case_text: similar approach is justified by the remarks of Stone J in one of the "asterisk cases", ACCC v Signature Security Group Pty Ltd [2003] FCA 3 ; (2003) ATPR 41-908. Her Honour observed at [27] that the degree of prominence which must be given to a qualifying statement may well vary with the potential of the primary statement to be misleading and deceptive. [Emphasis added] I am not here deciding a misleading or deceptive conduct claim, only whether I am satisfied that it is in the interests of creditors that Storm Financial continue under administration rather than be wound up. Mr and Mrs Cassimatis have not persuaded me that their Information Memorandum has had and could not have had any material effect on creditors or that it has not and will not yield proxies in favour of their solicitor. That is material in deciding whether the administration should continue. It does not inexorably follow from the features of the Information Memorandum which I have identified that it is not in the interests of creditors for the company to continue in administration rather than be wound up. Subsection 447B(2) would, in my opinion, permit the Court to direct the removal of the Information Memorandum and reference to it from the web site of Mrs Cassimatis and the publication on that web site that the Court had ordered the removal with a link to the Court's judgement. It would also permit the making of an order revoking or directing the administrators not to accept any proxy directed to Mr Russell on or after 16 March 2009 and before the publication of remedial advertising (or perhaps out of an abundance of caution, given the date of the Information Memorandum, after 9 March 2009). As with s 447A(1) of the Act, it would require cogent reasons to read down the generality of the power conferred by s 447B(2) so as to preclude the making of such orders and none are apparent: cf Australasian Memory Pty Limited v Brien (2000) 200 CLR 270 at 279-280, [17] to [10] . It was submitted on behalf of Mr and Mrs Cassimatis that the making of any such orders would disenfranchise creditors. It may, and a concern is that, having sent off a proxy in favour of Mr Russell, the corrective advertising and the chance of a fresh proxy or attendance in person at the creditors' meeting may not come to the attention of a creditor. With respect it would be odd to allow an administration to continue so as to allow a trained proxy to be utilised. Were I persuaded that the DOCA did offer the prospect of a better return to creditors than a liquidation even though false or misleading statements had been made concerning it, this alternative would carry greater weight. However, the more I reflect upon this DOCA, the more it seems to me that it is a chimera; creative, but hardly constructive insolvency. For its unquantified and unquantifiable benefits, the creditors are being asked to decide to wait 60 days or perhaps 120 days to see whether the DOCA sum will emerge as available for ECA to pay from litigation closely contested for reasons good enough to constitute a serious question to be tried. I have a further concern in relation to it being in the interests of creditors for the administration to continue. The DOCA requires Mr and Mrs Cassimatis to co-operate with the administrators in respect of all matters done under it (cl 28). The DOCA consigns to Mr and Mrs Cassimatis a role in relation to litigation other than as witnesses. It is not, it must be said, an unfettered role. It is intended that the administrators will also play a part. Further, the DOCA contains an elaborate dispute resolution process that may see Storm being wound up under a creditors' voluntary winding up (see cl 30 to cl 36). In my opinion, the present proceedings, including the separate application made by Mr and Mrs Cassimatis, are eloquent as to the prospects of their co-operation and dispute in relation to litigation decisions in the DOCA. The administrators have made a considered value judgement, which includes taking legal advice about the prospects of success in the Supreme Court in respect of the DOCA sum, that it is in the interests of creditors that Storm be wound up. Mr and Mrs Cassimatis concede there is a serious issue to be tried in those Supreme Court proceedings but offer no proof of a better return to creditors that creditors might factor in to an assessment as to whether it is nonetheless in their interests to approve the DOCA. It is inherently likely that many of the claims contemplated for prosecution under the DOCA will require either or each of Mr and Mrs Cassimatis to give evidence. It is likewise inherently likely that difficult issues will arise concerning prospects, which will include an assessment of the credibility of their evidence and the strength of competing evidence offered, for example, by the Commonwealth Bank. Of course, self critical decisions fall to be made by any client who prosecutes a cause of action for his benefit. Under the DOCA Mr and Mrs Cassimatis would be called upon to make such decisions not just for their own benefit or that of companies they control but also for the benefit of a potentially very wide class of creditors. When regard is also had to the tone of such of their web site as has been reproduced in evidence, and with all due respect, I doubt whether they would bring to decision-making under the DOCA the same clinical detachment that creditors are entitled to expect from a court appointed liquidator alone. For example, on the web page (Exhibit MRR8 to Mr Ryan's affidavit, p 214) that links to the Information Memorandum one see this statement apparently authored by them, "We have owned and operated Storm (in its various forms) over the years and feel strongly that we will be more passionate about the pursuit of justice in this matter than anyone else."; on another web page (Exhibit MRR8 to Mr Ryan's affidavit, p 218), an apparent "mission statement" by Mr Cassimatis, "My crusade is to find justice for all affected Storm Financial clients. I will not rest in this." Passion is one thing, sober, perhaps self critical, assessment of the prospects of litigation is quite another. If there is to be litigation which might yield benefits for creditors I am not persuaded for this further reason that it is in the interests of creditors for the administration to continue so as to permit this DOCA to be considered either at a creditors' meeting on 30 March 2009 or even perhaps shortly after the fate of the Supreme Court proceedings on 8 April 2009 is known.


case_outcome: followed

case_text: Australian Securities Commission v AS Nominees Ltd [1995] FCA 1663 ; (1995) 62 FCR 504 at 531-532 Finn J highlighted that, at the behest of a public official or agency, the public interest might warrant the winding up of a company on the just and equitable ground; a proposition later accepted by Lander J in Australian Securities and Investments Commission v International Unity Insurance Pty Ltd [2004] FCA 1059 ; (2004) 22 ACLC 1416 at [135] . I, too, accept this proposition. Its correctness seems to me to follow inexorably from the standing granted to ASIC in the circumstances described in s 462(2)(e) and s 464(1). There will be occasions and this is one where, in the course of an investigation, matters come to the attention of ASIC that motivate it to seek the winding up of a company on the just and equitable ground because it is in the public interest and perhaps also on other grounds, notably, insolvency. As noted, the latter requires a grant of leave to ASIC but the conditions for that are met. I grant leave.


case_title: Australian Securities Commission v AS Nominees Ltd [1995] FCA 1663 ; (1995) 62 FCR 504


case_outcome: applied

case_title: Australian Securities Commissioner v Marlborough Gold Mines Ltd [1993] HCA 15 ; (1993) 177 CLR 485

case_text: Creevey v Deputy Commissioner of Taxation (1996) 19 ACSR 456 at 457 McPherson JA, with whom Pincus and Davies JJA agreed, observed of s 440A(2): It is evident from the terms of that subsection that before it applies the court must be satisfied not only that there is an administration but also as the subsection says, that it is in the interests of the company's creditors for the company to continue under administration rather than be wound up. ... The question of whether an administration should continue, rather than that there be a winding up, is obviously closely related to the further question of whether the creditors could hope to get more by way of payment of their debts from one form of process or administration than from the other. In order to satisfy the court of the matter referred to in s 440A(2) of the Corporations Law, one would expect that there would have to be some persuasive evidence to enable it to be seen that there were assets which, if realised under one form of administration rather than the other, would produce a larger dividend, or at least an accelerated dividend for the creditors. These are observations made by an intermediate appellate court in respect of Commonwealth legislation adopted, under the co-operative scheme then prevailing, by the various States. The provision concerned has been taken up in the Act in respect of analogue facts and though not, strictly, bound by a decision given in the Court of Appeal Division of the Supreme Court of Queensland, it is incumbent on me not to depart from the interpretation of s 440A(2) of the Act evident in these observations unless convinced that that interpretation is clearly wrong: Australian Securities Commission v Marlborough Gold Mines Ltd [1993] HCA 15 ; (1993) 177 CLR 485. To be convinced that a judge of the eminence of McPherson JA was clearly wrong in a matter touching upon corporate insolvency is a considerable step, especially when his Honour's observations commanded the concurrence of Pincus and Davies JJA. As it happens, not only do I respectfully agree with the observations but also I did not understand any party to seek to persuade me that those observations were clearly wrong, as opposed to Mr and Mrs Cassimatis urging that they were distinguishable on the facts of this case. The quoted observations made by McPherson JA in Creevey's Case were not though made in a vacuum, as the following statement made by Philip McMurdo J in Re Octaviar Ltd (formerly MFS Limited) [2008] QSC 216 at [55] serves to remind: There are two matters to be noted about that passage from Creevey . The first is that read in context, it is referring to the absence of evidence of any assets whatsoever. Secondly, it is not possible to read this passage as a statement of some principle that in every case, for a court to be satisfied in terms of s 440A(2), there must be some detailed comparison of the dividends from one regime or the other. It will often be the case where not enough is known about what is likely to come from one or both regimes for that comparison to be made at this stage. As McDougall J said in SGB Raffia v Gammacon (No 2) [2007] NSWSC 1510 , McPherson JA in Creevey "was not purporting to reframe the statutory test but, rather, to state its application firstly in the case before the court and secondly by reference to more general considerations." McDougall J there referred to what was said by Campbell J in Deputy Commissioner of Taxation v Bradley Keeling Management Pty Ltd [2003] NSWSC 47 ; (2003) 44 ACSR 377 at 380 in a passage which I respectfully adopt: "[18] Ultimately what the court needs to do is to be persuaded. The amount of proof which can result in persuasion, differs with the circumstances in which litigation comes before the court. It is common enough, in applications under s 440A, for an administrator to need to seek an adjournment very soon after his or her appointment, at a time when he or she knows very little about the affairs of the company. In that sort of situation, comparatively little material might be needed to justify a short adjournment. As time goes on, however, and the occasion that there has been for the collecting of evidence increases, so the amount of material which might need to be put before the court before it is persuaded, will increase." In Re Octaviar Ltd [2008] QSC 216 the occasion for the deciding whether the Court was satisfied that it was in the interests of creditors that the administration proceed was a decision by the directors of the company concerned to appoint administrators (subject to the discharge or expiry of injunctions then in place) after the hearing of an application for the winding up of the company had commenced. Necessarily, the Court did not at that time have the benefit of the considered views of those administrators as to the relative worth of what was offered under the DOCA compared with a liquidation so far as the interests of creditors were concerned. Further, the present is not an adjournment application by Storm Financial's administrators but rather by two of its directors and members, who are also creditors. They wish to promote a known DOCA to a creditors' meeting following an administrators' report which recommends the contrary.


