case_text: Further, it is clear that: • The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. • A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. • Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson & Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. • Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.


case_outcome: cited

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


case_title: King v Milpurrurru (1996) 66 FCR 474

case_text: As the conduct of the first respondent infringed the applicant's trade mark, in my view it is clear that Mr Cranitch had procured or directed that conduct, and accordingly is similarly liable for such infringement (cf also King v Milpurrurru (1996) 66 FCR 474). 69 In both written and oral submissions the applicant emphasised that, so far as concerned a cause of action under the TPA, its primary claim related to alleged breach of s 52. The applicant in the amended statement of claim claimed that the first respondent had, inter alia , contravened s 52 TPA on the basis of the same conduct on which the applicant alleged infringement of its trade mark. 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.


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


case_text: In order for the applicant to substantiate its case under s 53 , the applicant needs to establish that, by the use of the confusingly or deceptively similar name and mark ("bing"), the first respondent has represented that it has the necessary connection with the applicant such that a substantial number of members of the public will believe that the first respondent or its services has the sponsorship or approval of the applicant ( 10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299 at 301-302; Mark Foys Pty Ltd v TVSN (Pacific) [2000] FCA 1626 ; (2000) 104 FCR 61 at 77-78). 83 This finding is further supported by the absence of evidence before me that either the applicant or its products have a reputation from which the first respondent would be able to benefit (cf Australian Home Loans Ltd t/as Aussie Home Loans v Phillips [1998] FCA 181 ; (1998) 40 IPR 392 ; Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626). Other than evidence of a small number of inquiries temporarily confusing the applicant with the first respondent, there is no evidence that the applicant or its products and service are sufficiently well-known that a substantial number of members of the public, or even a substantial number of members of those sections of the public which are likely to engage either with the applicant or respondent, would be misled in terms of ss 53(c) or 53 (d) TPA.


case_text: In considering the liability of a director of a company for conduct of the company which has infringed the intellectual property rights of a third party, Lindgren J in Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 explained: The "procured or directed" test, sometimes referred to as the "authorised, procured or directed" test, focuses attention on the relationship between the director's intention and the particular corporate conduct which the law characterises as tortious. What seems to underlie this test is the notion that, necessarily, companies can engage in tortious conduct only through human beings, and, at least ordinarily, where a particular human being involved and responsible to an appropriate extent can be identified, he should, as a matter of policy, be liable... (at 243-244) 67 In my view it is clear on the evidence that: • Mr Cranitch is the managing director and Chief Executive Officer of the first respondent, and is in effective control of the first respondent; • Mr Cranitch did the relevant background searches prior to the first respondent using the word "bing" in relation to its services (Cranitch affidavit paras 47-55); • the decision to use "bing" in relation to the services of the first respondent was made by Mr Cranitch (Cranitch affidavit paras 42-46). 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.


case_text: In ascertaining whether software is "incidental" to its internet postal service as submitted by the first respondent, it is useful to test the first respondent's hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was "incidental" to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54). 102 Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.


case_text: In ascertaining whether software is "incidental" to its internet postal service as submitted by the first respondent, it is useful to test the first respondent's hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was "incidental" to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).


case_text: Had I found that the first respondent had engaged in passing off, then in order for tortious liability to be imposed on Mr Cranitch it would have been necessary to establish that Mr Cranitch had conferred on the first respondent his authority to engage in the relevant conduct: King v Milpurrurru 66 FCR 474 at 480-481, 494; Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 at 245-246; Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 at 73; Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 at 145.


case_outcome: distinguished

case_text: The respondents cite in support of their case MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 , both of which are authorities for the proposition that, when comparing services, one should focus primarily on a comparison of the totality of the two services rather than the individual aspects of those services (cf comments in Davison M, Monotti A and Wiseman L, Australian Intellectual Property Law (Cambridge University Press, 2008) p 105). This contention is superficially attractive, however in my view falters on closer examination. 54 In considering the principles articulated in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 I am of the view that the facts of the case before me do not support an application of those principles. 55 In MID Sydney 90 FCR 236 (so far as material in the present case) the appellant was the registered proprietor of the trade mark "The Chifley Tower", registered for services in class 36 described as " leasing of office and retail space; building and property management ". The respondents proposed to use the word "Chifley" in relation to hotel-related services. The Full Court accepted that the hotel business entailed "management" of hotel properties. However the Court did not accept that hotel-related services therefore were "property management" services within the meaning of class 36. As the Court observed: The conduct of an hotel business includes the accommodation of guests, the operation of restaurants and bars (including compliance with the liquor licensing law) and the provision of conference and business facilities and of other services normally offered by hoteliers. These activities cannot ordinarily be described as "property management services". To elaborate on what might be thought an obvious proposition about the ordinary use of language is often not profitable. But the ordinary meaning of property management services - and this is supported by Mr Garnett's evidence about his own business activities - would not encompass the occupation of a property under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that property. (at 242) 56 Later their Honours continued: It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. (at 242-243) 57 So far as concerns the software provided by the first respondent to its customers bearing the moniker "bing", in my view that software is a "good" which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are "services" within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236 , goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent's internet postal service. 60 In dismissing the appeal before it the Full Court observed that there was some force in the respondent's contention that the trial judge erred, favourably to the appellants, in finding that the respondent's use of "Sapient" was in relation to the same services as the services in respect of which the second appellant's trade mark was registered. Their Honours continued: While Sapient Australia provides instruction to its customers on how to use the software solutions it has specifically designed and implemented for them, the provision of that instruction is no more than an incident to the provision of the more broadly based consulting service. Sapient Australia is simply not engaged in the general activity of providing education and training in computer software. Its trade is quite different: see MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 565-8. In the light of the conclusion we have reached it is not necessary to consider whether we should depart from his Honour's finding on this point... (at 11) (emphasis added) 113 Mr Crowe SC submitted that, if the first respondent could not successfully rely on MID Sydney 90 FCR 236 prior to the provision of the undertaking, it could do so following the provision of the undertaking (cf TS 174 ll 28-37). In my view this is not strictly the case. As I have already observed, I do not consider that MID Sydney 90 FCR 236 applies because I consider that the software is not "incidental" to the provision of the internet postal service in the sense used in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1. However if the software provided by the first respondent does not bear the mark "bing", I do not see how the applicant's trade mark is infringed through the first respondent continuing to call itself "bing" in relation to provision of an internet postal service, which (according to Mr Cranitch's affidavit of 12 March 2008) uses a software called "Easymail". I do not accept that the applicant has a monopoly in the use of the name "bing" as a trade mark in respect of any service, including services which are not the subject of the applicant's registered trade mark, simply because the service requires a person using it to use any form of software. Such a proposition, in my view, takes the applicant's statutory monopoly beyond that sanctioned by the Act .


