case_text: an analogous context, Merkel J, in A1 v National Crime Authority (1996) 67 FCR 464 , referred to the purpose behind the requirement in s 28(2) of the National Crime Authority Act 1984 (Cth) that a notice of reference accompany a summons. Merkel J said (at 480): "In order to ascertain how that requirement may work in practice it is useful to consider the requirement in s 28(2) that the notice of reference accompany a summons to attend a s 25 hearing. The purpose of the requirement is to enable a witness summoned to ascertain the existence, source and extent of the authority and power of the NCA to require his or her (a) attendance at the hearing; (b) answers under compulsion at the hearing to questions considered by the NCA to be relevant to the special investigation. A failure to attend or to answer a question without "reasonable excuse" may result in severe penalties being imposed. An objection, if upheld, that the matter being enquired into by a line of questioning is not capable of being considered to be relevant would constitute a reasonable excuse: see for example Ganin v NSW Crime Commission (1993) 32 NSWLR 423 at 436 per Kirby P. In my view the notice of reference must enable the NCA and the witness to ascertain, albeit in a general way, the limits of the authority of the NCA to conduct the investigation and also to determine, or at least form a view as to, whether the matters being inquired into at the hearing are relevant or capable of being considered to be relevant to the investigation." The respondent's answer to this submission is that, for the purposes of s 28(2) of the ACC Act, the specification of the class or classes of persons to participate in the investigation is not an essential part of the determination. Section 28(2) refers to the determination that, relevantly, "the investigation into matters relating to federally relevant criminal activity is a special investigation". I think the respondent's submission is correct. The essential matters are the determination that the investigation is a special investigation and the matters set out in s 7C(4) (see [30] above). Those matters were in the determination which accompanied the summons and they were unaffected by the 2003 variation. The applicant was given notice of those matters and there is no evidence that he was misled by that part of the 2003 authorisation or determination which addressed the class or classes of persons who were to participate in the special investigation. I reject the first ground of challenge to the summons.


case_outcome: discussed

case_text: the applicant emphasised the fact that it was open to the Parliament to validate the examination and that its failure to expressly do so was significant. Reference was made to Attorney General of New South Wales v World Best Holdings Ltd [2005] NSWCA 261 ; (2005) 63 NSWLR 557 , a case in which not only the constitution of the Tribunal was validated, but also its acts or omissions. That was, submits the applicant, to be contrasted with the fact that, in this case, the Parliament had only validated the summons. The effect of the construction of the amendments in 2007 advanced by the applicant would be that all existing summons are validated, but no examinations which had been held are validated. The practical effect of the amendments in 2007 would, on this argument, be very narrow. As to summonses previously issued, only those where the examination had not yet been held would, in a practical sense, be affected. The validation provision in the 2007 Amendment Act must be construed according to its terms. Even if it is appropriate to apply the approach to construction referred to by the High Court in Coco to a case where the examination has taken place and the question is whether the Parliament has "validated" not only the summons but also the examination, I think Parliament has expressed its intention in clear words in this case. Not only is the summons valid, but it "is taken always to have been as valid" as if the invalidating event had not occurred. To my mind, these words remove any suggestion that the examination which followed the issue of the summons remained unlawful. The other point to be made about the applicant's submissions is that he seeks to put more weight on the decision in Attorney-General for New South Wales v World Best Holdings Ltd [2005] NSWCA 261 ; (2005) 63 NSWLR 557 than it can reasonably bear. In my opinion, that case is no more than an example of how Parliament chose to validate acts in the particular circumstances of the case.


case_text: for the applicant relied on the decision of Smith J in Australian Crime Commission v Magistrates' Court of Victoria [2007] VSC 297 ; (2007) 173 A Crim R 572 in support of the proposition that a failure to record in writing the reasons for the issue of the summons before the issue of the summons rendered the summons and any examination conducted pursuant to it invalid. In that case, the proposition advanced by the applicant in this case was conceded by the Australian Crime Commission, although Smith J said that the concession was one which was properly made (at 578 [9]). The validity of the proposition depends on whether the temporal aspect of the first sentence in subs (1A) of s 28 also applies to the second sentence.