case_title: Creevey v Deputy Commissioner of Taxation (1996) 19 ACSR 456


case_outcome: considered

case_text: just and equitable ground is of ancient provenance in corporations law: see Mr B H McPherson (as his Honour then was), Winding Up on the "Just and Equitable Ground" (1964) 27 MLR 282. Notwithstanding a restrictive approach to this ground that prevailed for the latter half of the 19 th century and which persisted in the courts with diminishing support into the first two decades of the 20 th century, by 1924, in Loch v John Blackwood Ltd [1924] AC 783 at 788-789, the Judicial Committee had rejected the notion that the just and equitable ground was to be interpreted ejusdem generis with preceding statutory grounds upon which a winding up order might be made and in some way limited by those grounds. By 1973 in Ebrahimi v Westbourne Galleries Ltd [1973] AC 360 at 374-375 Lord Wilberforce, with the agreement of Viscount Dilhorne, Lord Pearson and Lord Salmon, had emphatically rejected as wrong a tendency His Lordship discerned to create categories or headings under which case must be brought for the just and equitable ground of winding up to apply. As His Lordship stated, "illustrations may be used, but general words should remain general and not be reduced to the sum of particular instances".


case_title: Loch v John Blackwood Ltd [1924] AC 783


case_text: this as it may, it is not correct to describe the DOCA as a "simple solution". Mr and Mrs Cassimatis may believe that but, objectively, that seriously misdescribes not only the contingencies that attend the payment of the DOCA sum either within the maximum time allowed under the DOCA or at all but also the difficulties that will attend recovering monies for the benefit of creditors. There is, in truth, no "simple solution" for the creditors be it by way of acceptance of the DOCA or an immediate winding up. Yet this is the entitlement made in bold type so as to emphasise it to the reader and "simple" is immediately thereunder again emphasised in bold type: cf National Exchange Pty Ltd v Australian Securities and Investments Commission [2004] FCAFC 90 ; (2004) 49 ACSR 369 at 381, [53] per Jacobson and Bennett JJ. Neither, objectively, is it correct to describe the DOCA proposal as "generous". The worth of what is offered under the DOCA is not quantifiable, either relatively or absolutely, for the reasons given by the administrators in their report and by Mr Worrell in his affidavit. That necessarily includes the worth, if any, of the "bonus" for which the DOCA nominally provides. If there is a reasonable basis for Mr and Mrs Cassimatis' "sincere belief" as to the generosity of the DOCA it is not evident to me from the evidence tendered by them. Is it, objectively, on balance, "the best solution for all stakeholders"? Save for two "stakeholders", who are at least arguably omitted from the list of the same in the Information Memorandum, that is a matter which it is not possible objectively to determine. Those two "stakeholders" are Mr and Mrs Cassimatis, each in the capacity of a director of Storm Financial. Acceptance of the DOCA would grant to Mr and Mrs Cassimatis (and to ECA) releases and discharges "from all and any claims, actions, suits, or demands arising out of the dividend payment on 15 December 2008" (cl 29), i.e. the very sum put forward as the DOCA sum. Further, those creditors who join the "Storm Clients Recovery Group", subject to clause 16A, "release and discharge any employee or officer of Storm, unless such person is insured under [any policy of professional indemnity or other insurance]" and agree "collectively to limit such claims to the amount available to such persons under such policies of insurance, or any Insurance Settlement" (cl 16(c)). Directors are not offered such releases by the Act in the event of a liquidation. As to the foregoing identified features of the Information Memorandum, and as was submitted on behalf of ASIC, the following passage from the joint judgement of Jacobson and Bennett JJ in National Exchange [2004] FCAFC 90 ; (2004) 49 ACSR 369 at 381-382, [55] to [58] is relevant by analogy:


case_title: Re Octaviar Ltd (formerly MFS Limited) [2008] QSC 216


case_text: and Mrs Cassimatis did point to an interlocutory judgement given by Greenwood J in Storm Financial Limited ABN 11 064 804 691 v Commonwealth Bank of Australia ABN 48 123 123 124 [2008] FCA 1991 in which, at a time before the appointment of the administrators, Storm Financial had sought injunctive relief against the bank in respect of alleged misstatements made by the bank concerning Storm Financial's role in the management of client margin loan facilities. His Honour had stated: For present purposes, I am satisfied by the weight of the applicant's material that had the financial adviser assumed a management responsibility for the margin loan transaction in each case and more particularly a "sole" responsibility for the management of the margin loan account through the period, the documents as between the Bank and Storm and in particular the letter of 18 May 2007 would have said so in clear and transparent terms. Secondly, the documents as between the financial adviser and the client would have reflected that position. Mr Cassimatis says it was not so as a matter of practice. Mr Johnston says it was not so in his experience although his experience concluded in 2003. Mr McCullough also gives evidence consistent with Mr Cassimatis. I am satisfied that solely for interlocutory purposes, Storm has demonstrated a sufficient likelihood of success in terms of Australian Broadcasting Corporation v O'Neill demonstrating that the statement as to sole management of the margin loan accounts and instructions allegedly given in the meeting on 4 December 2008 are capable of being misleading or deceptive or likely to mislead or deceive. Of course, the ultimate position must be tested at trial where the evidence will be closely examined and findings reached on all aspects of the controversy. Later in that judgement (at [49]), his Honour observed in relation to the question of what, if any, were the respective managerial responsibilities for the management of client margin loan accounts as between Storm Financial and the bank that, "The boundaries of that relationship are the core matter in issue in these proceedings" . Just what might be the quantum of damages in that proceeding, if such relief were alternatively sought, was a question left unanswered by Mr and Mrs Cassimatis.