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


case_title: Munday v Carey (1905) 22 RPC 273

case_text: In this case the applicant has not established any damage by way of loss of sales, loss of reputation or, indeed, any impact whatsoever adverse or otherwise on the value of its trade mark or otherwise, from the conduct of the first respondent. I have already observed several times throughout this judgment that the activities and customer base of each of the applicant and the first respondent are completely removed from the other. There is scant evidence as to the reputation of the applicant, including in relation to its registered trade mark, and no evidence that its reputation has been affected. Any confusion between the services offered by the applicant and the first respondent was demonstrated to be short-lived and immediately resolved on inquiry. I consider this to be a case where the applicant has shown wrongful conduct by the respondents, but not substantiated any damage arising from that conduct. Accordingly, there is no evidence to warrant compensatory damages or even nominal damages in the absence of quantification of damages (cf The Sanitas Company Ltd v Condy (1887) 4 RPC 530 ; Munday v Carey (1905) 22 RPC 273 ; Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 at 302).


case_title: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26


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


case_outcome: followed

case_title: Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293


case_text: In order to substantiate a claim in passing off the applicant must show: 1) A misrepresentation. 2) Made by a trader in the course of trade. 3) To prospective customers of his or ultimate consumers of goods or services supplied by him. 4) Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and 5) Which causes actual damage to a business or goodwill of a trader by whom the action is brought or (in a quia timet action) will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742; cf Moorgate Tobacco Co Ltd v Philip Morris Ltd [1984] HCA 73 ; (1984) 156 CLR 414 at 443-444 and Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.) 86 The applicant is not required to establish proof of an intention to deceive as a necessary ingredient in the cause of action: Conagra [1992] FCA 159 ; 33 FCR 302 at 308. 87 Applying principles relevant to the tort of passing off to the facts of this case, for the following reasons I do not consider that the applicant has substantiated its claim in respect of passing off. 88 First, I have already found that the first respondent's use of the word "bing" did not constitute conduct in breach of ss 52 and 53 TPA. Similarly I do not consider that the first respondent's conduct amounted to a misrepresentation in terms of the applicant's claim for passing off. 89 Second, I do not consider that the evidence has established a sufficient reputation in the applicant in relation to the mark "BING!" such that a substantial number of persons would recognise relevant products or services under that mark as emanating from a single source rather I consider that evidence is scant as to the applicant's reputation in commerce including in relation to the Bing Trade Mark. 90 Third, in light of my finding as to the applicant's reputation, and the complete divergence between the businesses of the parties and their prospective customers, I do not consider that the applicant has established a likelihood of injury to its business from the use of "bing" by the first respondent.


case_text: Section 75B reflects the intention of Parliament to bring to account natural persons whose conduct brings about the contravention of the law by a corporation: Fencott v Miller [1983] HCA 12 ; (1983) 152 CLR 570 at 583; Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) FCA 1228 at [75] . However because s 75B imports the requirements of the criminal law ( Yorke v Lucas [1985] HCA 65 ; (1985) 158 CLR 661) , in order to establish accessorial liability pursuant to s 75B the applicant must establish the following: • in circumstances where the applicant contends that a person has aided and abetted the applicant must demonstrate that the relevant person was aware or ought to have been aware of the facts which gave rise to the contravention of the TPA, and intentionally participated in the contravention ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661) ; and • in circumstances where the applicant contends that a person was knowingly concerned in a contravention the applicant must demonstrate that the relevant person had actual knowledge of the essential elements of the contravention and intentional participation in it ( Yorke v Lucas [1985] HCA 65 ; 158 CLR 661). 98 In this case I consider that, had the applicant substantiated its claims against the first respondent with ss 52 and 53 TPA, Mr Cranitch similarly would have been personally liable pursuant to s 75B. I form this view because: • the applicant has pleaded actual knowledge by Mr Cranitch of the relevant contraventions of the TPA in the Amended Statement of Claim; • earlier in this judgment I described the relationship of Mr Cranitch to the first respondent and his management role with the first respondent. In my view it is clear that Mr Cranitch, in his role as managing director, secretary and Chief Executive Officer of the first respondent, and in effective control of the first respondent through an associated company, was the ultimate decision-maker of the first respondent and to that extent had actual knowledge through his personal involvement in conduct of the first respondent (cf Red Bull Australia (2001) FCA 1228 at [75] ). 99 As is clear from para 16A Amended Statement of Claim the applicant claims that the conduct of the first respondent had been carried out by Mr Cranitch. In para 16C Amended Statement of Claim the applicant claims further that Mr Cranitch was a person "involved in the said passing off". The applicant submitted that the activities of Mr Cranitch in: • making the decision to change the brand from "EasyMail" and looking for a new name; • conducting all negotiations with the seller of bing.com; • conducting background inquiries which revealed the existence of the applicant's registered trade mark; formed the basis for a finding that Mr Cranitch was jointly and severally liable with the first respondent. 100 Second, the applicant has pleaded that the conduct of the first respondent took place at the direction of and with the authority of Mr Cranitch, pursuant to a plan or design devised by Mr Cranitch (para 16A Amended Statement of Claim), and that Mr Cranitch has, inter alia , been knowingly concerned in or a party to the conduct of the first respondent (para 16B Amended Statement of Claim). Accordingly the pleadings support a claim by the applicant alleging liability of Mr Cranitch in respect of tortious conduct for which the first respondent is liable.


case_title: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365


case_text: The inquiry in s 120(1) as to whether use of a trade mark concerns goods or services in respect of which a trade mark is registered is simple, involving a comparison between the registered mark used notionally, fairly and normally in respect of any goods and services, with the alleged infringer's actual use. Resolution of the inquiry is a question of fact: Re Spillers Ltd's Trade Mark Application (1953) 70 RPC 51; cf Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596.


