and of the "fair disposition of a case" encompasses, in my view, the opening up of a train of inquiry of the kind referred to above which is part of the proper function of discovery. ' His Honour was referring to discovery rather than the production of discovered documents. Nevertheless, O 15 r 15 applies the same criterion to orders for production of documents. It was so applied by Branson J in Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1045 in which her Honour said (at [9]): '... it is clear that the power of the Court to order that a discovered document be produced for inspection by another party is a discretionary power (see O 15 r 11).' And added (at [9]): 'What is "necessary" within the meaning of O 15 r 15 is that which is reasonably necessary in the interests of a fair trial and of the fair disposition of the case...' She cited Lindgren J in Trade Practices Commission v CC (New South Wales) Pty Ltd.


case_title: Gray v Associated Book Publishers (Aust) Pty Ltd [2002] FCA 1045


case_text: In particular, at [60] to [64], the Full Court said the following: No affidavit was filed by the trustee in the proceedings before Wilcox J denying the version of events given by Mrs Maxwell-Smith. The only affidavit of Ms Gallucci before his Honour was an affidavit of 7 April 2004 sworn in the annulment proceedings. She gave very brief oral evidence in chief but did not address events surrounding the cruise. While the submission of Mrs Maxwell-Smith is a mixture of both submission and assertions of fact, in the absence of a denial by Ms Gallucci and any evidence from Mr Donnelly explaining why he refused permission (there was none), the evidence of Mrs Maxwell-Smith together with the submission raised, in our opinion, a serious issue concerning the conduct of the trustee in refusing his consent to her travelling. We do not accept, with respect, that the matter can be disposed of in the way suggested by Wilcox J. His Honour does not deal with whether an inquiry might be warranted in which the basis on which the trustee refused to grant consent can be investigated. It is not true to say that Mrs Maxwell-Smith had to be excluded from the ship because of the fact that she was on a Portwatch list maintained by the Australian Federal Police. She was excluded from the ship because it would have been an offence for her to travel without the consent in writing of the trustee: s 272(1)(c) and the trustee, on Mrs Maxwell-Smith's version of events, had the opportunity to give that consent but did not in a context where the captain of the vessel gave certain assurances designed to have Mrs Maxwell-Smith return to Australia. The principles governing the giving of consent by a trustee to a bankrupt to travel were articulated by Deane J in Re Tyndall; Ex parte Official Receiver (1977) 17 ALR 182 (at 190-191): It is only in recent years that the Commonwealth bankruptcy legislation has made it an offence for a bankrupt to travel overseas without the consent of his trustee and has required a bankrupt to surrender his passport to his trustee once a sequestration order is made. Bankruptcy does not, of itself, involve any criminal offence. A citizen should be free to travel if and when his commercial activities or personal desires prompt him so to do. Restrictions upon such travel under the bankruptcy legislation must be seen as being aimed at insuring the proper administration of the bankruptcy laws and of bankrupt estates under such laws and not as a penalty imposed upon a citizen as a consequence of inability to pay debts leading to the making of a sequestration order. In some cases, the possibility that the bankrupt has committed offences under the Act and is seeking to abscond from possible prosecution will be extremely relevant. There has not, however, in this case been any suggestion that the bankrupt is endeavouring to abscond to avoid possible prosecution. In some cases the financial rewards to be derived by the bankrupt's estate from such overseas travel will clearly outweigh [sic] any inconvenience in the administration of that estate resulting from the bankrupt's departure from the jurisdiction. It can be seen that relevant considerations in deciding whether to give consent may be the possibility of a bankrupt absconding to avoid prosecution or inconvenience caused to the administration of the bankrupt's estate. In the present case it is not apparent why the trustee refused to grant permission to Mrs Maxwell-Smith to travel. There may be a number of reasons having regard to the circumstances. However, if he was aware of various matters to which Mrs Maxwell-Smith referred in her material (her affidavit and her submissions) then a real issue arises about whether it was appropriate for him to have refused permission. In our opinion, Wilcox J gave insufficient consideration to the matters raised by Mrs Maxwell-Smith in support of an inquiry at least as it related to this question of travel. To use the language of the High Court in House v King set out at [54], his Honour did not take into account a material consideration, namely that the trustee may have