case_text: and Mrs Cassimatis drew attention to observations concerning s 440A(2) made by Hamilton J in TCS Management Pty Ltd v CTTI Solutions Pty Ltd [2001] NSWSC 830. After noting that Creevey's Case was the only intermediate appellate authority, Hamilton J conducted a critical analysis of later authorities in various original jurisdictions concerning the subsection. His Honour (at [18]) reached this conclusion: What I derive from a consideration of the foregoing authorities ... is that it is dangerous, as in so many cases, to place any gloss upon the statute. The sole consideration posited as the criterion for the Court's decision in s 440A(2) is the interests of the company's creditors. It is clear that the onus is on the person seeking the adjournment to establish to the satisfaction of the Court that the adjournment is in the interests of those creditors. In general terms, that will be difficult to do unless there is a good case that there will be a greater or more accelerated return from the course contended for. But considerations beyond mere quantum may be relevant to take into account in determining what is in the interests of the creditors and whether it is established that an adjournment may be said to be in the creditors' interests. Where there are advantages in either course, in general terms it may well be the proper course to give such adjournment as will allow the creditors themselves to vote upon the proposal and determine which course they prefer. I respectfully agree with this conclusion as to what is to be derived from the authorities to which he refers. Further, there is nothing in it which is inconsistent with the observations made of s 440A(2) in Creevey's Case . The long and the short of it is that s 440A(2) means what it says; it is for the person seeking the adjournment to satisfy the Court that in the circumstances of the particular case, it is in the interests of the company's creditors for it to continue under administration rather than be wound up. In some cases that may be able to be done by a comparative exercise as between prospective returns to creditors; in others such an exercise may be premature but it may nonetheless be in the interests of creditors for there to be a short adjournment so as to allow the position to be investigated. These are but non-exhaustive examples. TCS Management Pty Ltd v CTTI Solutions Pty Ltd [2001] NSWSC 830 has present utility for another reason. I was informed that, even were the DOCA approved at the creditors' meeting, it was "highly likely" that ASIC would seek its termination under s 445D. ASIC is an eligible applicant for such an order: s 445D(2)(ba) of the Act. Of this contingency and its relevance Hamilton J observed (at [19]): It is no part of the Court's function to decide prospectively a s445D application which has not been made, or to consider whether or not in considering such an application it would require a guarantee to assure the dividend of third party creditors who wished the DCA to proceed before it would grant the application. However, the determination of a party, whose word in the context is not lightly to be doubted, offers yet another complicating factor in the situation in which the interests of the creditors must be assessed. I do not accept Mr Hayter's submission that these considerations are wholly irrelevant. They seem to be yet another factor to be taken into account in determining whether an adjournment is in the interests of the creditors. Again, I respectfully agree with his Honour. The contingency, in this case the "high likelihood", of an application under s 445D is another factor which it is not irrelevant to take into account in determining whether an adjournment is in the interests of creditors. It was conceded in the written submissions made on behalf of Mr and Mrs Cassimatis that it was "unclear" whether an administration under the DOCA (and I understood this also to be as it was proposed to be presented in amended form) would result in a better return to creditors than an immediate winding up. For their part, the administrators went rather further in their report. They do not see the DOCA as offering the prospect of a better return. Though the further excerpt is lengthy, it is again desirable that their opinion be set out: 8. The Administrators Recommendations The options available to creditors are: (a) To accept the proposed deed of company arrangement; (b) To wind up the company; or (c) To end the administration and hand the company bank to its directors Under Section 439A, Administrators must provide a recommendation to creditors based on the information available to them. Whether to Accept the Proposal for a Deed of Company Arrangement The Administrators recommend that creditors do not accept the proposal for a Deed of Company Arrangement. The Administrators reasons for recommending against accepting the proposal for a Deed of Company Arrangement are as follows: The proposal is subject to a condition precedent which, on the basis of legal advice received by them, the Administrators do not expect to be fulfilled. The condition precedent states, in effect, that the sum of $2 million to be paid in under the proposal will only be paid if the current injunction over those funds (which was obtained by the ASIC) expires or is removed and the CBA takes not step to prevent the monies being paid to the Deed Administrators. In the event that the condition precedent is fulfilled (within up to 120 days), that is the injunction expires or is removed and the CBA takes no action, again on the basis of legal advice received the Administrators believe that it is likely that a liquidator of storm would be able to recover the $2 million for the benefit of creditors, and to do so without agreeing to conditions such as are contained in the proposal. The proposal therefore provides no extra benefit in terms of the payment of the $2 million. In the event that the proposal is rejected and Storm is placed into liquidation priority employee entitlements will be paid by the Receivers or through the federal government funded General Employee Entitlement & Redundancy Scheme (GEERS). The proposal therefore provides no additional benefit to employees. Although the Administrators agree that a Public Examination of all relevant parties should be carried out, and agree that any decision to commence or continue litigation should be based primarily on evidence gathered at such Public Examination, they are of the view that such a process can be carried out, at least as efficiently, by a liquidator as a Deed Administrator. In the vent that Storm is placed into liquidation it is likely that the liquidators will be able to seek recovery for the payment of $444,711 paid on the 22 of December 2008 to the Westpac Bank, from Emmanuel and or Julie Cassimatis. That benefit will be lost if the proposal for a Deed of Company Arrangement is accepted. In the event that Storm is placed into liquidation the liquidators will be able to seek compensation from the directors of the company for any debts incurred after the commencement of the insolvency and which remain unpaid. That benefit will be lost if the proposal for a Deed of Company Arrangement is accepted. In the opinion of the Administrators the directors of Storm (defined in the proposal as being Emmanuel and Julie Cassimatis) have an inappropriate level of control. For example: (a) By clause 11 of the proposal the Deed Administrators must obtain the directors written agreement by the 17 of April 2009 (that is a date before the expiration of the date on which the $2 million is required to be paid in) for a budget for the costs and expenses of the proposal examinations or alternatively accepted the budget contained in that clause. Bearing in mind that the directors will be among the parties to be examined this limitation is, in the opinion of the administrators, inappropriate. (b) By clause 21 of the proposal any legal action taken by Storm against the CBA will be conducted by the directors, but subject to such assistance and supervision of the Administrators and their independent solicitors as the Administrators think fit. It is not clear to the Administrators what the terms "conducted by" and "supervision" mean for the purposes of the proposed Deed and they are concerned that, in effect the directors will have full control (see below). Further, given that the directors may be joined as a party in any action commenced by Storm (or any action by Storm on behalf of clients of Storm) in the opinion of the Administrators the directors may lack the required level of independent to conduct such proceedings. (c) The event that a dispute arises between the directors and the Administrators regarding any decision of the Administrators (see clause 31) and that dispute is not settled by the process set out in the clause 34 the directors may by clause 34 replace the Administrators as trustees of the Storm Client Recovery Fund and require the Deed Administrators' to repay the balance of the funds held by them. (d) The general scheme of the proposal provides for action on behalf of clients to be conducted by the directors but subject to such assistance from and supervision of a Client Committee assisted by an independent legal advisor or advisors. It is not clear to the Administrators what the terms "conducted by" and "supervision" mean for the purposes of the proposed Deed and they are concerned that, in effect that directors will have full control of the proceedings. Further, given that the directors may be joined as a party in any action commenced by Storm (or any action by Storm on behalf of clients of Storm) in the opinion of the Administrators the directors may lack the required level of independent to conduct such proceedings. Whether to liquidate the Company It is the Administrators' recommendation that the company then be wound up. The company is insolvent in that it has insufficient current assets to meet its commitments. Placing the company into liquidation will also provide the Liquidator with powers to conduct further investigations into the affairs of the company; look at the matter of Insolvent Trading; recover any Preferential Payments made to creditors; examine and recover any other Insolvent Transactions and examine the general affairs of the company. In liquidation the possibility exists that the liquidators may have access to funding to recover assets and prosecute claims from: The Assetless Administration Fund administered by the ASIC Contributions from creditors Litigation Funders Whether to End the Administration In the Administrators view it would not be in the interest of the creditors for the Administration to end. Should the company's creditors resolve that the Administration be ended, the control of the company would revert to the directors. The company is insolvent and the affairs of the company should be formally resolved. It is likely that a creditor would apply to have the company wound up shortly after the Administration is ended as the company is unable to pay its debts. Other Information We confirm that pursuant to Section 439A(4)(b) of the Corporations Act , there is no other information that we are aware of at this time that will assist creditors in making the decision as to whether or not they should accept the proposal for a Deed of Company Arrangement that has been put forward. 9 Dividend Possibilities Priority employee creditors will be paid their entitlements by the Receivers and, to the extent necessary, by GEERS, should the company be placed into liquidation. Should the proposal for a Deed of Company Arrangement be accepted priority employee creditors will be paid their entitlements by the Receivers and by the Deed Administrators. Storm carried Professional Indemnity Insurance. Clients of Storm who are able to demonstrate that they have incurred losses as a result of negligence by Storm may be paid, or partly paid, by Storms insurers provided the claims lodged are not subject to any of the policies exclusions. Any dividend to ordinary creditors is dependent upon: Read on behalf of Mr and Mrs Cassimatis was an opinion provided by a Mr W J Hamilton, a chartered accountant. Like Messrs Worrell and Kahtri, he is an experienced insolvency practitioner and official liquidator. He offers a critique of their report. Though directed to the subject of the relief sought in the separate application made by Mr and Mrs Cassimatis, its tender on their behalf was not limited to that context. For reasons he sets out in his opinion, he expresses the view that it "is difficult to readily arrive at a decision on reading [the administrators' report] as to creditors' best interests, a winding up or a DOCA. A great deal of homework needs to be done in arriving at the status of all classes of creditors claiming, secured and unsecured, with likely comparative returns, cents in the dollar ($1.00) and over what period in the winding up or DOCA". Mr Hamilton, I note, was not set any such "homework" by Mr and Mrs Cassimatis. The point of all this is that there is something of an understatement in the concession by Mr and Mrs Cassimatis that it is "unclear" that Storm Financial's creditors would be any better off under the DOCA than they would be if the company were ordered to be wound up. Put bluntly and to borrow from language which commended itself to Hamilton J in TCS Management , there is no good case that there will be a greater or more accelerated return from the course contended for on behalf of Mr and Mrs Cassimatis than there would be if Storm Financial were liquidated. In voicing that conclusion it is neither necessary and nor would it be appropriate to reach a conclusion about whether the DOCA sum is in law available to ECA for it to pay it in accordance with the terms of the DOCA. The fate of the $2 million is a matter for the Supreme Court of Queensland. It is enough to note the conceded serious question to be tried and that it is by no means certain either that the interlocutory injunction will not be continued or that the substantive proceeding will be heard and determined in that court within 120 days, to say nothing of the fate or likelihood of disposal within that time frame of any appeal. Both Mr Russell and Mrs Cassimatis were cross-examined on their affidavits. To the extent that their evidence was relevant to the likelihood that ECA would come within the time allowed by the DOCA to be able to pay the DOCA sum and the question of adjournment, I consider that it is neither necessary nor desirable to do anything other than observe that their evidence underscored in my mind the prudence of the concession made on behalf of Mr and Mrs Cassimatis in this Court that, at the behest of the receiver and manager, Storm Financial has raised a serious question to be tried in the Supreme Court about ECA's entitlement to retain the $2 million. Their evidence certainly did not persuade me that the trial in the Supreme Court would be anything other than lengthy and complex and hence correspondingly difficult to hear and determine within the maximum permissible time for the payment of the DOCA sum.


case_outcome: cited

case_text: 11 February 2009 and at a time after the Australian Securities and Investments Commission (ASIC) had intervened in the proceeding, on the application of the administrators and for reasons which I then published ( Worrell; In the matter of Storm Financial Limited (Receivers and Managers Appointed) (Administrators Appointed) [2009] FCA 70) I ordered, inter alia : In the result, there was no application for any further extension of the convening period. As a result, the administrators came to give notice for the holding on 23 March 2009 of the creditors' meeting.


case_text: In support of this submission, Dynamic Supplies referred to the recent decision in Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146. In that case, the Full Court at [104] accepted the proposition that injunctions should be granted in clear and unambiguous terms which leave no room for the persons to whom they are directed to wonder whether their conduct falls within the scope of the injunction. This is because failure to comply with the terms of a court order may give rise to contempt proceedings in which determination of questions of construction of the terms of the injunction is not appropriate since ambiguity or uncertainty may be a defence in such proceedings: see ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 at 259 (per Lockhart J); MacLean v Shell Chemical (Australia) Pty Ltd (1984) 2 FCR 593 at 599 (per Toohey J). Similar remarks were made by a Full Court of this Court in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 574-575, where the Court adopted the principle that injunctive relief should be based upon the specific case alleged and proved against the defendant, and indicate in clear terms the conduct enjoined so that he or she knows what is expected to be done.