case_text: The applicant conceded in this case that it had not lead evidence establishing any actual loss of sales revenue arising from the conduct of the first respondent, but instead claimed damages "at large" as awarded in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Lt d [2008] FCA 74. Damages sought by the applicant were in the sum of $50,000, representing: • damages on the basis of notional royalty; • diminution in the value of the applicant's trade mark; and • loss of reputation. 122 The applicant submitted in this case that factors of assistance to the Court in determining an award of damages at large included: • the amount of time and effort the applicant had spent developing its reputation; • that the respondent had had the benefit of using the applicant's asset, namely the Bing trade mark; • the fact that the respondent had paid $25,000 for the www.bing.com domain name, which was an unlawful use of the applicant's property; and • the fact that the first respondent pays the owner of the copyright in the first respondent's software the sum of $300,000 per annum. 125 In claiming that damages "at large" should be awarded the applicant relied in part on the decision of Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74. However: • I consider that Review Australia [2008] FCA 74 is distinguishable from this case. In Review Australia Jessup J accepted that the market presence of the respondents' product did bring about some minor dilution of the applicant's reputation for originality (at [30]). In my view there is some evidence of minor and short-lived confusion of a small number of consumers, but no evidence that there has been any dilution of the applicant's reputation in any respect by the market presence of the first respondent. There is, for example, no evidence (unlike in Review Australia ) that any value placed by the applicant on its goods and services has been diminished by the activities of the respondents. I make this observation particularly in light of the completely different activities of the parties and the markets in which they operate. • In the absence of demonstration by the applicant of any damage, the principles articulated by the Full Court in Enzed Holdings [1984] FCA 373 ; 57 ALR 167 which I have outlined earlier in this judgment militate against an award of damages. • Although the applicant relies on evidence of Associate Professor Alpert to the effect that, on the balance of probabilities, the use by the respondents of the mark "bing" has caused a diminution in the value of the applicant's trade mark, I accord the witness' evidence no weight in relation to this issue because: o I am not satisfied that Associate Professor Alpert is an expert on valuation of trademarks or intellectual property law. Associate Professor Alpert's expert report dated 21 December 2007 concerned an overview of key issues from a marketing/branding/consumer behaviour perspective, which area appears to be his area of expertise (Introduction para (c) to report); o considering the witness' expert report and the contents thereof, I draw the inference that, prior to the hearing, he had not directed his mind to the question of monetary valuation of the trade mark in question. Indeed in referring to "brand values" in his report, Associate Professor Alpert appeared to equate the term with brand aspects rather than any financial concept (note, for example, TS 137 ll 34-44, TS 138 ll 1-4); o Associate Professor Alpert's evidence in relation to possible diminution in the value of the applicant's trade mark was theoretical, highly qualified, and not particularly helpful. I refer in particular to: ▪ the fact that, in response to a question from Mr Franklin SC as to whether the witness had any experience in assessing the value of the trade mark, the witness replied: Not quantitatively, but in what we teach, marketing branding is essential, and we stress the value of the brand. (TS 132 ll 4-6) ▪ the witness merely agreed that he was able to give the Court "opinions as to the general proposition that a brand is a valuable asset" (TS 132 ll 8-10) and that "these situations can be complex" (TS 132 ll 13-15); ▪ in response to a question from Mr Franklin SC as to whether Associate Professor Alpert was able to give the Court expert advice on possible causes of diminution and the value of brand, the witness replied: "I'd like to think so, yes" (TS 132 ll 18); ▪ the witness merely agreed that, assuming that one has a valuable brand that is protected by a registered trademark or a de facto monopoly, one of the reasons that that value might diminish is if someone uses the same or a similar brand in the same market (TS 132 ll 30-33). In noting this evidence I intend no criticism of the witness who was endeavouring to be of assistance. However, in my view, the evidence raises not only serious questions as to the witness' expertise in relation to the issue of value of the relevant brand, but also serious doubts as to its probity.


case_text: The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1 at 11. 46 In reply, the respondents submitted in summary: • The applicant fixes upon the fact that the first respondent provides, as part of its postal service, software to customers. To accept the applicant's case would be to accept that it has a monopoly in the use of the name "bing" as a trade mark in respect of any service which provides software even though the provision of that software is ancillary to the actual service acquired by customers. This approach has been rejected by the courts. • Although the first respondent is actually engaged in the provision of postal services , the applicant is trying to elevate those services to that of provision of computer software, relying upon the incidental use of that software in the conduct of the first respondent's business. That is an incorrect approach and contrary to binding authority on this Court. • This case is very similar to that in SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1. • The applicant is trying to distract the court by the fact that the services or goods offered by the parties might have some features in common. The Court should not be distracted by the fact that, in part, the services or goods provided by the first respondent involves the provision of software to its customers. • In any event, on the morning of the second day of the trial the first respondent provided an open undertaking to the Court that it would not use the word "bing" either by itself or in combination with any other words in directly referring to the software it provides to its customers. 50 The respondents cite in support of their case MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 , both of which are authorities for the proposition that, when comparing services, one should focus primarily on a comparison of the totality of the two services rather than the individual aspects of those services (cf comments in Davison M, Monotti A and Wiseman L, Australian Intellectual Property Law (Cambridge University Press, 2008) p 105). This contention is superficially attractive, however in my view falters on closer examination. 54 In considering the principles articulated in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 I am of the view that the facts of the case before me do not support an application of those principles. 58 The respondents also submitted that the facts of this case parallel those in SAP Australia [1999] FCA 1821 ; 169 ALR 1. In SAP Australia [1999] FCA 1821 ; 169 ALR 1 the first appellant, a subsidiary of a German company (the second appellant), had traded in Australia since 1989, and distributed computer software products of the second appellant in Australia. The first appellant had also established a training college under the name "Sapient College". The second appellant had registered in Australia the trade marks SAP and SAPIENT COLLEGE in respect of Class 41: Education; providing of training; cultural activities; the foregoing including post graduate, further and advanced education and training in business, business management, management, business administration, computers, computer peripherals and computer software, information technology, intellectual property, telecommunications, science and technology, medical technology and science, technology management, stress management and therapy, personal development, lifestyle, relaxation and remedial techniques. 59 The respondent was incorporated in Australia in 1998 and provided custom-designed computer systems for clients and some ancillary training. The appellants alleged infringement by the respondent of the registered trade marks, misleading or deceptive conduct in contravention of s 52 TPA, and passing off. The action at first instance was dismissed. 61 Where the analogy between these proceedings and SAP Australia [1999] FCA 1821 ; 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that "broadly based consulting services" could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, the first respondent has some clients who do not use the software, but send to the first respondent documents in the form of PDF files, word documents and publisher documents (TS 71 ll 40-41). The software and associated services are an important part of the first respondent's internet postal service. 70 Relevant principles in the context of claimed breach of s 52 , as explained by the Full Court in SAP Australia [1999] FCA 1821 ; 169 ALR 1 at 14, include the following: • Initial confusion is sufficient and it is not necessary for confusion to induce or be likely to induce a transaction. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded. • However, each case depends on its own facts and conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error (cf Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [56] ; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [41] ). • Characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a notional cause and effect relationship between the conduct and putative consumer's state of mind. 113 Mr Crowe SC submitted that, if the first respondent could not successfully rely on MID Sydney 90 FCR 236 prior to the provision of the undertaking, it could do so following the provision of the undertaking (cf TS 174 ll 28-37). In my view this is not strictly the case. As I have already observed, I do not consider that MID Sydney 90 FCR 236 applies because I consider that the software is not "incidental" to the provision of the internet postal service in the sense used in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1. However if the software provided by the first respondent does not bear the mark "bing", I do not see how the applicant's trade mark is infringed through the first respondent continuing to call itself "bing" in relation to provision of an internet postal service, which (according to Mr Cranitch's affidavit of 12 March 2008) uses a software called "Easymail". I do not accept that the applicant has a monopoly in the use of the name "bing" as a trade mark in respect of any service, including services which are not the subject of the applicant's registered trade mark, simply because the service requires a person using it to use any form of software. Such a proposition, in my view, takes the applicant's statutory monopoly beyond that sanctioned by the Act .


case_text: Further, it is clear that: • The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. • A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. • Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson & Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. • Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.