misconceived his powers in refusing Mrs Maxwell-Smith permission to travel. The trustee's refusal is a matter, in our opinion, which warrants further investigation and it is appropriate that an inquiry be ordered to investigate that specific matter. It is, with respect, not enough to say, as Wilcox J did, that there was no financial aspect to this complaint. It was characterised by the appellants as an abuse of power. Whether that characterisation is apt or even relevant is a matter that should not be addressed at this stage. It is a matter for the judge who conducts the inquiry. An inquiry can be conducted on a particular matter: Re Alafaci; Registrar in Bankruptcy v Hardwick (1976) 9 ALR 262. In our opinion, there should be an inquiry into whether the trustee refused Mrs Maxwell-Smith permission to travel on or about 20 May 2005 [sic: 2004] and, if so, was that refusal appropriate in all circumstances. 8 Before me, evidence was led on behalf of the trustee. At the hearing before me Mr Donnelly swore to the truth of a comprehensive statement and was cross-examined. There was no objection taken to any part of his statement. Mrs Gallucci, his manager on the file, prepared a statement. She attended court. She was not required for cross-examination and no objection was taken to any part of her statement. I was informed by Mr Skinner, without any objection by counsel for Mr and Mrs Maxwell-Smith, and apparently accepting what Mr Skinner said without the need for evidence, that Mrs Gallucci was very ill. I think it appropriate to identify the nature of her condition. In many instances, I would not do so, but I think in the circumstances of the seriousness of the matter, Mrs Gallucci will understand my desire to ensure the completeness of these reasons. Mrs Gallucci is under medical treatment by the application of steroids for a spinal problem which is contributing to a condition of deafness. She has also recently had a stroke. In circumstances where counsel for Mr and Mrs Maxwell-Smith indicated that he had no questions for Mrs Gallucci in cross-examination, I raised the question as to whether counsel would agree to Mrs Gallucci's statement being tendered without formally being sworn. Counsel agreed and in those circumstances the trial proceeded on the basis of Mrs Gallucci's statement being tendered without being sworn to or affirmed as if that had occurred. 9 Given Mrs Gallucci's ill health, I permitted this somewhat unusual course because I did not think it appropriate to take any risk in relation to her health that was unnecessary, and no doubt, that is what prompted counsel for Mr and Mrs Maxwell-Smith to take the entirely proper course that he did in this respect. I rejected another statement from an employee of the trustee dealing with two aspects of the administration of the estate because I thought that the bounds of relevance were being stretched to a point where it was unnecessary. 44 It is clear that whilst the captain of the ship and Federal Agent Nagy had had discussions about the position, the captain was not prepared to give any guarantee about either the passport or the disembarkation of Mrs Maxwell-Smith. The Maxwell-Smiths, through Mr Brennan, say that the discretion miscarried because Mr Donnelly did not apply the considerations discussed by Deane J in Re Tyndall Ex parte Official Receiver (1977) 17 ALR 182, in particular at 190 and 191, where his Honour said the following: ...It is only in recent years that the Commonwealth bankruptcy legislation has made it an offence for a bankrupt to travel overseas without the consent of his trustee and has required a bankrupt to surrender his passport to his trustee once a sequestration order is made. Bankruptcy does not, of itself, involve any criminal offence. A citizen should be free to travel if and when his commercial activities or personal desires prompt him so to do. Restrictions upon such travel under the bankruptcy legislation must be seen as being aimed at insuring the proper administration of the bankruptcy laws and of bankrupt estates under such laws and not as a penalty imposed upon a citizen as a consequence of inability to pay debts leading to the making of a sequestration order. In some cases, the possibility that the bankrupt has committed offences under the Act and is seeking to abscond from possible prosecution will be extremely relevant. There has not, however, in this case been any suggestion that the bankrupt is endeavouring to abscond to avoid possible prosecution. In some cases the financial reward to be derived by the bankrupt's estate from such overseas travel will clearly outweigh any inconvenience in in the administration of that estate resulting form the bankrupt's departure from the jurisdiction. This is not, however, such a case for the reason that , as I haved said, I am unconvinced that the bankrupt estate of the applicant could be expected to benefit over and beyond the $40 per month which the bankrupt has currently undertaken to pay to the trustee. In some cases, the requirements of the prompt and efficient administration of the estate of the bankrupt and the administration of the Act will justify the refusal to grant leave to travel overseas. This, in my view, such a case. Taking into account all the circumstances of the present matter I have reached the conclusion that, in the present stage of administration of the applicant's bankrupt estate, I should not grant the leave which he seeks. The provisions of s 77(a) and s 272 of the Act recognize that a bankrupt's legitimate desires to travel overseas must, in an appropriate case, be subordinated to what is necessary for the proper and efficient administration of his estate in bankruptcy and the administration of the bankruptcy law. All in all, the circumstances of the present case are such as to make that subordination necessary. 