case_title: Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563


case_text: In support of this submission, Dynamic Supplies referred to the recent decision in Australian Competition and Consumer Commission v Dataline.Net.Au Pty Ltd [2007] FCAFC 146. In that case, the Full Court at [104] accepted the proposition that injunctions should be granted in clear and unambiguous terms which leave no room for the persons to whom they are directed to wonder whether their conduct falls within the scope of the injunction. This is because failure to comply with the terms of a court order may give rise to contempt proceedings in which determination of questions of construction of the terms of the injunction is not appropriate since ambiguity or uncertainty may be a defence in such proceedings: see ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 at 259 (per Lockhart J); MacLean v Shell Chemical (Australia) Pty Ltd (1984) 2 FCR 593 at 599 (per Toohey J). Similar remarks were made by a Full Court of this Court in Commodore Business Machines Pty Ltd v Trade Practices Commission (1990) 92 ALR 563 at 574-575, where the Court adopted the principle that injunctive relief should be based upon the specific case alleged and proved against the defendant, and indicate in clear terms the conduct enjoined so that he or she knows what is expected to be done. 12 As noted by Lockhart J in ICI Australia 38 FCR at 259, it is imperative that restraining orders are precisely formulated because contempt proceedings with serious consequences can flow from a failure to comply with such orders. In the light of this, and having regard to my earlier reasons in this matter, I consider that the words " under or by reference to " proposed by Brother are too extensive in their reach because they are capable of including conduct beyond that in respect of which specific findings have been made. 13 I therefore consider that the orders proposed by Brother are appropriate, with the exception of proposed order 3, for which Dynamic Supplies' proposed order 3 should be substituted. 14 In relation to the question of costs of this application relating to the form of orders, I note there have clearly been constructive discussions between the parties in relation to the form of the proposed orders. I therefore consider there should be no order as to costs.


case_title: MacLean v Shell Chemical (Australia) Pty Ltd (1984) 2 FCR 593


case_text: The " making of an application within the prescribed time is an essential preliminary to the exercise of the RRT's function ": Fernando v Minister for Immigration & Multicultural Affairs [2000] FCA 324 at [31] , [2000] FCA 324 ; 97 FCR 407 at 415 per Heerey J. Justice Finkelstein at [48] referred to the " need for the expeditious determination of the validity of an administrative decision " and continued: [49] It is also important to note that when Parliament conferred upon a non-citizen the right to apply to the Tribunal for the review of an RRT-reviewable decision, it also circumscribed that right by requiring it to be exercised within a stipulated period: see s31 of the Migration Reform Act 1992 (Cth) inserting into the Migration Act s166B permitting review and s166BA limiting the time for that review. This suggests that the right to review will cease to exist after the prescribed period has elapsed: compare Maxwell v Murphy (1957) 96 CLR 261 at 269 per Dixon CJ. [50] Then there is the language of s412 itself. An application for review "must" be given to the Tribunal within the prescribed period. If one adopts, as it is sometimes necessary to do, the maxim that Parliament says what it means and means what is says, the language adopted by the legislature strongly suggests that an application given to the Tribunal after the relevant period has elapsed is invalid. [51] The consequences of a contrary construction must also be taken into account. If an application can be made to the Tribunal after the prescribed period has elapsed then it can be made at any time thereafter. That is to say, if an application made beyond the prescribed period is a valid application, it will be valid if given one day or one year after that period. This result could not have been intended. [52] The appellant seeks to avoid this problem by arguing that the Tribunal has discretion whether or not to consider a late application. The argument is without foundation. The Tribunal has the jurisdiction conferred upon it by the Migration Act . If it is given a valid application for review it must determine that application according to its merits. The Tribunal has no power to refuse to consider a valid application. I leave out of account the question whether the Tribunal has power to strike out an application which is brought in abuse of process. It is not necessary to determine, on this appeal, whether an administrative tribunal has such a power. Dowsett J agreed: [2000] FCA 324 at [55] . The decision of the Full Court has since been repeatedly followed: VAQ v Minister for Immigration & Multicultural Affairs [2002] FCA 170 at [6] per Sundberg, Marshall and Weinberg JJ; MZNAX v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 1126 ; VOAM v Minister for Immigration & Multicultural Affairs [2003] FCA 396 at [10] per French J.


case_text: There is no power to " override " the time limitation prescribed by s 412(1)(b): VEAN of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCAFC 311 at [32] [33] per Gray, Whitlam and Mansfield JJ, [2003] FCAFC 311 ; 133 FCR 570. Their Honours there said that there was no analogy to the obligation to provide procedural fairness. The issue was not the procedural obligations imposed upon the Tribunal in performing its review function, but whether the Tribunal had power to entertain the application for review lodged out of time. See also: SZEBS v Minister for Immigration & Multicultural & Indigenous Affairs [2006] FCA 456.


case_text: The Federal Magistrates Court dismissed an application seeking review of the decision of the Tribunal: SZJMY v Minister for Immigration & Citizenship [2008] FMCA 105. 5 The Appellants now appeal to this Court. Their Grounds of Appeal contend that the Tribunal committed jurisdictional error and that the Federal Magistrate erred in not so concluding. The Appellants appeared before this Court unrepresented, albeit with the benefit of an interpreter. 6 It is considered that the learned Federal Magistrate was correct in concluding that the non-compliance with the time limits within which an application must be made to the Tribunal deprived the Tribunal of jurisdiction. The appeal, accordingly, must be dismissed.


case_title: VAQ v Minister for Immigration & Multicultural Affairs [2002] FCA 170


case_title: VEAN of 2002 v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCAFC 311 , 133 FCR 570


case_title: VOAM v Minister for Immigration & Multicultural Affairs [2003] FCA 396


case_text: The applicant seeks leave to appeal from the interlocutory judgment of Finkelstein J given on 23 October 2007: Black & Decker (Australasia) Pty Ltd v GMCA Pty Ltd [2007] FCA 1623. His Honour refused the applicant leave to rely on certain affidavit evidence which was filed out of time. Leave to appeal will be refused. 6 The application for leave to appeal from the interlocutory judgment of Finkelstein J is refused and the appellant's motion dated 26 October 2007 is dismissed with costs. I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey. Associate: Dated: 2 November 2007 Counsel for the Appellant: R Garratt QC and J Samargis Solicitor for the Appellant: Kahns Lawyers Counsel for the Respondent: B Caine SC and G Fitzgerald Solicitor for the Respondent: Davies Collison Cave Date of Hearing: 2 November 2007 Date of Judgment: 2 November 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1680.html


case_text: As is clear from the decision of the High Court in Adam P Brown Male Fashions Pty Ltd v Phillip Morris Incorporated [1981] HCA 39 ; (1981) 148 CLR 170, great restraint should be exercised in allowing leave to appeal in matters of practice and procedure. 3 I do not see any arguable case that his Honour's discretion miscarried. In particular, it was not necessary for him to make express reference to what was obviously common ground, namely that the evidence in question was relevant. Nor was it necessary for him to restate the trite fact that there is a public interest in invalid patents not remaining on the register.


case_text: The State of Queensland v J L Holdings Pty Limited [1997] HCA 1 ; (1997) 189 CLR 146 is not authority for the proposition that amendments, adjournments and other procedural indulgences must always be granted and that the balm of costs will always be sufficient. In this case his Honour made findings of fact as to the prejudice that would be suffered by Black & Decker if this evidence was admitted. Those findings were open to him. His Honour was entitled to place considerable weight on the procedural record of GMCA. Whether or not criticism can be launched in this regard at Black & Decker, the fact remains that time and again GMCA have sought to enlarge the case and produce further evidence without regard to the firm directions given by the Court. 5 This case is not concerned with particularly arcane technology, for expert evidence concerning which the parties might have to search throughout the world. It was incumbent on the parties to get their case in order long before now. The integrity of the court process is an important issue on which his Honour was entitled to place great weight.


case_text: It is not in dispute that "information" for the purposes of s 424A(1) does not include "subjective appraisals, thought processes or determinations" of the Tribunal: SZBYR 235 ALR 609. "Subjective appraisals, thought processes or determinations" include for example: • the Tribunal's disbelief of an applicant's evidence arising from inconsistencies in the applicant's evidence ( SZBYR 235 ALR at 616, Minister for Immigration and Citizenship v Applicant A125 of 2003 [2007] FCAFC 162 , VAF 206 ALR at 476, WAGP of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 266 ; (2002) 124 FCR 276) • a determination by the Tribunal that the applicant's account is or may not be credible ( Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 , Paul v Minister for Immigration and Multicultural Affairs [2001] FCA 1196 ; (2001) 113 FCR 396 at 428) • a determination of the Tribunal that the information provided by the applicant in the original application lacks specificity and detail: VAAM v Minister for Immigration and Multicultural Affairs [2002] FCAFC 120 • a view taken by the Tribunal as to the unsatisfactory nature of answers provided by an applicant: NADH of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 328.