case_outcome: referred to

case_text: seems to me that there are arguments on both sides. In support of the applicant's submission, it can be said that the examiner must reach a state of satisfaction before issuing the summons and there is no reason to think that he or she could or should not record in writing his or her reasons at the same time. In support of the respondent's submission, it can be said that there is no obligation on the examiner to give reasons to the person summoned and that, as the record in writing referred to in s 28(1A) performs the function identified by Finn J in Barnes v Boulton [2004] FCA 1219 ; (2004) 139 FCR 356 at 363-364 [28] - [29] , there is no reason to require the record to be made before the summons is issued. (See also my discussion in AA v Board of the Australian Crime Commission [2009] FCA 642 at [26] - [30] ).


case_title: Burchell v Thompson [1920] 2 KB 80

case_text: statutory context will determine whether a requirement that a copy of a document be served or provided means an actual or facsimile copy or a copy which contains the contents of the document in question. In Burchell v Thompson [1920] 2 KB 80 , Lush J said (at 87): "It is quite possible in a case of this kind to find whether or not a copy of the original document is a true copy. The criterion, as laid down by the authorities, is to consider whether or not the copy differs from the original to such an extent that it would mislead any person of ordinary intelligence as to the effect of the original." Sankey J said (at 90): "Counsel for the respondent has endeavoured to show that some persons might be misled by the omission in the copy now in question, but he has failed to convince me that that would be at all likely. Kay J continued: 'Then is there any untruth in this copy—untruth, I mean, upon an intelligent understanding of the Bills of Sale Act? In my opinion there is not. A true copy of a thing means a copy which is true in all essential particulars; the mere fact that a copy contains a blank which is immaterial, and cannot mislead anyone as to the effect of the instrument, does not make the copy an untrue copy within the meaning of the Act.'" [ Sharp v McHenry [1887] 38 Ch D 427 at 448 per Kay J]


case_title: Button v Evans (1984) 3 NSWLR 191

case_text: Button v Evans (1984) 3 NSWLR 191 , Carruthers J said (at 198-199): "I am mindful of the fact that in Hanfstaengl v American Tobacco Co [1895] 1 QB 347 at 355, Rigby LJ said of the word 'produced' that it is 'a word that has not got an exact legal meaning, but requires an interpretation to be put upon it in the statute in which it occurs'. A later case, Ex parte Wickens [1898] 1 QB 543 , suggests that 'to produce' a thing to a person means to show it to him personally, but does not involve the idea that the possession of it has to be parted with. Thus the Court of Appeal held that for the holder of a bill of sale to ask the grantor to send him the last receipt for rent, is not to ask the grantor to 'produce' it to him within the Bills of Sales Act 1882 (Imp): s 7(4). A similar view was taken by Hardie J in Collier Garland Properties Pty Ltd v O'Hair [1963] SR (NSW) 500 ; 80 WN 768; [1964] NSWR 775 , when dealing with the phrase "the production of all books and documents in custody of ... — that officer or agent" in the Companies Act 1961, s 171(3). The Court of Criminal Appeal gave consideration to the construction of s 234(e) of the Act in R v Amenores [1980] 2 NSWLR 34 , a case to which, I regret to say, neither party referred me during the course of argument. The critical significance of that case is that in the leading judgment, Street CJ said (at 37): '... What is contemplated by s 234(e) is, in my view, no more than the ordinary grammatical meaning of "produce".' Glass JA and Cross J concurred in the judgment of the Chief Justice. What then is the ordinary grammatical meaning of the transitive verb, to produce? The Oxford Dictionary defines it thus: 'To bring forward, bring forth or out; to bring into view, to present to view or notice; to offer for inspection or consideration, exhibit. Often used of bringing forward witnesses, as well as evidence, or vouchers, in a court of law.' It is to be noted that the verb "produce" is used in juxtaposition to the verb 'deliver' in s 234(e). To deliver a document to a Customs officer necessarily involves a transfer of possession, but it does not necessarily involve a transfer by hand. A document may be delivered by a person to a Customs officer through the post or by courier, to use two common examples. To 'produce' a document to a Customs officer on the other hand involves, to my mind, the concept of a person presenting a document to a Customs officer, whilst they are in each others' presence. The presentation may or may not involve as an additional element transfer of the possession of the document to the Customs officer." The statutory context in Button v Evans was s 234(e) of the Customs Act 1901 (Cth), which was to the effect that no person shall make in any declaration or document produced to any officer any statement which is untrue in any particular or produce or deliver to any officer any declaration or document containing any such statement.