45 But, as the facts reveal here, Mr Donnelly was never really called upon to make a decision on an application by the bankrupt to travel. To say that that is what occurred on 20 May 2004 misunderstands and misconceives the position Mr Donnelly found himself in. He was called upon, without notice, in circumstances where he is entitled to say that the matter came as a surprise to him, to consider a conversation with a Federal Police Officer (who had been sent to the wharf to prevent Mrs Maxwell-Smith travelling) about allowing Mrs Maxwell-Smith to travel in circumstances where what Mr Donnelly knew was set out in [44] of his statement and in circumstances where it was not, nor could be understood as being, a request by the bankrupt herself. 46 Given the irregularity of the behaviour, the failure of the Maxwell-Smiths to give any notice whatsoever that Mrs Maxwell-Smith would be travelling, despite the apparent clear opportunity of the previous days, given the failure to attend the s 81 examination, whatever might be the explanation for that, given the taking out of the warrants whatever might be the status of those and the circumstances of lack of notice and surprise in which Mr Donnelly found himself, his decision was not one, in my view, that is open to the kind of criticism that is made of it. In particular, I think what is said in [47] of Mr Donnelly's statement is legitimate. 47 The kinds of consideration discussed by Deane J in Re Tyndall presuppose a request, otherwise regular, to travel. The circumstances here were highly irregular. As I have said, there was no application by Mrs Maxwell-Smith. She had given no notice. She could be seen as having possibly committed an offence in failing to deliver her passport and to have acted in an attempt to board the ship. In all the circumstances identified by Mr Donnelly in [42] to [47] of his statement, I think it is a misunderstanding of the position to say that he breached his obligation as a trustee by failing to only turn his mind to the question of the due administration of the estate. 48 Even assuming that one can somehow construct some agency between Federal Agent Nagy and Mrs Maxwell-Smith, such that Mrs Maxwell-Smith can be seen to have been making an application through Federal Agent Nagy, I do not think that the conduct of Mr Donnelly is made any more liable to criticism. At the risk of repetition, it is quite unrealistic in my view, in the circumstances in which Mrs Gallucci and Mr Donnelly found themselves, to require them, on pain of criticism for breach of duty, to turn their minds only to the kinds of consideration identified by Deane J. Mrs Maxwell-Smith had failed to give up her passport. She had apparently, to their eyes, not given them any notice of the intended travel, had given no warning as to why she wanted to leave her country and even in the circumstances where there was an annulment application on foot and the estate on the current understanding of the facts was probably solvent, these matters did not mandate Mr Donnelly taking a course other than that which he took on pain of criticism that he was somehow abusing his position. 49 In my view, in all the circumstances, there was no miscarriage of discretion of the kind posited in address, there was no abuse of power, there was no act of mala fides, Mr Donnelly's actions in all the circumstances that he was placed in by others is not the subject of legitimate criticism. Of course he could have said, yes, it is all right for you to go, but he did not. If there is any responsibility for the most unfortunate events of 20 May 2004, they rest with others and not with Mr Donnelly or Mrs Gallucci. They should have been warned and told that overseas travel was desired. I have already expressed my view that I am prepared to accept Mrs Maxwell-Smith's evidence as honest as to why she thought she did not have to, but from Mr Donnelly's position, to attempt to criticise him in the serious way that has been done, in circumstances where he was given no notice whatsoever of the travel and in the other circumstances that I have described is, I think, somewhat unfair. 50 If Mr Donnelly had been given adequate notice for the decision, if the nature of the family trip had been explained to him, I have little doubt that with appropriate conditions of the kind imposed by Moore J in July, he would have consented to the travel.