case_text: In my view, however, the comments of Cameron FM in this respect at [15]-[16] of his Honour's judgment are correct. I agree with his Honour that it was not necessary for the Tribunal to consider the nature of such further incidents of violence and whether the appellant might be the recipient of further incidents as alleged, as this suggests that the Tribunal had an obligation either to speculate or to make inquiries when it was the appellant's task to make out her claim. In any event, in my view it is clear that the Tribunal had completed its task in considering whether, because of the accord, the appellant continued to have a well-founded fear of persecution. As Ms Clegg submitted, the majority of the High Court in Minister for Immigration and Multicultural Affairs v QAAH of 2004 [2006] HCA 53 ; (2006) 231 ALR 340, in particular at [43]-[50], held that it is open to the Tribunal to take into account changed country circumstances in order to conclude that the appellant was not a refugee at the time the Tribunal's decision was made. Further, as Gleeson CJ and Hayne and Heydon JJ observed in Minister for Immigration and Multicultural Affairs v Respondents S152/2003 [2004] HCA 18 ; (2004) 222 CLR 1 at 11 in relation to relevant random and uncoordinated acts of violence in that case, "No country can guarantee that its citizens will at all times, and in all circumstances, be safe from violence. Day by day, Australian courts deal with criminal cases involving violent attacks on person or property. Some of them may occur for reasons of racial or religious intolerance..."


case_title: Minister for Immigration and Multicultural Affairs v Respondents S152/2003 [2004] HCA 18 ; (2004) 222 CLR 1


case_text: The background to the enactment of s 424A(3)(b) was considered at length by Merkel and Hely JJ in Minister for Immigration and Multicultural and Indigenous Affairs v NAMW [2004] FCAFC 264 ; (2004) 140 FCR 572. In that case their Honours stipulated that, in order for information to fall within s 424A(3)(a) and therefore be excluded from the application of s 424A(1) , it must be information not specifically about the applicant or another person. The further reference to information that is "just about a class of persons of which the applicant or other person is a member" is not a second criterion to be met, but is designed to underline the specificity required by precluding any argument that reference to a class could be taken as reference to all individuals (including, for example, an applicant) falling in it ( NAMW 140 FCR at 599-600). The reasoning in NAMW [2004] FCAFC 264 ; 140 FCR 572 was also adopted by the Full Court in WAJW v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 330. 35 Accordingly, examples of information excluded by section 424A (3)(a) are: • country information: NAMW [2004] FCAFC 264 ; 140 FCR 572, SZBJQ v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1346 and SZGQZ v Minister for Immigration and Citizenship [2007] FCA 1091 • information from a university website as to the content of a marketing degree course SZFLL v Minister for Immigration and Citizenship [2007] FCA 355 • information from Canadian source material, telephone interviews, DFAT and UK Home Office material that it would be difficult to leave the relevant country if one was wanted by the authorities: WAJW [2004] FCAFC 330. 37 I do not accept the submission of Mr Young that the relevant information upon which the Tribunal was relying in its decision of 8 February 2007 pertained only to whether people could fly directly from Australia to India if they were in possession of a valid Nepalese passport. From the material I have set out above it is clear that there exists information in the public domain concerning the lack of restriction on persons holding Nepalese passports to enter India, and although not identified as such as it was in the decision of the Tribunal as first constituted, it was upon this information that the Tribunal was clearly relying in both its letter to the appellant and its decision of 8 February 2007. This was information not specifically about the appellant or another person. It concerned a class of persons, of which the appellant was a member, namely all Nepalese citizens with passports. Although not specifically identified as such, it was information akin to country information. It is at least analogous to the information the subject of the decision in WAJW [2004] FCAFC 264 ; 140 FCR 572.


case_title: NADH of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 328


case_title: Paul v Minister for Immigration and Multicultural Affairs [2001] FCA 1196 ; (2001) 113 FCR 396


case_text: These grounds of appeal require consideration of s 424A Migration Act , a provision which frequently arises for consideration in the context of review of decisions of the Tribunal. It is not in contention that breach of this section by the Tribunal constitutes jurisdictional error: SAAP v Minister for Immigration and Multicultural and Indigenous Affairs [2005] HCA 24 ; (2005) 215 ALR 162. 24 Section 424A provides as follows: (1) Subject to subsections (2A) and (3), the Tribunal must: (a) give to the applicant, in the way that the Tribunal considers appropriate in the circumstances, clear particulars of any information that the Tribunal considers would be the reason, or a part of the reason, for affirming the decision that is under review; and (b) ensure, as far as is reasonably practicable, that the applicant understands why it is relevant to the review, and the consequences of it being relied on in affirming the decision that is under review; and (c) invite the applicant to comment on or respond to it. (2) The information and invitation must be given to the applicant: (a) except where paragraph (b) applies--by one of the methods specified in section 441A ; or (b) if the applicant is in immigration detention--by a method prescribed for the purposes of giving documents to such a person. (2A) The Tribunal is not obliged under this section to give particulars of information to an applicant, nor invite the applicant to comment on or respond to the information, if the Tribunal gives clear particulars of the information to the applicant, and invites the applicant to comment on or respond to the information, under section 424AA. (3) This section does not apply to information: (a) that is not specifically about the applicant or another person and is just about a class of persons of which the applicant or other person is a member; or (b) that the applicant for review gave for the purpose of the application; or (ba) that the applicant gave during the process that led to the decision that is under review, other than such information that was provided orally by the applicant to the Department; or (c) that is non-disclosable information.


case_text: Accordingly, examples of information excluded by section 424A (3)(a) are: • country information: NAMW [2004] FCAFC 264 ; 140 FCR 572, SZBJQ v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1346 and SZGQZ v Minister for Immigration and Citizenship [2007] FCA 1091 • information from a university website as to the content of a marketing degree course SZFLL v Minister for Immigration and Citizenship [2007] FCA 355 • information from Canadian source material, telephone interviews, DFAT and UK Home Office material that it would be difficult to leave the relevant country if one was wanted by the authorities: WAJW [2004] FCAFC 330.


case_text: In relation to these grounds of appeal, the submissions of the appellant can be summarised as follows: • the information relied on by the Tribunal was that the appellant could have gone to India immediately upon receiving her passport in 2003 without obtaining a visa. This appeared in response to the appellant's statement in a statutory declaration that she did not have a visa to depart Nepal. The information upon which the Tribunal relied, namely that she could leave Nepal without a visa, was not merely the conclusion or thought processes of the Tribunal • it is clear from the decision of the Tribunal that this information undermined the appellant's claim that Australia owed her protection obligations, and accordingly it was within s 424A as considered by the High Court in SZBYR v Minister for Immigration and Citizenship (2007) 235 ALR 609 as it was not information which fell within the exception in s 424A(3)(a) • information the Tribunal had with respect to Nepalese citizens entering India was limited to information the Tribunal had concerning whether it is possible to fly directly from Australia to India with a Nepalese passport. The relevant information upon which the Tribunal relied did not deal with circumstances in which a Nepalese person could enter India from Nepal. 26 In response, the respondent submitted in summary: • the statements of the Tribunal with respect to the ability of the appellant to leave Nepal with her passport was not "information" within the meaning of s 424A(1) , but rather the subjective appraisals, thought processes or determinations of the Tribunal: VAF v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 206 ALR 471 at 476, SZBYR 235 ALR at 616 • if these statements, including with respect to the ability of the appellant to go to India, were "information", it was information within s 424A(3)(a) • even if the statements were "information" within the meaning of s 424A(1) the Tribunal did not act in breach of the section in that it brought to the appellant's attention the fact that she could have left Nepal when she received her passport. Did the Tribunal rely on "information" within the meaning of section 424A(1)? 29 The factual basis of "information" was reiterated by the majority of the High Court in SZBYR 235 ALR at 616 where their Honours said in relation to "information" in s 424A(1): "However broadly 'information' be defined, its meaning in this context is related to the existence of evidentiary material or documentation, not the existence of doubts, inconsistencies or the absence of evidence." 30 It is not in dispute that "information" for the purposes of s 424A(1) does not include "subjective appraisals, thought processes or determinations" of the Tribunal: SZBYR 235 ALR 609. "Subjective appraisals, thought processes or determinations" include for example: • the Tribunal's disbelief of an applicant's evidence arising from inconsistencies in the applicant's evidence ( SZBYR 235 ALR at 616, Minister for Immigration and Citizenship v Applicant A125 of 2003 [2007] FCAFC 162 , VAF 206 ALR at 476, WAGP of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 266 ; (2002) 124 FCR 276) • a determination by the Tribunal that the applicant's account is or may not be credible ( Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 , Paul v Minister for Immigration and Multicultural Affairs [2001] FCA 1196 ; (2001) 113 FCR 396 at 428) • a determination of the Tribunal that the information provided by the applicant in the original application lacks specificity and detail: VAAM v Minister for Immigration and Multicultural Affairs [2002] FCAFC 120 • a view taken by the Tribunal as to the unsatisfactory nature of answers provided by an applicant: NADH of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 328.


case_title: SZFLL v Minister for Immigration and Citizenship [2007] FCA 355


case_title: SZGQZ v Minister for Immigration and Citizenship [2007] FCA 1091


case_text: The term "information" within s 424A(1) was considered by the Full Court in VAF 206 ALR at 476 and defined by Finn and Stone JJ in that case to refer to: "...knowledge of relevant facts or circumstances communicated to or received by the Tribunal: Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 at [3] , irrespective of whether it is reliable or has a sound factual basis: Win v Minister for Immigration and Multicultural Affairs [2001] FCA 56 ; (2001) 105 FCR 212 at [19] [22]." 30 It is not in dispute that "information" for the purposes of s 424A(1) does not include "subjective appraisals, thought processes or determinations" of the Tribunal: SZBYR 235 ALR 609. "Subjective appraisals, thought processes or determinations" include for example: • the Tribunal's disbelief of an applicant's evidence arising from inconsistencies in the applicant's evidence ( SZBYR 235 ALR at 616, Minister for Immigration and Citizenship v Applicant A125 of 2003 [2007] FCAFC 162 , VAF 206 ALR at 476, WAGP of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 266 ; (2002) 124 FCR 276) • a determination by the Tribunal that the applicant's account is or may not be credible ( Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 , Paul v Minister for Immigration and Multicultural Affairs [2001] FCA 1196 ; (2001) 113 FCR 396 at 428) • a determination of the Tribunal that the information provided by the applicant in the original application lacks specificity and detail: VAAM v Minister for Immigration and Multicultural Affairs [2002] FCAFC 120 • a view taken by the Tribunal as to the unsatisfactory nature of answers provided by an applicant: NADH of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 328.