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


case_text: To the extent that the applicant contends that Mr Cranitch is jointly liable with the first respondent for passing off, I would not consider the claim of the applicant substantiated by the evidence even had I considered the activities of the first respondent constituted passing off. Although it was clear from the evidence that Mr Cranitch was significantly involved in the activities of the first respondent and the development of the first respondent's trade mark, all activities of the first respondent in connection with its trade mark were carried out by the first respondent. I can identify no basis for asserting that Mr Cranitch himself passed off the first respondent's services as being those of the applicant or as being in any other way associated with the applicant. Involvement by Mr Cranitch in relation to management of the first respondent, and Mr Cranitch's involvement in decision-making in relation to development of the first respondent's "bing" trade mark, do not, in my view, amount to passing off (cf observations of the Full Court in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd [2002] FCAFC 30 ; (2002) 55 IPR 354 at 399).


case_title: The Sanitas Company Ltd v Condy (1887) 4 RPC 530


case_text: In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 , Windeyer J considered "substantial identity" in terms of trade marks. His Honour said: In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody [1945] HCA 49 ; (1945) 70 CLR 100 per Latham CJ...and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered. 39 The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows: On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him... It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)...(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances. 40 Further, it is clear that: • The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 380. • A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15 ; (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 ; (1999) 93 FCR 365 at 382. • Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson & Johnson v Kalnin [1993] FCA 210 ; (1993) 114 ALR 215 at 220. • Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.


case_title: Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596


case_text: In considering the Bing Trade Mark and the respondents' varied uses of "bing" side by side, an obvious similarity is that the trade marks of both the applicant and the first respondent include the word "bing". It is also not in dispute that both parties pronounce the word "bing" in the same way, which is relevant in considering the similarity or otherwise of the marks (Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 121 ALR 191 at 229).


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


case_text: The first respondent's undertaking obviously does not address any past conduct which may have infringed the applicant's trade mark. However, other than continuing to call itself "bing" in relation to provision of internet postal services where the mark "bing" does not appear on any software or in any documentary references to software, and which in my view constitutes neither infringement of the applicant's trade mark nor misrepresentation in terms of the TPA or passing off, the applicant has not demonstrated conduct of the first respondent having an on-going effect for which the undertaking provided is not an answer in terms of the applicant's contentions regarding use of the trade mark and software (contrast, for example, Yeatman v L Homberger & Co (1912) 29 RPC 645). I consider that the terms of the undertaking provided by the first respondent are adequate to protect any rights of the applicant has in relation to this matter.


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


case_text: In order for the applicant to substantiate its case under s 53 , the applicant needs to establish that, by the use of the confusingly or deceptively similar name and mark ("bing"), the first respondent has represented that it has the necessary connection with the applicant such that a substantial number of members of the public will believe that the first respondent or its services has the sponsorship or approval of the applicant ( 10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299 at 301-302; Mark Foys Pty Ltd v TVSN (Pacific) [2000] FCA 1626 ; (2000) 104 FCR 61 at 77-78).


case_text: I also note that in Jennings v Credit Corp Australia Pty Ltd [2000] NSWSC 210 ; (2000) 48 NSWLR 709, an assignment of the legal ownership of a debt was made after the expiry of the limitation period. The Court permitted the substitution of the new legal owner. 49 The question is whether Errol Nominees, if it were the trustee, is added or substituted as a party. It is not uncommon for trustees to be changed. In ordinary circumstances it should not follow that questions of limitation thereby arise. If in such a case, the new trustee were added rather than substituted, the beneficiaries would lose their rights to bring proceedings. Consistent with the provisions of the Trustee Act and the authorities I have cited, I am of the view that the amendment sought is best characterised as a substitution. 50 The fact, however, is that the condition that gives rise to amendment under O 6 r 10(2) has not occurred as there has not yet been a passing of interest by assignment or otherwise. The occasion has not arisen to make the order for substitution sought.


case_text: As set out in Vintage Developments Pty Limited v GHD Pty Limited [2006] FCA 531 at [10] (' Vintage (No 1)' ), the further amended statement of claim was filed with the leave of the Court, which leave, obtained in November 2005 and prior to the expiry of the limitation period, did not extend to joining Mr Johnston. I gave leave for that joinder on 11 May 2006 and no further order was sought from the applicants as to leave to file a second further amended application and statement of claim. 30 The submission now is that, despite the decision in Vintage (No 1) , this is the first amendment to the application and statement of claim to effect that joinder, so that the proposed second further amended statement of claim discloses a new (and statute barred) cause of action as against Mr Johnston. 31 In Vintage (No 1) , I granted leave to join Mr Johnston to the proceedings. That is, he was joined to the proceedings as pleaded in the pleadings filed on 2 December 2005. Those pleadings constitute the original claim against him. The circumstances, put shortly, were that an amended application and further amended statement of claim were filed within the limitation period naming Mr Johnston as a respondent. Leave that had been given to file the amended documents did not extend to leave to include Mr Johnston as a respondent, nor to include allegations or orders against him. Many of the arguments put by Ms Richards were canvassed in Vintage (No 1) . It is the case, as I noted at [24] and [27], that leave was not sought further to amend the amended statement of claim to permit the pleading against Mr Johnston, as pleaded in the further amended statement of claim. However, as I discussed at [33], the further amended statement of claim filed within time may be considered as a fresh pleading as against Mr Johnston. It was put in Vintage (No 1) that Mr Johnston should not be joined because it was a futility as the limitation period would apply because the proceedings had not commenced on 2 December 2005 but would only commence on the date of joinder. I rejected that submission.


case_text: The rights of Errol Nominees do not extend back to the date on which proceedings were commenced (cf Worrell v Westpac Banking Corporation (1994) 51 FCR 304). Indeed the rights of the proposed party have not yet come into existence. What is proposed, however, is that the rights of the new trustee will substitute for the rights of the existing trustee, which do extend back to the date on which proceedings were commenced. 45 A new trustee may by registered deed be appointed in place of a trustee (s 6(1) Trustee Act 1925 (NSW) (' Trustee Act ')). Section 6(8) provides that a new trustee appointed under this section may in all respects act as if the new trustee had been originally appointed a trustee by the instrument creating the trust. Errol Investments submits that this is reflected in O 6 r 11(2) which should therefore be applied.


case_text: In Yorkshire Regional Health Authority v Fairclough Building Ltd [1996] 1 All ER 519, the United Kingdom Court of Appeal considered the meaning of a "new claim" in s 35(2) of the Limitation Act 1980 (UK) and O 15 r 7 of the Rules of the Supreme Court (UK) as those provisions then provided. Order 15 r 7 relevantly provided: '(1) Where a party to an action dies or becomes bankrupt but the cause of action survives, the action shall not abate by reason of the death or bankruptcy. (2) Where at any stage of the proceedings in any cause or matter the interest or liability of any party is assigned or transmitted to or devolves upon some other person, the Court may, if it thinks it necessary in order to ensure that all matters in dispute in the cause or matter may be effectively and completely determined and adjudicated upon, order that other person to be made a party to the cause or matter and the proceedings to be carried on as if he had been substituted for the first mentioned party.' 47 The Court observed that the rule of court, which is cast in similar but not identical terms to O 6 r 10 of the Rules contains no reference to limitation and commented '[t] his is as it should be, since the circumstances in which the rule may be invoked do not give rise to any question of limitation ' (at 523). The Court recognised that the new party is substituted because he or she has succeeded to a claim or liability already represented in the action and sues or is sued in respect of the existing cause of action. It concluded that ' the expiry of the limitation period is completely irrelevant ' (at 523). While the English O 15 r 7 specifically provided for ' the proceedings to be carried on as if he had been substituted for the first mentioned party ' and those words are not present in O 6 r 10 of the Rules, the logic of the Court of Appeal is persuasive.