case_outcome: cited

case_text: terms of the facts, the starting point is an authorisation and determination made by the Board of the Australian Crime Commission ("the Board") at a meeting of the Board held on 13 May 2003. The authorisation and determination was called the "Australian Crime Commission Special Investigation Authorisation and Determination (Money Laundering and Tax Fraud) 2003" and the authorisation was expressed to be valid until 31 May 2004. I will refer to this as the 2003 authorisation and determination. It is common ground between the parties that the Board resolution making this authorisation and determination was passed at a Board meeting held on 13 May 2003 (see CC Pty Ltd v Australian Crime Commission [2007] FCAFC 96 ; (2007) 159 FCR 282). It appears that on 15 May 2003, the Chair of the Board signed a copy of the authorisation and determination, mistakenly asserting that it was made by resolution of the Board on 15 May 2003. The 2003 authorisation and determination was varied by a determination made by the Board by resolution passed on 4 December 2003. The determination was called the "Australian Crime Commission Operations and Investigations (Participants) Determination 2003". I will refer to this as the 2003 variation. Under the ACC Act, the Board may authorise in writing an investigation and may determine in writing that the investigation is a special investigation (s 7C(1)(c) and (d) and (3)). It may also determine in writing the class or classes of persons who are to participate in such an investigation (s 7C(1)(e)). In the 2003 authorisation and determination, the classes of persons to participate in the investigation were specified in Schedule 2 of the document. The purpose and effect of the 2003 variation was to make changes to the classes of persons who were to participate in the special investigation. After setting out certain preliminary matters, clause 4 of the 2003 variation stated: " 4. Classes of persons to participate in operation (1) For paragraph 7C(1)(e) of the Act, the classes of persons to participate in the intelligence operation, or the investigation into a federally relevant criminal activity, to which an Instrument mentioned in Schedule 1 applies are the classes mentioned in Schedule 2. (2) For the avoidance of doubt, a provision in an Instrument mentioned in Schedule 1 that specifies the classes of persons to participate in the operation or investigation to which the Instrument relates is revoked and replaced by this Determination. Schedule 1 Instruments amended by this Determination (section 4) ... Australian Crime Commission Special Investigation Authorisation and Determination (Money Laundering and Tax Fraud) 2003 ... Schedule 2 Classes of persons (section 4) The CEO. Each person who is: (a) a member of the staff of the ACC; and (b) identified in writing by the CEO, or a delegate of the CEO, as a person whose duties include providing services in relation to ACC operations and investigations. Each person who is: (a) an officer or member of the staff of any of the following agencies: (i) an agency of which a Board member is head (other than the CEO) in his or her capacity as a Board member; (ii) the Australian Taxation Office; (iii) AUSTRAC; (iv) the Department of Immigration and Multicultural and Indigenous Affairs; (v) the New South Wales Crime Commission; (vi) the Queensland Crime and Misconduct Commission; and (b) identified in writing by the head of that agency, or a delegate of that head, as a person whose duties include providing services in relation to ACC operations and investigations."