case_title: VAAM v Minister for Immigration and Multicultural Affairs [2002] FCAFC 120


case_text: In response, the respondent submitted in summary: • the statements of the Tribunal with respect to the ability of the appellant to leave Nepal with her passport was not "information" within the meaning of s 424A(1) , but rather the subjective appraisals, thought processes or determinations of the Tribunal: VAF v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 206 ALR 471 at 476, SZBYR 235 ALR at 616 • if these statements, including with respect to the ability of the appellant to go to India, were "information", it was information within s 424A(3)(a) • even if the statements were "information" within the meaning of s 424A(1) the Tribunal did not act in breach of the section in that it brought to the appellant's attention the fact that she could have left Nepal when she received her passport. Did the Tribunal rely on "information" within the meaning of section 424A(1)? 28 The term "information" within s 424A(1) was considered by the Full Court in VAF 206 ALR at 476 and defined by Finn and Stone JJ in that case to refer to: "...knowledge of relevant facts or circumstances communicated to or received by the Tribunal: Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 at [3] , irrespective of whether it is reliable or has a sound factual basis: Win v Minister for Immigration and Multicultural Affairs [2001] FCA 56 ; (2001) 105 FCR 212 at [19] [22]." 30 It is not in dispute that "information" for the purposes of s 424A(1) does not include "subjective appraisals, thought processes or determinations" of the Tribunal: SZBYR 235 ALR 609. "Subjective appraisals, thought processes or determinations" include for example: • the Tribunal's disbelief of an applicant's evidence arising from inconsistencies in the applicant's evidence ( SZBYR 235 ALR at 616, Minister for Immigration and Citizenship v Applicant A125 of 2003 [2007] FCAFC 162 , VAF 206 ALR at 476, WAGP of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 266 ; (2002) 124 FCR 276) • a determination by the Tribunal that the applicant's account is or may not be credible ( Tin v Minister for Immigration and Multicultural Affairs [2000] FCA 1109 , Paul v Minister for Immigration and Multicultural Affairs [2001] FCA 1196 ; (2001) 113 FCR 396 at 428) • a determination of the Tribunal that the information provided by the applicant in the original application lacks specificity and detail: VAAM v Minister for Immigration and Multicultural Affairs [2002] FCAFC 120 • a view taken by the Tribunal as to the unsatisfactory nature of answers provided by an applicant: NADH of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 328. 31 The statements of the Tribunal in this case with respect to the ability of the appellant to leave Nepal and go to another country such as India without a visa appear to refer to "information" upon which the Tribunal was relying, rather than constituting "subjective appraisals, thought processes or determinations." The Tribunal was relying on what it understood to be a fact - namely that it was legally possible for the appellant to have left Nepal once she obtained her passport, and, irrespective of having a visa, gone immediately to another country such as India. In my view this was clearly "knowledge of relevant facts or circumstances" as explained by the Full Court in VAF 206 ALR 471, not a view taken by the Tribunal based on facts. The conclusion which was reached by the Tribunal, based on what it understood to be the fact that the appellant was entitled to leave Nepal and, without needing a visa, go to India, was that because the appellant had not done so she did not have a well-founded fear of serious harm from the Maoists or from any other source. 32 Accordingly, the Tribunal was relying on "information" for the purposes of s 424A(1). Did the information upon which the Tribunal relied fall within the exception in section 424A(3)(a)? 33 The first respondent submitted that, if the findings of the Tribunal were based on "information", it was information falling within s 424A(3)(b) in that it was information not specifically about the applicant or another person, but was about a class of persons of which the applicant or other person was a member.


case_title: WAGP of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2002] FCAFC 266 ; (2002) 124 FCR 276


case_title: WAJW v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCAFC 330


case_outcome: referred to

case_text: Ms Ogawa submits that both Scarlett FM and the Tribunal erred in their approach to the phrase ' is being assessed by an officer ' as contained in the Regulations, and submits that the words ' being assessed by an officer ' was treated by them as meaning that there was no assessment then in progress. She submits that the words ' being assessed ' are matters of fact and degree and that if there has been a misapprehension of the meaning of the phrase, it constitutes an error of law. She refers to the decision of Gauthiez v Minister for Immigration and Ethnic Affairs (1994) 53 FCR 512 per Gummow J at 519. 43 Ms Ogawa's references to Scargill and Gauthiez do not relate to the issue before the Tribunal and Scarlett FM. Those cases considered whether an applicant could take advantage of his or her unlawful activities under immigration law to establish usual residence in Australia. They are not analogous to the present circumstances.


case_text: With regard to the claim by Ms Ogawa that only the Minister can exercise power under s 351 of the Act, s 351(3) provides: ' The power under subsection (1) may only be exercised by the Minister personally '. By s 351(1) the Minister is empowered to substitute a decision of the Tribunal for a decision which is more favourable to an applicant. Scarlett FM observed that pursuant to s 351(7) of the Act the Minister does not have a duty to consider whether to exercise the power under subsection (1) in respect of any decision, whether requested to do so by an applicant or by any other person, or in any other circumstances. The High Court has determined that in analogous circumstances prerogative writs cannot operate to compel the Minster to act: see Re Minister for Immigration and Multicultural and Indigenous Affairs and Another; Ex parte applicants S134/2002 [2003] HCA 1 ; [2003] 211 CLR 441 at 48. 46 It follows that there is no error in the decision of the Federal Magistrate relating to the application under s 351 of the Act. 47 For the above reasons, the appeal must be dismissed. In doing so however, the Court makes the following observations.


case_title: R v. Governor of Brixton Prison. Ex parte Soblen [1963] 2 Q.B. 243

case_text: The conclusion reached by His Honour relating to the expiration of Ms Ogawa's Bridging visa is not dependent upon any letter of the Registrar of the High Court as constituting a ' decision ' as Ms Ogawa has submitted. Although Scarlett FM refers to the letter of the Registrar as a decision by the High Court, it is clear that His Honour's conclusion arises from a construction of Rule 41.10.4 of the High Court Rules 2004 , which deems an application for special leave to be abandoned irrespective of any notification by the Registrar. Further, in answer to Ms Ogawa's submission that the abandonment pursuant to Rule 41.10.4 ' is nothing more than a presumption' , the effect of the rule is clear. It provides that, where an unrepresented applicant does not provide a written case and draft Notice of Appeal within the 28 day period, the application is deemed to be abandoned. In R v. Governor of Brixton Prison. Ex parte Soblen [1963] 2 QB 243 at 315 Pearson L.J said: 'The word " deems " normally means only " is of opinion " or " considers ", or at most " decides ", and there is no implication of steps to be taken before the opinion is formed or the decision is taken.' 25 Ms Ogawa claims that there is abundant evidence that she never abandoned her judicial review proceedings, of which the application for special leave to the High Court comprised a part, and that the orders of Callinan J acknowledge this fact. Unfortunately for Ms Ogawa the events subsequent to the decision of Scarlett FM do not impact upon his findings, and it is those findings only with which this Court is concerned.


case_text: Ms Ogawa claims that in order to determine whether or not her Ministerial Intervention request ' was being assessed ', it was ' necessary for the Tribunal to take into account the reasons why an officer did not take action in respect of the appellant's Ministerial Intervention Request '. She says that if the officer did not take action in respect of a Ministerial Intervention Request for illegitimate reasons, the Minister cannot rely upon ' the time when the officer did not take action '. She refers to Scargill v Minister for Immigration & Multicultural & Indigenous Affairs [2003] FCAFC 116 at para 29. 41 Ms Ogawa thereafter refers to the observations made by Scarlett FM of the MIU and of his observation that the ' Department acted wrongly ' in withdrawing Ms Ogawa's request. She therefore claims that the Tribunal erred in law. 42 Further, she claims that an officer of the Department has no power or authority to withdraw her request for Ministerial intervention and the purported withdrawal was in itself an error of law. Ms Ogawa made other submissions which appear to be based on findings that were not made by Scarlett FM. However, for the purpose of this appeal the Court is satisfied that these reasons deal with her arguable submissions. 43 Ms Ogawa's references to Scargill and Gauthiez do not relate to the issue before the Tribunal and Scarlett FM. Those cases considered whether an applicant could take advantage of his or her unlawful activities under immigration law to establish usual residence in Australia. They are not analogous to the present circumstances.


case_text: The role of the Court in an appeal such as this is to determine whether the Federal Magistrate erred: see SZAJB v Minister for Immigration & Multicultural & Indigenous Affairs [2004] FCA 782. The Court is confined to a consideration of the issues before Scarlett FM. These issues are whether the appellant was entitled to a Bridging visa on 19 May 2006, and whether there was an application being considered by the Minister under s 351 of the Act.