case_text: The Trust has been wholly successful on this application, which the Liquidator opposed. I do not see that there is any circumstance sufficient to avoid the usual consequence that costs follow the event: Ruddock v Vadarlis (No 2) (2001) 115 FCR 229 at 234. 4 The critical argument which led to the Trust's success was that its obligation to pay the Liquidator's costs and remuneration out of the Fund, as appearing in the Order of 13 December 2001 as later varied, came not from the Corporations Act but from the earlier Tasmanian legislation the Legal Profession Act 1993 (Tas), s 108(2)(a)(iii). Thus no question of inconsistency under s 109 of the Constitution arose. Whether or not that point was more fully argued by counsel on behalf of the Attorney-General is, in the circumstances of this case, irrelevant. The hearing did not proceed beyond a day. The point was certainly made by counsel for the Trust. If more than one party has an interest in advancing a particular argument, there is obvious sense in counsel for one party carrying the burden of fully developing the argument rather than have repetition and duplication. 5 Likewise, given the length of the hearing, there is no reason to penalise the Trust insofar as its counsel advanced arguments which did not find favour or proved unnecessary to decide. 6 Moreover, the Liquidator, in reports to investors dated 28 August 2007 and 28 March 2008 appeared to accept that the 2007 legislation (against which he unsuccessfully lobbied) "would remove the requirement of the Solicitors' Trust to pay my accounts". Nevertheless he put the Trust to the expense of the present application. It is not reasonable for the Liquidator now to adopt, as was put in his submissions, the neutral and "clarify(ing)" role of a contradictor. If the Liquidator had succeeded, there would have been a tangible benefit for the investors whose interests he represented. 7 Turning to the form of the orders, in my earlier judgement I overlooked the order made on 1 April 2008, which further amended the 2001 Order. The April 2008 Order, which was made shortly before the 2007 legislation came into force on 7 April 2008, had the effect that if, and to the extent that, after that date payment of the Liquidator's costs and expenses was not made from the Guarantee Fund, the Liquidator should be paid from "the proceeds of the winding up order and/or such sources as may be available". The parties agree that my order should be varied so as to remove the reference to the Guarantee Fund. I certify that the preceding seven (7) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey. Associate: Dated: 26 November 2008 Solicitors for the Solicitors' Trust: Page Seager Solicitors for the Liquidator: Toomey Maning & Co Counsel for the Intervener: F Neasey Solicitors for the Intervener: Office of the Director of Public Prosecutions Date of Final Submissions: 3 November 2008 Date of Judgment: 26 November 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1774.html


case_outcome: referred to

case_text: applicant made the following submissions on the effect of the s 195A visa on the proceedings: (1) The grant of the s 195A visa on 12 May 2009, removed the controversy which underlay proceedings NSD 17/2009 and SAD 52/2009. The applicant now has a visa and resides freely in the migration zone as a 'lawful non-citizen'. There is no need for an order in the nature of mandamus. (2) The basis for declaratory relief has also fallen away. A suit for declaratory relief would only result in a declaration that the applicant holds a second visa; or a determination (or declaration) that he is not in possession of a second visa. Neither outcome will alter any legal right or liability of the applicant, for he is now a lawful non-citizen. (3) The relief sought in the application is now futile. In such cases, the Court exercises its discretion to refuse relief ( Aala at [59]; SZBYR v Minister for Immigration & Citizenship [2007] HCA 26 ; (2007) 235 ALR 609 at [29] ), and it is responsible practice for an applicant to desist from pursuing such relief. (4) At the directions hearing on 3 June 2009, the Minister appeared to invite the applicant to clarify his TP visa status, suggesting that his s 195A visa was only temporary. The applicant also has no interest in acceding to such a request; he does not favour the possession of a TP visa over his current s 195A visa. It has been, and remains, common ground that the applicant fails the 'character test' under s 501 of the Act ( Pull v Minister for Immigration & Multicultural & Indigenous Affairs [2007] FCA 20). Any TP visa held by the applicant would be vulnerable to a new cancellation on this ground. Even if he did have such an interest, such an interest is insufficient to constitute a matter in federal jurisdiction ( Griffith University v Tang [2005] HCA 7 ; (2005) 221 CLR 99 at [90] ).


case_text: the costs issue, the applicant referred the Court to the following principles in a case of discontinuance for futility and their application in the present case: (1) When a party, for its own reasons, discontinues a proceeding with leave pursuant to O 22 r 2(1)(d) of the Rules, the respondent is not automatically entitled to have the applicant pay his or her costs. Rather, costs are in the discretion of the Court under s 43(2) of the Federal Court of Australia Act 1976 (Cth) ( Inground Constructions Pty Ltd v Federal Commissioner of Taxation (1994) 27 ATR 513 ; Sullivan v Secretary, Department of Defence [2005] FCA 786 at [13] (Stone J)). The 'conduct of the parties in the matter and the reasons for the discontinuance can bear heavily on the exercise of the discretion as to costs' ( O'Neill v Mann [2000] FCA 1680 at [13] (Finn J); Sullivan at [13] (Stone J)). (2) A fortiori the significance of discretionary considerations in a case where the discontinuance is merely the procedural vehicle to terminate the dispute, and any futility in the proceedings has not been brought about by an external event, or the applicant's change of heart (cf., Smith v Airservices Australia [2005] FCA 997 ; (2005) 222 ALR 464 at [58] [59]), but by the opposing party's change in position. (3) Minister for Immigration and Ethnic Affairs; ex parte Lai Qin [1997] HCA 6 ; (1997) 186 CLR 622 at 624 625 suggests a structure for the exercise of a broad discretionary power. It does not lay down a rule which substitutes for the discretion of the Court. The critical considerations were stated by McHugh J as follows: In an appropriate case, a court will make an order for costs even when there has been no hearing on the merits and the moving party no longer wishes to proceed with the action. The court cannot try a hypothetical action between the parties. To do so would burden the parties with the costs of a litigated action which by settlement or extra-curial action they had avoided. In some cases, however, the court may be able to conclude that one of the parties has acted so unreasonably that the other party should obtain the costs of the action. In administrative law matters, for example, it may appear that the defendant has acted unreasonably in exercising or refusing to exercise a power and that the plaintiff had no reasonable alternative but to commence a litigation. Thus, for example, in R v Gold Coast City Council ; Ex parte Raysun Pty Ltd [[1971] QWN 13], the Full Court of the Supreme Court of Queensland gave a prosecutor seeking mandamus the costs of the proceedings up to the date when the respondent council notified the prosecutor that it would give the prosecutor the relief that it sought. The Full Court said that the prosecutor had reasonable ground for complaint in respect of the attitude taken by the respondent in failing to consider the application by the prosecutor for approval of road and drainage plans. Moreover, in some cases a judge may feel confident that, although both parties have acted reasonably, one party was almost certain to have succeeded if the matter had been fully tried... But such cases are likely to be rare. If it appears that both parties have acted reasonably in commencing and defending the proceedings and the conduct of the parties continued to be reasonable until the litigation was settled or its further prosecution became futile, the proper exercise of the cost discretion will usually mean that the court will make no order as to the cost of the proceedings. This approach has been adopted in a large number of cases. (4) Without a hearing on the merits, the Court is unable to be guided by the general rule as to costs. The difficulty cannot be resolved by embarking on a hypothetical consideration of which party would have been successful had the action proceeded. But the Court may consider the reasonableness of the conduct of the respective parties until the discontinuance ( Smith v Airservices at [46] [47]).