case_text: Counsel for Racing and Wagering submitted that, because the asserted breach of the licence agreement is at its heart referable to copying, that the language in the letters to which I have referred and in particular the passage from the letter of 12 September 2006, which I have set out above, can arguably, reasonably be read as embracing a threat for the purposes of s 202 of the Act . Racing and Wagering referred to the judgment of Mansfield J in Australian Consulting and Training Pty Ltd v Tiltform Pty Ltd [2001] FCA 1072. His Honour was there considering amongst other things and relevantly for the purposes of the motion before me, the question of whether a pleading was capable of making out threats of infringement within the meaning of s 128(1) of the Patents Act 1990 (Cth) (' Patents Act ' ).


case_text: In relation to the claim of the applicant in para 4 of the Amended Application although it is open to the Court to order a change of corporate name in appropriate circumstances (as, for example, was ordered by the Court in Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517) I do not consider these appropriate circumstances. As I have already explained, in my view the undertaking of the first respondent and the order I propose to make adequately address issues raised by the applicant.


case_text: Further, it is clear that in considering whether the competing marks are substantially identical within s 120(1) of the Act a comparison must be undertaken of the registered trade mark and the whole of the respondent's mark, and not merely part of it: Angove's Pty Ltd v Johnson and Eclar Investments Pty Ltd (1981) 55 FLR 1 at 8. 32 As I noted earlier in this judgment, the applicant's registered trade mark is as follows: 33 The respondents use "bing" in a number of ways, including the following: and and and Bing and


case_text: The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1 at 11.


case_text: In addition to these principles, it is also clear that: • In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . • Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . • Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. • It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. • Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] .


case_text: While the respective trade marks of both parties feature the word "bing" there is absolutely no evidence that in doing so the first respondent represented any relationship with the applicant, that the first respondent's service was in any way related to the products and services provided by the applicant, or that the first respondent's service had, for example, uses or benefits which it did not have. While not conclusive, I also consider that the substantial differences between the products and service offered by the applicant and the service offered by the first respondent militate against the application of s 53 (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392). 83 This finding is further supported by the absence of evidence before me that either the applicant or its products have a reputation from which the first respondent would be able to benefit (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392 ; Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626). Other than evidence of a small number of inquiries temporarily confusing the applicant with the first respondent, there is no evidence that the applicant or its products and service are sufficiently well-known that a substantial number of members of the public, or even a substantial number of members of those sections of the public which are likely to engage either with the applicant or respondent, would be misled in terms of ss 53(c) or 53 (d) TPA.


case_text: The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)...(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.


case_text: In relation to the order sought by the applicant in para 5 of the Amended Application, namely that the first respondent transfer the registration of the domain name www.bing.com , I make the following observations: • The first respondent, apparently in good faith, acquired the domain name from the United States for the not inconsiderable sum of $US25,000. An order in the nature of that sought by the applicant, which would deprive the first respondent of that asset, is not lightly entertained by the Court. • While it may be commonplace for companies in Australia to use a ".com" or ".com.au" domain name, the first respondent's domain name is registered in the United States. An order that the first respondent transfer an international domain name to remedy infringement of an Australian trade mark which trade mark is territorial in its operation would in my view require extraordinary circumstances. • The applicant has relied on a number of cases in support of its application for an order that the first respondent be ordered to transfer the domain name, namely the English Court of Appeal case British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289 and the High Court of New Zealand case Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661. Further, Hill J ordered transfer of a domain name in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408. However each of those cases involved cybersquatting, defined by The Australian Concise Oxford Dictionary as "the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit", and which practice is, as Hill J noted in CSR Ltd [2003] FCA 279 ; 128 FCR 408 , conduct somewhat suggestive of criminality and fraud. The facts in each of those cases were very different from those in the case before me.


case_title: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359


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


case_text: I have found that both the first respondent and Mr Cranitch infringed the registered trade mark of the applicant under the Act , but that the applicant has not substantiated its claims in relation to breach of the TPA or passing off. Accordingly, I now turn to the applicant's claims for injunctive and associated relief and damages. In this respect I note that, in closing submissions, the applicant elected to seek an award of damages rather than an account of profits pursuant to s 126(b) of the Act and in accordance with the principles in Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50 ; (1968) 122 CLR 25 at 32. 105 On 11 March 2008 the first respondent gave an undertaking in Court through its counsel, Mr Crowe SC. Any consideration of relief which would have been available to the applicant must be carried out in light of this undertaking. 106 The undertaking was in the following terms: MR CROWE: Your Honour, while Mr Cranitch is coming to the courtroom, I have instructions from the first respondent to offer an undertaking to the court to give an undertaking to the court that the first respondent in relation to all references to the software, the subject of these proceedings, will not use the word "BING!" when directly referring to that software in any documentation, on websites, or otherwise. To make that plain it is not offering to change its name, but it is offering an undertaking that it will not refer to the software itself as BING! or any other combination of words using the word "BING!". (TS 86 ll 18-25) 117 In relation to the claim of the applicant in para 3 of the Amended Application, I consider that the undertaking given by the first respondent and the actions of the respondents to date and as anticipated by Mr Cranitch's affidavit of 12 March 2008 answer that claim adequately. As I propose to make an order in terms of that undertaking, in my view an order for delivery up and destruction as sought by the applicant is not warranted (cf Colbeam [1968] HCA 50 ; 122 CLR 25 at 39 per Windeyer J).