case_text: Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435 , in dismissing opposition to an application for registration of the letters "AEI" and a logo comprised of those letters in a stylised format, the Deputy Registrar of Trade Marks said (at 439 440): The question of trade marks consisting of three letters has long been an issue for the registrar. Under the old law, the Trade Marks Act 1955 (Cth), where it was a question of whether a trade mark was distinctive, three letter marks were, in the main, treated as not prima facie qualified for registration. This view was in line with Lord Parker's dictum that "initials are even less adapted for trade mark purposes than names": Re W & G du Cros Ltd's Application (1913) 30 RPC 660 at 672. Under the old legislation, it was the registrar's practice, prima facie, to accept three letter marks only if the letters formed a pronounceable word. The test under the new law, however, is not whether the trade mark is distinctive, but whether it is capable of distinguishing. The registrar, to this end, has adopted a new practice based on an assessment of the likelihood of others' needs to use letters, particularly as initials. It is useful for me to quote from the Trade Marks Office Draft Manual of Practice and Procedure at 22.9. 9. Letters Trade marks consisting of one or two letters are prima facie unfit for registration because of a common need for their use in the general market place. The likelihood of other traders needing to use simple unembellished combinations of one or two letters in the form of initials or abbreviations is quite high. One or two letter trade marks, unless represented in a very unusual manner, possess little inherent adaptation to distinguish and can only be registered with significant evidence of use in terms of s 41(5) and (6). There is likely to be less need for use of combinations of three or more letters and such trade marks are prima facie capable of distinguishing. For information on how the courts have treated letter trade marks, see Registrar of Trade Marks v W & G Du Cros Ltd (W & G case ) 29 RPC 74 and RPC 653. 9.1 One and two letter trade marks One and two letter trade marks without significant get up are not prima facie registrable. ... 9.2 Three or more letter trade marks Trade marks consisting of three or more letters are prima facie capable of distinguishing unless they lack inherent adaptation to distinguish because they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned. The issue of pronunciation is not relevant ... The submission from Mr Condon is that the application trade marks are merely part of the applicant's trade name and he cites Re Application by American Tobacco Co [1996] ATMO 29 ; (1996) 35 IPR 98 as support. That case, however, finds that the words "The American Tobacco Company" are generic and are therefore not capable of distinguishing one American tobacco company from another. The AEI trade marks in suite do not suffer from a generic application of that kind. The American Tobacco Co case is therefore not to the point. The evidence of the opposition certainly establishes that there is indeed one other service provider with the same initials. However, I think that a single example is not enough to find that the registrar's practice in relation to three letter marks is not a good one. AEI has not been shown to have any meaning that renders it not capable of distinguishing and I do not agree with Mr Condon that the fact it coincides with the initials of the company name of its owner indicates that it lacks that capacity. In short, I do not think it is likely that many other insurance suppliers and brokers are likely to want to use the initials AEI. I therefore find that, in terms of s 41, there is no ground for rejection.


case_text: applicant referred me to the decision of Allsop J (as he then was) in Anheuser-Busch Inc v Budejovický Budvar [2002] FCA 390 ; (2002) 56 IPR 182 at [184] [192] and submitted that the relevant principles were adequately summarised in those paragraphs of his Honour's judgment. At [184] [186] (p 227), his Honour said: The notion of trade mark use is now given content by ss 7 and 17 of the TM Act: see [129] above. The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: Shell Co above, at 422 5; Mark Foy's Ltd , above at CLR 198 200; IPR 473 5; Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 335, 342 5, 347 9; 101 ALR 700 at 710, 717 20, 723 5; 21 IPR 1 at 11 12; 19; 24 5; Pepsico Australia , above at 162 3, 167 9 and 178 82; Musidor BV v Tansing (t/as Apple Music House) [1994] FCA 1242 ; (1994) 52 FCR 363 at 376 7; [1994] FCA 1242 ; 123 ALR 593 at 605; [1994] FCA 1242 ; 29 IPR 203 at 215 6; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd ; [2000] FCA 876 ; (2000) 100 FCR 90 at 100 1; [2000] FCA 876 ; 177 ALR 167 at 175 6; [2000] FCA 876 ; 48 IPR 257 at 265 6 and Aldi Stores , above at [22] [30] and [54] [58]. The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: Shell Co , above at 425; Wrigley's (A'sia) Ltd v Life Savers (A'asia) Ltd (1936) 37 SR (NSW) 9 at 16; Aldi Stores , above, at [22] [24] and [76]. I adopt and apply the following statement made by Allsop J in Anheuser-Busch Inc [2002] FCA 390 ; 56 IPR 182 at [191] : It is not to the point, with respect, to say that because another part of the label (the white section with "Budejovicky Budvar") is the obvious and important "brand", that another part of the label cannot act to distinguish the goods. The "branding function", if that expression is merely used as a synonym for the contents of ss 7 and 17 of the TM Act, can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant "brand" is of relevance to the assessment of what would be taken to be the effect of the balance of the label. Having regard to the factors set out in [155] above, I think that the letters "BSS" on the allegedly infringing label are used in a branding role. It does not matter that the respondent may have made it clear on the packaging that the commercial origin of the goods was the respondent, ie a business other than that conducted by the applicant. The letters "BSS" may have been used in this way as an opening shot in a campaign by the respondent designed to demonstrate or generate generic use of the letters "BSS" but, at the time they were used on the relevant label, they were used to distinguish the respondent's goods from those of others, ie to brand them. Subject to the s 122(1)(b)(i) defence relied upon by it, the respondent, therefore, infringed the applicant's BSS trade mark in the manner alleged by the applicant. The Section 122(1)(b)(i) Defence


case_text: applicant submitted that all of the journal articles originally published overseas, the overseas dictionaries and the excerpts from the two textbooks originally published overseas should all be rejected as not being relevant to distinctiveness as at 6 December 2006 because none of those publications could conceivably be relevant to the Court's determination of that question. The applicant also submitted that, given that a trade mark is a purely territorial concept which is legally operative and effective only within the territory within which it is used and for which it is registered or for which it is to be registered, it was of no moment that, in various publications originally published overseas, there was demonstrated a use of the letters "BSS" which could arguably support the respondent's contention that the letters had become descriptive of "balanced salt solution". In support of its objection, the applicant relied upon the following passage in the judgment of Gibbs J (as he then was) in Burger King Corporation v Registrar of Trade Marks [1973] HCA 15 ; (1973) 128 CLR 417 at 422 423: On the other hand, the evidence that the word has been extensively used in the United States of America and has there become widely known as indicating the goods of the applicant only, is in my opinion in a different situation. On this point counsel for the Registrar referred me to certain authorities whose effect is summed up in the following passage from the judgment of Tomlin J. (as he then was) in Impex Electrical Ltd. v. Weinbaum [(1927) 44 R.P.C. 405 , at p. 410], which has been accepted, by this Court as well as in the United Kingdom, as a correct statement of the law (see Re Notox Ltd.'s Application [(1930) 48 R.P.C. 168 , at p. 178]; Re Gaines Animal Foods Ltd's Application [(1951) 68 R.P.C. 178 , at p. 179]; de Cordova v. Vick Chemical Co. [(1951) 68 R.P.C. 103 , at p. 107]; and The Seven Up Co. v. O.T. Ltd. [(1947) [1947] HCA 59 ; 75 C.L.R. 203 , at pp. 215, 216]): "For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods." Those cases are authority for the proposition that in deciding whether a mark is distinctive, user within the jurisdiction only is to be taken into account. However, in the present case the question is a different one, namely, whether evidence of user overseas is admissible on the issue whether a trade mark is capable of becoming distinctive. Decision on Admissibility I think that these submissions made on behalf of the applicant in support of its objection to all of the overseas material sought to be tendered by the respondent are correct. In my view, it is a long bow for the Court to draw to find that use in the relevant trade in Australia can be established by the availability here of journals, dictionaries and textbooks published overseas which, to some extent, may have been read or looked at by persons participating in that trade. The evidence as to who read this material and when is vague and general. Further, the dictionaries and textbooks can only prove use in the places to which they relate. There was no evidence to suggest that these latter sources related to Australia. For these reasons, I will not admit these overseas materials into evidence for the purpose of establishing that the letters "BSS" did not, as at 6 December 2006, distinguish the applicant's BSS balanced salt solution from sterile ophthalmic irrigating solutions supplied by others within s 234(2) of the Act. Distinctiveness in fact as at 22 March 1988 may be relevant to the respondent's case for cancellation of the applicant's BSS trade mark pursuant to ss 88(1)(a), 88(2)(a), 57 and 41 of the Act. For the same reasons as those advanced for not admitting into evidence the material to which objection was taken for the purpose of establishing lack of distinctiveness as at 6 December 2006, I will not admit that material for the purpose of establishing lack of distinctiveness in fact as at 22 March 1988.


case_title: Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks [1990] FCA 175 ; (1990) 24 FCR 1

case_text: 24 contemplates that the registered trade mark will be generally accepted as the sign that describes, or is the name of, the relevant article or substance. There must be general acceptance within the relevant trade that the mark is the generic name of the article or substance. Use sometimes by some people will not be enough. Nor will the requirements of the section be satisfied if the mark is only one of two or more generic names for the article or substance. In the present case, the generic name for the particular article or substance is "balanced salt solution". Balanced salt solution is a particular type of sterile ophthalmic irrigating solution with a particular mix of constituents. Whilst "bss" may well be an acronym for "balanced salt solution", it did not become generally accepted within the relevant period as the generic signification of "balanced salt solution" or of the particular type of sterile irrigating solution comprising the constituents of standard balanced salt solution. The most that can be said, on the evidence, is that the letters "BSS" were sometimes used in the relevant period in scientific journal articles as a convenient editorial abbreviation for "balanced salt solution". Such a use does not demonstrate "general acceptance" in the relevant trade that the mark is the generic name. This is especially so in circumstances where the respondent has chosen to base its case on this point almost entirely on the publications which it tendered, most of which were authored and published overseas. The respondent called no doctor, no nurse, no pharmacist, no purchasing officer—indeed, it called no third party participant in the relevant trade. The applicant, on the other hand, called trade evidence. That evidence established: The respondent has failed to discharge its onus of proving that the letters "BSS" became generic or descriptive in the period after 22 March 1988 and as at 6 December 2006. The respondent's case based upon s 87 and s 24 of the Act also fails. For the above reasons, I do not need to consider s 89 of the Act. However, I will do so against the possibility that I am wrong in the conclusions which I have reached in respect of Ground 2.