case_text: to the applicant, the Minister incorrectly fuses (i) the question whether the applicant is a lawful non-citizen, being a 'non-citizen in the migration zone who holds a visa that is in effect' (s 13 of the Act (emphasis added; see definition of 'visa': s 29)), with (ii) the discrete, and now futile, question whether the applicant holds a particular visa, namely a TP visa. The applicant says that the first question is answered completely by the grant of the s 195A visa; the second question is futile. The applicant does not require a declaration regarding his possession of a second visa: 'The Court does not act in vain': Malloch v Aberdeen Corporation [1971] 1 WLR 1578 at 1595 per Lord Wilberforce; cited in Re Refugee Review Tribunal; ex parte Aala [2000] HCA 57 ; (2000) 204 CLR 82 at [58] per Gaudron and Gummow JJ.


case_outcome: considered

case_text: 9 March 2009, the applicant's solicitors wrote to the Minister's solicitors in the following terms: We refer to the above proceedings in respect of which we have recently accepted instructions to act for Mr Pull. We confirm that we will shortly be filing a Notice of Appearance in the proceedings. We are instructed to put you on notice that Mr Pull intends to challenge the constitutional validity of Item 7 of Schedule 4 to the Migration Legislation Amendment Act (No. 1) 2008 ( the amending statute ). Mr Pull will also contend that the invalidity of Item 7 renders invalid the visa cancellation decision of 2 June 2005 ( the decision ) made by the delegate of the Minister for Immigration & Citizenship ( the Minister ). Mr Pull has been detained as a result of the change in his legal status flowing from the decision. It is therefore reasonable for him to bring these proceedings to have the decision quashed. If Mr Pull is forced to move forward with these proceedings, considerable time and effort will be incurred in, inter alia, the preparation of pleadings, submissions and notices pursuant to s78B of the Judiciary Act 2003 (Cth). The validity of the decision is the subject matter of these proceedings. We therefore ask that, in the event that the Minister intends to move away from the decision whether through revocation or the consideration of a new cancellation decision or otherwise you notify us of this intention within 7 days of the date of this letter. In order that you may better understand Mr Pull's position, we will provide you with pleadings that state the intended grounds of review in advance of the directions hearing on Wednesday 11 March 2009. We invite the Minister to revoke the decision and release Mr Pull from detention. In the event that we do not receive such a notification and the Minister later reconsiders the decision, our client intends to rely on this letter on the question of costs under the principles stated in Minister for Immigration and Ethnic Affairs; ex parte Lai Qin [1997] HCA 6 ; (1997) 186 CLR 622. On 27 March 2009, the applicant's solicitors sent an email letter to the Minister's solicitors in the following terms: Basis of Mr Pull's detention We note your email confirming that Mr Pull was originally detained under section 189(1) of the Migration Act 1958 (Cth), and is now detained under section 196 of the Act. Given this confirmation, we require no further documents regarding his legal status at this time. Costs letter Also, we note that we have not received any response to our letter dated Friday 9 March 2009 (Our Letter). We understand that you received Our Letter on Monday 12 March 2009. As noted in Court on Wednesday 14 March 2009, Mr Pull still puts his case for release from detention on the basis of the constitutional invalidity of the Migration Legislation Amendment Act (No. 1) 2008 . We have therefore proceeded in the preparation of our case on the basis that the Minister for Immigration and Citizenship ( Minister ) intends to defend fully the validity of Mr Pull's detention. In the event that there is any dispute about costs, we will rely on this correspondence. On 31 March 2009, the Minister's solicitors responded as follows: In response to your letter dated 9 March 2009 the respondent does not concede that Item 7 of Schedule 4 to the Migration Legislation Amendment Act (No. 1) 2008 is invalid. As, in our client's view, the original decision made on 2 June 2005 to cancel your client's visa remains operative and authorises your client's continuing detention, the question of revocation or a need to make a further decision to cancel, as suggested at paragraph 4 of your letter, does not arise. We look forward to receiving your client's Amended Application. On the costs issue, the applicant referred the Court to the following principles in a case of discontinuance for futility and their application in the present case: (1) When a party, for its own reasons, discontinues a proceeding with leave pursuant to O 22 r 2(1)(d) of the Rules, the respondent is not automatically entitled to have the applicant pay his or her costs. Rather, costs are in the discretion of the Court under s 43(2) of the Federal Court of Australia Act 1976 (Cth) ( Inground Constructions Pty Ltd v Federal Commissioner of Taxation (1994) 27 ATR 513 ; Sullivan v Secretary, Department of Defence [2005] FCA 786 at [13] (Stone J)). The 'conduct of the parties in the matter and the reasons for the discontinuance can bear heavily on the exercise of the discretion as to costs' ( O'Neill v Mann [2000] FCA 1680 at [13] (Finn J); Sullivan at [13] (Stone J)). (2) A fortiori the significance of discretionary considerations in a case where the discontinuance is merely the procedural vehicle to terminate the dispute, and any futility in the proceedings has not been brought about by an external event, or the applicant's change of heart (cf., Smith v Airservices Australia [2005] FCA 997 ; (2005) 222 ALR 464 at [58] [59]), but by the opposing party's change in position. (3) Minister for Immigration and Ethnic Affairs; ex parte Lai Qin [1997] HCA 6 ; (1997) 186 CLR 622 at 624 625 suggests a structure for the exercise of a broad discretionary power. It does not lay down a rule which substitutes for the discretion of the Court. The critical considerations were stated by McHugh J as follows: In an appropriate case, a court will make an order for costs even when there has been no hearing on the merits and the moving party no longer wishes to proceed with the action. The court cannot try a hypothetical action between the parties. To do so would burden the parties with the costs of a litigated action which by settlement or extra-curial action they had avoided. In some cases, however, the court may be able to conclude that one of the parties has acted so unreasonably that the other party should obtain the costs of the action. In administrative law matters, for example, it may appear that the defendant has acted unreasonably in exercising or refusing to exercise a power and that the plaintiff had no reasonable alternative but to commence a litigation. Thus, for example, in R v Gold Coast City Council ; Ex parte Raysun Pty Ltd [[1971] QWN 13], the Full Court of the Supreme Court of Queensland gave a prosecutor seeking mandamus the costs of the proceedings up to the date when the respondent council notified the prosecutor that it would give the prosecutor the relief that it sought. The Full Court said that the prosecutor had reasonable ground for complaint in respect of the attitude taken by the respondent in failing to consider the application by the prosecutor for approval of road and drainage plans. Moreover, in some cases a judge may feel confident that, although both parties have acted reasonably, one party was almost certain to have succeeded if the matter had been fully tried... But such cases are likely to be rare. If it appears that both parties have acted reasonably in commencing and defending the proceedings and the conduct of the parties continued to be reasonable until the litigation was settled or its further prosecution became futile, the proper exercise of the cost discretion will usually mean that the court will make no order as to the cost of the proceedings. This approach has been adopted in a large number of cases. (4) Without a hearing on the merits, the Court is unable to be guided by the general rule as to costs. The difficulty cannot be resolved by embarking on a hypothetical consideration of which party would have been successful had the action proceeded. But the Court may consider the reasonableness of the conduct of the respective parties until the discontinuance ( Smith v Airservices at [46] [47]). The Minister referred to the Court's broad discretionary power in relation to costs afforded by s 43 of the Federal Court Act; noted that the discretion should be exercised judicially and referred to the same passage in the reasons of McHugh J in Lai Qin referred to by the applicant and recited in [26(3)] above. It lay at the heart of the Minister's submissions that the Minister's decision to grant the applicant a s 195A visa did not render the declaratory relief he sought in NSD 17/2009 'moot'. According to the Minister, the issue of whether or not the applicant is in fact the holder of a TP visa is a live issue in that there remains a real and ongoing dispute between the parties as to the entitlement of the applicant to remain in Australia beyond the life of the s 195A visa granted to him; while the urgency of the resolution of that dispute is no longer present, that fact does not render the dispute between the parties moot. The Minister submitted that the power he ultimately exercised to grant the applicant a s 195A visa is a 'non-compellable' power and the failure of the Minister to exercise that power by any particular date, or at all, can never be unreasonable in the relevant sense.