case_text: It is not in dispute that the undertaking given by the first respondent in Court through its Counsel is enforceable by order of the Court: O 35 r 11 Federal Court Rules . Indeed courts have, on occasion, declined to grant injunctions in circumstances where an undertaking given by one of the parties is adequate to protect the rights of the other (for example Simos J in Community First Credit Union Ltd v Khan (unreported, Supreme Court of New South Wales, 30 August 1995)). However it is also recognised that, in a proper case, a party may insist upon an injunction notwithstanding an undertaking which has been given (cf Phillimore and Pickford LJJ in Winkle & Co Ltd v Gent & Son (1914) 31 RPC 473 at 479, 480).


case_text: These principles are well settled and have been applied on numerous occasions by the Full Court of the Federal Court (for example, Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 ; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196 ; (2004) 209 ALR 1).


case_title: CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279 ; (2003) 128 FCR 408


case_text: In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered. 39 The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)...(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.


case_text: In relation to assessment of damages in such cases, in Enzed Holdings Ltd v Wynthea Pty Ltd [1984] FCA 373 ; (1984) 57 ALR 167 at 183 the Full Court observed as follows: The principle is clear. If the court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasize, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant. (emphasis added) 125 In claiming that damages "at large" should be awarded the applicant relied in part on the decision of Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74. However: • I consider that Review Australia [2008] FCA 74 is distinguishable from this case. In Review Australia Jessup J accepted that the market presence of the respondents' product did bring about some minor dilution of the applicant's reputation for originality (at [30]). In my view there is some evidence of minor and short-lived confusion of a small number of consumers, but no evidence that there has been any dilution of the applicant's reputation in any respect by the market presence of the first respondent. There is, for example, no evidence (unlike in Review Australia ) that any value placed by the applicant on its goods and services has been diminished by the activities of the respondents. I make this observation particularly in light of the completely different activities of the parties and the markets in which they operate. • In the absence of demonstration by the applicant of any damage, the principles articulated by the Full Court in Enzed Holdings [1984] FCA 373 ; 57 ALR 167 which I have outlined earlier in this judgment militate against an award of damages. • Although the applicant relies on evidence of Associate Professor Alpert to the effect that, on the balance of probabilities, the use by the respondents of the mark "bing" has caused a diminution in the value of the applicant's trade mark, I accord the witness' evidence no weight in relation to this issue because: o I am not satisfied that Associate Professor Alpert is an expert on valuation of trademarks or intellectual property law. Associate Professor Alpert's expert report dated 21 December 2007 concerned an overview of key issues from a marketing/branding/consumer behaviour perspective, which area appears to be his area of expertise (Introduction para (c) to report); o considering the witness' expert report and the contents thereof, I draw the inference that, prior to the hearing, he had not directed his mind to the question of monetary valuation of the trade mark in question. Indeed in referring to "brand values" in his report, Associate Professor Alpert appeared to equate the term with brand aspects rather than any financial concept (note, for example, TS 137 ll 34-44, TS 138 ll 1-4); o Associate Professor Alpert's evidence in relation to possible diminution in the value of the applicant's trade mark was theoretical, highly qualified, and not particularly helpful. I refer in particular to: ▪ the fact that, in response to a question from Mr Franklin SC as to whether the witness had any experience in assessing the value of the trade mark, the witness replied: Not quantitatively, but in what we teach, marketing branding is essential, and we stress the value of the brand. (TS 132 ll 4-6) ▪ the witness merely agreed that he was able to give the Court "opinions as to the general proposition that a brand is a valuable asset" (TS 132 ll 8-10) and that "these situations can be complex" (TS 132 ll 13-15); ▪ in response to a question from Mr Franklin SC as to whether Associate Professor Alpert was able to give the Court expert advice on possible causes of diminution and the value of brand, the witness replied: "I'd like to think so, yes" (TS 132 ll 18); ▪ the witness merely agreed that, assuming that one has a valuable brand that is protected by a registered trademark or a de facto monopoly, one of the reasons that that value might diminish is if someone uses the same or a similar brand in the same market (TS 132 ll 30-33). In noting this evidence I intend no criticism of the witness who was endeavouring to be of assistance. However, in my view, the evidence raises not only serious questions as to the witness' expertise in relation to the issue of value of the relevant brand, but also serious doubts as to its probity.