case_text: was common ground between the parties that the relevant principle governing inherent adaptability was that stated by Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 514 where, after discussing the well-known observations of Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 634 635, his Honour said: ... the question whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess—will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.


case_text: remarks of Kitto J were made in respect of the 1955 Act. However, the Full Court of this Court has taken the same approach to the question of inherent adaptability for the purposes of s 41(3) of the Act (see Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494 at [47] [49] (pp 510 511) (per French J), at [80] [100] (pp 518 522) (per Lindgren J) and at [145] [148] (pp 532 533) (per Stone J); and Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 164 FCR 506 at [36] (pp 517 518) (per Gyles J) and at [125] (p 539) (per Allsop J)).


case_text: views were expressed by a delegate of the Registrar in HCA Colours Australia Pty Ltd v Holland Colours NV (2003) 59 IPR 507 at 516 517 and in Crooks Michell Peacock Stewart Pty Ltd v Kaiser (t/as Commercial Art & Industrial Design) (1994) 29 IPR 225 at 232. Sign is defined in s 6 of the Act as follows: sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. In the same section, the expression use of a trade mark is defined in the following way: use of a trade mark has a meaning affected by subsections 7(1), (2) and (3). use of a trade mark in relation to goods has the meaning given by subsection 7(4). Section 7 of the Act is in the following terms: 7 Use of trade mark (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. Note: For prescribed court see section 190. (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark. (4) In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods). (5) In this Act: use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services. In s 17 of the Act, a trade mark is defined as follows: 17 What is a trade mark? A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Note: For sign see section 6. For a time, the respondent included the letters "BSS" on the label affixed to its 19 ml bottle of AQSIA™ brand balanced salt solution. That use was upon, or in physical or other relation to, those goods. The letters which appeared on that label are substantially identical to the applicant's BSS trade mark. Those letters were used by the respondent with respect to goods in respect of which the trade mark is registered. Therefore, the sole remaining question for present consideration is whether that particular use was one which is properly characterised as use as a trade mark upon those goods. That means: Was it used, or intended to be used, as a sign to distinguish the respondent's AQSIA™ brand balanced salt solution from other sterile ophthalmic irrigating solutions supplied in Australia?


case_text: views were expressed by a delegate of the Registrar in HCA Colours Australia Pty Ltd v Holland Colours NV (2003) 59 IPR 507 at 516 517 and in Crooks Michell Peacock Stewart Pty Ltd v Kaiser (t/as Commercial Art & Industrial Design) (1994) 29 IPR 225 at 232.


case_text: applicant referred me to the decision of Allsop J (as he then was) in Anheuser-Busch Inc v Budejovický Budvar [2002] FCA 390 ; (2002) 56 IPR 182 at [184] [192] and submitted that the relevant principles were adequately summarised in those paragraphs of his Honour's judgment. At [184] [186] (p 227), his Honour said: The notion of trade mark use is now given content by ss 7 and 17 of the TM Act: see [129] above. The task is to examine the way the words are used in their context, including the totality of the packaging, to assess their nature and purpose in order to see whether they are used to distinguish the goods from goods of others: Shell Co above, at 422 5; Mark Foy's Ltd , above at CLR 198 200; IPR 473 5; Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 335, 342 5, 347 9; 101 ALR 700 at 710, 717 20, 723 5; 21 IPR 1 at 11 12; 19; 24 5; Pepsico Australia , above at 162 3, 167 9 and 178 82; Musidor BV v Tansing (t/as Apple Music House) [1994] FCA 1242 ; (1994) 52 FCR 363 at 376 7; [1994] FCA 1242 ; 123 ALR 593 at 605; [1994] FCA 1242 ; 29 IPR 203 at 215 6; Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd ; [2000] FCA 876 ; (2000) 100 FCR 90 at 100 1; [2000] FCA 876 ; 177 ALR 167 at 175 6; [2000] FCA 876 ; 48 IPR 257 at 265 6 and Aldi Stores , above at [22] [30] and [54] [58]. The assessment is made from the perspective of what a person looking at the label would see and take from it, as to the purpose and nature of its use: Shell Co , above at 425; Wrigley's (A'sia) Ltd v Life Savers (A'asia) Ltd (1936) 37 SR (NSW) 9 at 16; Aldi Stores , above, at [22] [24] and [76]. In order to establish "good faith", when used in s 122, the respondent must show that it acted honestly and without any ulterior motive (see Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 353 354 (per Gummow J)). In June 2005, within two years of the respondent's introduction into the Australian market of its AQSIA™ brand balanced salt solution, the respondent used the letters "BSS" in promotional material for two of its other products. The applicant immediately complained about this. Then, in June 2006, the respondent began to supply its 19 ml plastic bottles of AQSIA™ brand balanced salt solution with the infringing label. It took that course knowing of the existence of the applicant's BSS trade mark, knowing that that mark was registered and knowing that the applicant would not tolerate any attempt by its competitors to use the letters "BSS" generically in order to dilute its registered trade mark. Further, the respondent did not call any evidence at all as to the circumstances in which the decision to use the letters "BSS" on the infringing label was made. Mr Stamp, the respondent's Managing Director, gave evidence at the trial but said nothing about that matter. Ms Stubbs gave no evidence in chief about that matter and answered questions in cross-examination touching upon that matter as follows: Q: This particular product, do you know who approved the specific label that appears on this product? A: No, I don't. Q: Were you involved at all in the design and approval of this label? A: No, I wasn't.


case_title: Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273 ; (2002) 122 FCR 494


case_text: was common ground between the parties that the relevant principle governing inherent adaptability was that stated by Kitto J in Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511 at 514 where, after discussing the well-known observations of Lord Parker of Waddington in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 at 634 635, his Honour said: ... the question whether a mark is adapted to distinguish [must] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives—in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess—will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. In Air Express International (Australia) Pty Ltd v Australian European Insurance (Brokers) Pty Ltd (1999) 49 IPR 435 , in dismissing opposition to an application for registration of the letters "AEI" and a logo comprised of those letters in a stylised format, the Deputy Registrar of Trade Marks said (at 439 440): The question of trade marks consisting of three letters has long been an issue for the registrar. Under the old law, the Trade Marks Act 1955 (Cth), where it was a question of whether a trade mark was distinctive, three letter marks were, in the main, treated as not prima facie qualified for registration. This view was in line with Lord Parker's dictum that "initials are even less adapted for trade mark purposes than names": Re W & G du Cros Ltd's Application (1913) 30 RPC 660 at 672. Under the old legislation, it was the registrar's practice, prima facie, to accept three letter marks only if the letters formed a pronounceable word. The test under the new law, however, is not whether the trade mark is distinctive, but whether it is capable of distinguishing. The registrar, to this end, has adopted a new practice based on an assessment of the likelihood of others' needs to use letters, particularly as initials. It is useful for me to quote from the Trade Marks Office Draft Manual of Practice and Procedure at 22.9. 9. Letters Trade marks consisting of one or two letters are prima facie unfit for registration because of a common need for their use in the general market place. The likelihood of other traders needing to use simple unembellished combinations of one or two letters in the form of initials or abbreviations is quite high. One or two letter trade marks, unless represented in a very unusual manner, possess little inherent adaptation to distinguish and can only be registered with significant evidence of use in terms of s 41(5) and (6). There is likely to be less need for use of combinations of three or more letters and such trade marks are prima facie capable of distinguishing. For information on how the courts have treated letter trade marks, see Registrar of Trade Marks v W & G Du Cros Ltd (W & G case ) 29 RPC 74 and RPC 653. 9.1 One and two letter trade marks One and two letter trade marks without significant get up are not prima facie registrable. ... 9.2 Three or more letter trade marks Trade marks consisting of three or more letters are prima facie capable of distinguishing unless they lack inherent adaptation to distinguish because they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned. The issue of pronunciation is not relevant ... The submission from Mr Condon is that the application trade marks are merely part of the applicant's trade name and he cites Re Application by American Tobacco Co [1996] ATMO 29 ; (1996) 35 IPR 98 as support. That case, however, finds that the words "The American Tobacco Company" are generic and are therefore not capable of distinguishing one American tobacco company from another. The AEI trade marks in suite do not suffer from a generic application of that kind. The American Tobacco Co case is therefore not to the point. The evidence of the opposition certainly establishes that there is indeed one other service provider with the same initials. However, I think that a single example is not enough to find that the registrar's practice in relation to three letter marks is not a good one. AEI has not been shown to have any meaning that renders it not capable of distinguishing and I do not agree with Mr Condon that the fact it coincides with the initials of the company name of its owner indicates that it lacks that capacity. In short, I do not think it is likely that many other insurance suppliers and brokers are likely to want to use the initials AEI. I therefore find that, in terms of s 41, there is no ground for rejection.