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


case_text: to the applicant, the Minister incorrectly fuses (i) the question whether the applicant is a lawful non-citizen, being a 'non-citizen in the migration zone who holds a visa that is in effect' (s 13 of the Act (emphasis added; see definition of 'visa': s 29)), with (ii) the discrete, and now futile, question whether the applicant holds a particular visa, namely a TP visa. The applicant says that the first question is answered completely by the grant of the s 195A visa; the second question is futile. The applicant does not require a declaration regarding his possession of a second visa: 'The Court does not act in vain': Malloch v Aberdeen Corporation [1971] 1 WLR 1578 at 1595 per Lord Wilberforce; cited in Re Refugee Review Tribunal; ex parte Aala [2000] HCA 57 ; (2000) 204 CLR 82 at [58] per Gaudron and Gummow JJ. The applicant made the following submissions on the effect of the s 195A visa on the proceedings: (1) The grant of the s 195A visa on 12 May 2009, removed the controversy which underlay proceedings NSD 17/2009 and SAD 52/2009. The applicant now has a visa and resides freely in the migration zone as a 'lawful non-citizen'. There is no need for an order in the nature of mandamus. (2) The basis for declaratory relief has also fallen away. A suit for declaratory relief would only result in a declaration that the applicant holds a second visa; or a determination (or declaration) that he is not in possession of a second visa. Neither outcome will alter any legal right or liability of the applicant, for he is now a lawful non-citizen. (3) The relief sought in the application is now futile. In such cases, the Court exercises its discretion to refuse relief ( Aala at [59]; SZBYR v Minister for Immigration & Citizenship [2007] HCA 26 ; (2007) 235 ALR 609 at [29] ), and it is responsible practice for an applicant to desist from pursuing such relief. (4) At the directions hearing on 3 June 2009, the Minister appeared to invite the applicant to clarify his TP visa status, suggesting that his s 195A visa was only temporary. The applicant also has no interest in acceding to such a request; he does not favour the possession of a TP visa over his current s 195A visa. It has been, and remains, common ground that the applicant fails the 'character test' under s 501 of the Act ( Pull v Minister for Immigration & Multicultural & Indigenous Affairs [2007] FCA 20). Any TP visa held by the applicant would be vulnerable to a new cancellation on this ground. Even if he did have such an interest, such an interest is insufficient to constitute a matter in federal jurisdiction ( Griffith University v Tang [2005] HCA 7 ; (2005) 221 CLR 99 at [90] ).


case_text: the decision of a Full Court of this Court in Sales v Minister for Immigration and Citizenship [2008] FCAFC 132 ; (2008) 171 FCR 56 , the decision to cancel the applicant's TP visa was ineffective for reason that at the time of cancellation it was not authorised by s 501(2) of the Act. As a result, the applicant was released from detention on, or shortly after, 21 July 2008. Schedule 4 of the Migration Legislation Amendment Act (No. 1) 2008 (Cth), which took effect on 19 September 2008, amended the Act to authorise a cancellation of a TP visa under s 501 of the Act and to validate previous decisions to cancel TP visas that were held to be unauthorised in the Full Court's decision in Sales. By letter dated 29 October 2008, the applicant was informed that as a consequence of the legislative amendments made under the Migration Legislation Amendment Act (No. 1), the decision to cancel his TP visa was validated, and he was liable to be detained under s 189 of the Act and removed from Australia. The applicant was arrested on or around 18 November 2008 and taken into detention. On 8 January 2009, the applicant commenced a proceeding under s 39B of the Judiciary Act (NSD 17/2009) seeking relief in the nature of habeas corpus ordering his release from detention and various other orders, including a declaration that he is a lawful non-citizen, and injunctions, including an injunction preventing the respondent from giving effect to the purported cancellation of his visa and removing him from Australia. The other significant component of the overall relief sought by the applicant in proceeding NSD 17/2009 was the declaratory relief that the applicant was a 'lawful non-citizen' by reason that he was the holder of a TP visa which had not been cancelled ( Sales ), even with the aid of amending legislation purporting to retrospectively validate the cancellation, because that legislation was invalid. The Minster's submission that the declaratory relief sought by the applicant was not rendered 'moot' by the grant of the s 195A visa is, in a juridical sense, correct; but as a practical matter, the grant of that visa rendered the declaratory relief sought futile. Why would the applicant, with little or no financial resources and dependent, for the able prosecution of his case, on the O 80 relief I determined on 4 February 2009, want to continue to press for that declaratory relief when his status as a 'lawful non-citizen' was no longer in issue, at least until the s 195A visa expired in 12 months time when, he had been informed, the Minister would review his case? The Minister did not contend, nor could he, that the applicant acted unreasonably in taking the action he did in either proceeding; and the applicant did not contend that the Minister acted unreasonably in opposing those proceedings; at least in express terms. On the other hand, I do find the Minister's action in granting the s 195A visa to be totally inconsistent with his position up to that point in time, having regard to the following: (1) The initial cancellation of the applicant's TP visa and his arrest and detention for over three years; (2) the Minister's sponsorship of retrospective legislation designed to validate his cancellation decision in the face of Sales ; (3) the subsequent arrest and detention of the applicant for a period of six months; and (4) the absence of any explanation for the Minister's grant of the s 195A visa. The Minister's change of position, unmoved by any external event and otherwise unexplained, leads me to the view that the applicant should have his costs in NSD 17/2009 but not in SAD 52/2009. The latter proceeding was unnecessary and each party should pay its own costs. I certify that the preceding forty-two (42) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Edmonds. Associate: Dated: 15 July 2009 Counsel for the Applicant: Mr C Mantziarais Solicitor for the Applicant: Corrs Chambers Westgarth Counsel for the Respondents: Mr A Markus Solicitor for the Respondents: Australian Government Solicitor Date of Submissions: 12, 19 and 26 June 2009 Date of Judgment: 15 July 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/747.html