case_text: In order to substantiate a claim in passing off the applicant must show: 1) A misrepresentation. 2) Made by a trader in the course of trade. 3) To prospective customers of his or ultimate consumers of goods or services supplied by him. 4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and 5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742; cf Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414 at 443-444 and Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)


case_text: In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered.


case_text: Section 75B reflects the intention of Parliament to bring to account natural persons whose conduct brings about the contravention of the law by a corporation: Fencott v Miller [1983] HCA 12 ; (1983) 152 CLR 570 at 583; Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) FCA 1228 at [75] . However because s 75B imports the requirements of the criminal law ( Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661) , in order to establish accessorial liability pursuant to s 75B the applicant must establish the following: • in circumstances where the applicant contends that a person has aided and abetted the applicant must demonstrate that the relevant person was aware or ought to have been aware of the facts which gave rise to the contravention of the TPA, and intentionally participated in the contravention ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661) ; and • in circumstances where the applicant contends that a person was knowingly concerned in a contravention the applicant must demonstrate that the relevant person had actual knowledge of the essential elements of the contravention and intentional participation in it ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661).


case_title: Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100


case_text: Relevant principles in the context of claimed breach of s 52 , as explained by the Full Court in SAP Australia [1999] FCA 1821 ; 169 ALR 1 at 14, include the following: • Initial confusion is sufficient and it is not necessary for confusion to induce or be likely to induce a transaction. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded. • However, each case depends on its own facts and conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error (cf Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [56] ; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [41] ). • Characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a notional cause and effect relationship between the conduct and putative consumer's state of mind. 71 In addition to these principles, it is also clear that: • In order to determine whether there has been any contravention of s 52 it is necessary to determine whether or not the conduct complained of amounted to a representation which has or would be likely to lead to a misconception arising in the minds of that section of the public to whom the conduct has been directed: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 at [34] . • Whether or not there is the requirement of some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the TPA. The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of knowledge of consumers in Australia of the claimant's product: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 at 419; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [39] . • Where the relevant conduct involves representations to the public at large or to a section thereof, such as prospective purchasers of a product the respondent markets or proposes to market, the issue is one of identifying the "ordinary" or "reasonable" members of that class of prospective purchasers: Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; [2000] 202 CLR 45 at 84-85. • It is necessary to isolate by some criterion a representative member of the class of prospective purchasers: Campomar [2000] HCA 12 ; 202 CLR 45 at 85. This excludes erroneous or fanciful assumptions: Campomar [2000] HCA 12 ; 202 CLR 45 at 86. • Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [53] . 76 To that extent I consider that any brief association between the two trade marks in the mind of a member of the public would generally be of no significance, and that a significant number of members of the general public, in fact or by inference, have not been misled or would likely not be misled by the first respondent's use of the trade mark "bing" for the purposes of s 52 TPA (cf Hansen [2008] FCAFC 181 at [46] - [48] ). 77 Accordingly, I consider that the applicant's claim against the first respondent for breach of s 52 TPA fails. 78 In para 15 of the Amended Statement of Claim, the applicant specifically pleaded that, by reason of the first respondent's conduct, the first respondent had contravened and/or threatened and intended to continue to contravene the provisions of s 53 TPA because the first respondent: • had represented and/or threatened to represent that its business is operated by or under the authority of the applicant whereas its business was not operated by or under the authority of the applicant; • had represented and/or threatened to represent that its business is operated under or with the sponsorship and/or approval of the applicant whereas its business is not operated with the sponsorship and/or approval of the applicant; • has represented and/or threatens to represent that the products offered for sale, sold and supplied by the first respondent are offered for sale, sold and supplied by or under the authority of the applicant, whereas such products are not offered for sale, sold, or supplied by or under the authority of the applicant; and • has represented and/or threatened to represent that the products offered for sale, sold or supplied by the first respondent are offered for sale, sold or supplied under or with the sponsorship and/or approval of the applicant whereas such products were not offered for sale, sold or supplied with the sponsorship or approval of the applicant.