case_title: Smith v Airservices Australia [2005] FCA 997 ; (2005) 222 ALR 464


case_title: Sullivan v Secretary, Department of Defence [2005] FCA 786


case_title: SZBYR v Minister for Immigration & Citizenship [2007] HCA 26 ; (2007) 235 ALR 609


case_title: Barnes v Commissioner of Taxation [2007] FCAFC 88 ; (2007) 242 ALR 601

case_text: In the recent decision of Barnes v Commissioner of Taxation (Cth) [2007] FCAFC 88 ; (2007) 242 ALR 601 , the Full Federal Court considered the question whether privilege attaches to copy documents, and confirmed that the test was whether the copy itself came into existence for the dominant purpose of giving legal advice or assistance. In that case, the Full Court considered there was an insufficiency of direct evidence as to the purpose of creation. Their Honours emphasised the need for focused and specific evidence as to the making of the copies in order to properly ground a claim for legal professional privilege. They observed at 605 that "verbal formulae and bare conclusory assertions of purpose are not sufficient to make out a claim for privilege".


case_title: Cadbury Schweppes v Amcor [2008] FCA 88

case_text: Jarra Creek submits that I should proceed to determine this issue, since the Visy parties have not agreed to be bound by the outcome of the appeal from the decision of Gordon J in Cadbury Schweppes v Amcor [2008] FCA 88. 12 The Visy parties submit that it is premature to decide this issue now. They say that the Fifth List of Documents (pursuant to which they discovered and claimed privilege over the relevant documents) was only filed on 7 April 2008. Any challenges to those claims of privilege, it is said, will require an order for verification of the claims and substantive argument on the point. 13 It is not appropriate at this stage to determine whether the proofs of the Visy parties are privileged. However, I do not want to defer determination of this issue until the full appeal process from the decision of Gordon J in Cadbury Schweppes v Amcor [2008] FCA 88 has been exhausted. This would delay the matter significantly, and the matter has already had a long history. Protracted delay is not acceptable. 14 For these reasons, I require that the Visy parties verify their claims of privilege forthwith so that the matter can proceed to argument and determination if the parties are not able to reach agreement on this point. 15 The problem connected to this issue is how documents which were provided to the ACCC by third parties, and then provided by the ACCC to the Visy parties during the ACCC proceeding, should be disclosed in this proceeding without prejudice to any claims of confidentiality or any interests which the third parties may wish to assert.


case_text: After the hearing of this application, both Jarra Creek and the Visy parties filed with the Court outlines which identified issues arising for decision on this application. There are eight matters to be considered. The ACCC filed a short response in relation to issues 3, 5 and 8. In short form, the questions are: 1. Are the proofs of the ACCC and the proofs of the Visy parties subject to an implied undertaking in light of the decision of Gordon J in Cadbury Schweppes v Amcor [2008] FCA 398? 2. Are the proofs of the Visy parties privileged? 3. How should outstanding claims of confidentiality and prejudice by third parties in relation to documents adduced in the ACCC proceeding, which may be subject to implied undertakings as to their use, be resolved? 4. Are copy documents provided by the ACCC to the Visy parties namely, transcripts and exhibits, discovered documents and documents the subject of Notices to Produce privileged? 5. Should leave be granted to Jarra Creek to subpoena the ACCC to the extent that the Visy parties succeed in their privilege claims? 6. Should the further discovery sought by Jarra Creek be ordered? 7. Are the s 155 notices discoverable? 8. What form should the orders take? ISSUE 1 IS THERE AN IMPLIED UNDERTAKING? 8 Gordon J in Cadbury Schweppes v Amcor [2008] FCA 398 held that documents provided by the Visy parties to the applicant in a different proceeding before the Court (that is, the ACCC proceeding) were not subject to an implied undertaking, and that they should therefore be produced to Cadbury Schweppes Pty Ltd in the proceeding before her Honour. However, having made this order, her Honour, on the application of the ACCC, stayed the requirement for compliance for one month (which stay was later extended by Weinberg J until resolution of any application for leave to appeal from her Honour's judgment). 9 In my view, the reasons of her Honour are applicable to the present case. I also consider that the Visy parties should be immediately released from their implied undertaking, subject to the opportunity being given to any third parties to make submissions before disclosure of any documents in which they have an interest. Any interests of third parties which may be prejudiced should be protected under the regime prepared in relation to Issue 3 below. 10 It is important to note that Jarra Creek submitted that the implied undertaking automatically yields to orders for discovery which I made in this proceeding on 31 March 2008. I do not consider that those orders displace the implied undertaking, or that they were intended to do so.


case_text: The most relevant authority in relation to copy documents is the decision in Commissioner of Australian Federal Police v Propend Finance Pty Ltd [1997] HCA 3 ; (1997) 188 CLR 501. In that case, the High Court undertook a detailed examination of legal professional privilege in circumstances where some original documents were not privileged, but a separate claim of privilege was advanced in respect of copies of those documents which were made for the purpose of obtaining or giving legal advice or for use in legal proceedings. It is important to note that, in Propend 188 CLR 510, the documents in question were not created by a stranger to the litigation.


case_text: The relevant principles as to legal advice and litigation privilege are helpfully summarised by Kenny J in Commissioner of Taxation v Pratt Holdings Pty Ltd [2005] FCA 1247 ; (2005) 225 ALR 266 at 278-282.


case_title: Esso Australian Resources Limited v Commissioner of Taxation [1999] HCA 67 ; (1999) 201 CLR 49

case_text: In the leading case of Grant v Downs [1976] HCA 63 ; (1976) 135 CLR 674 at 677, Barwick CJ expressed the general principles as to privilege in the following terms: '... a document which was produced or brought into existence either with the dominant purpose of its author, or of the person or authority under whose direction, whether particular or general, it was produced or brought into existence, of using it or its contents in order to obtain legal advice or to conduct or aid in the conduct of litigation, at the time of its production in reasonable prospect, should be privileged and excluded from inspection.' (Emphasis added.) From these observations of Barwick CJ, it is clear that he considered that privilege is to be determined not solely by reference to the purpose of the person who actually made the copy, but also by reference to the purpose of the person who directed or authorised the copy. Although his Honour was in a minority in that case in adopting a dominant purpose as opposed to a sole purpose test, his Honour's observations are apposite to present circumstances, particularly in light of the later conclusion of the High Court that privilege is determined by reference to the dominant purpose: see Esso Australia Resources Limited v Commissioner of Taxation [1999] HCA 67 ; (1999) 201 CLR 49.