case_text: applicant referred to CC Pty Ltd v Australian Crime Commission (No 2) [2007] FCA 16 ; (2007) 66 ATR 39 in which Mansfield J, in referring to the 2003 authorisation and determination, said (at 46 [36]): "The determination, as it stood at the time of the passing of the resolution set out at [5] above, was not an ideal document. It did not record the date and time at which it was made and it had the distinct appearance of a draft." Section 28(2) is an important section in the ACC Act. A person facing an examination is given only limited information about the proposed examination and the questions he or she is likely to be asked at an examination. The principal provision in this regard is s 28(3), but even that provision is subject to the two qualifications referred to in the subsection. To understand the information which will be provided to a proposed examinee by virtue of the obligation in s 28(2), it is necessary to refer to s 7C(3) and (4) of the ACC Act. Those subsections are in the following terms: " 7C Functions of the Board ... Special investigation (3) The Board may determine, in writing, that an investigation into matters relating to federally relevant criminal activity is a special investigation. Before doing so, it must consider whether ordinary police methods of investigation into the matters are likely to be effective. Note 1: See also subsection 7G(4) for the voting rule that applies in relation to such a determination. Note 2: See also Division 2 for the examination powers available if there is a special investigation. Further details (4) A determination under subsection (2) or (3) must: (a) describe the general nature of the circumstances or allegations constituting the federally relevant criminal activity; and (b) state that the serious and organised crime is, or the serious and organised crimes are or include, an offence or offences against a law of the Commonwealth, a law of a Territory or a law of a State but need not specify the particular offence or offences; and (c) set out the purpose of the operation or investigation."


case_title: Coco v The Queen (1994) 179 CLR 427

case_text: point at issue is whether the amendments in 2007 validated not only the summons, but also the examination conducted following its issue. The applicant submits that it did not, and he relies on two particular points in support of his submission. First, he points to the common law right to silence which he submits is abrogated by provisions such as s 28 of the ACC Act. The amendments in 2007 should be strictly construed so as not to interfere with common law rights. The applicant referred to Coco v The Queen (1994) 179 CLR 427 (" Coco ") and, in particular, the observations of Mason CJ, Brennan, Gaudron and McHugh JJ at 437: "The insistence on express authorization of an abrogation or curtailment of a fundamental right, freedom or immunity must be understood as a requirement for some manifestation or indication that the legislature has not only directed its attention to the question of the abrogation or curtailment of such basic rights, freedoms or immunities but has also determined upon abrogation or curtailment of them. The courts should not impute to the legislature an intention to interfere with fundamental rights. Such an intention must be clearly manifested by unmistakable and unambiguous language. General words will rarely be sufficient for that purpose if they do not specifically deal with the question because, in the context in which they appear, they will often be ambiguous on the aspect of interference with fundamental rights." The validation provision in the 2007 Amendment Act must be construed according to its terms. Even if it is appropriate to apply the approach to construction referred to by the High Court in Coco to a case where the examination has taken place and the question is whether the Parliament has "validated" not only the summons but also the examination, I think Parliament has expressed its intention in clear words in this case. Not only is the summons valid, but it "is taken always to have been as valid" as if the invalidating event had not occurred. To my mind, these words remove any suggestion that the examination which followed the issue of the summons remained unlawful. The other point to be made about the applicant's submissions is that he seeks to put more weight on the decision in Attorney-General for New South Wales v World Best Holdings Ltd [2005] NSWCA 261 ; (2005) 63 NSWLR 557 than it can reasonably bear. In my opinion, that case is no more than an example of how Parliament chose to validate acts in the particular circumstances of the case.


case_title: Commissioner of The Australian Federal Police v Oke [2007] FCAFC 94 ; (2007) 159 FCR 441

case_text: appeal ( [2007] FCAFC 94 ; (2007) 159 FCR 441) , Branson and Lindgren JJ said (at 446 [25]): "As mentioned above, the Commissioner ultimately conceded on appeal that the document made available to Mr Oke in purported compliance with s 3H(1) of the Crimes Act was not a copy of the warrant. It is thus unnecessary for this Court to give consideration to the extent to which a document may fail accurately to reproduce every aspect of a warrant before it loses the character of a copy of that warrant within the meaning of s 3H(1). We doubt, however, that s 3H(1) calls for a facsimile of the warrant to be made available to the occupier of the premises. Whether a document is a copy of a warrant within the meaning of s 3H(1) is a question of fact to be determined in the light of the purpose of the Crimes Act following a comparison of the two documents and an assessment of the significance of any unauthorised differences between them." It is no doubt important that the determination which accompanies the summons be accurate, but there is no reason which I can discern from the statutory provisions why the copy needs to be an actual or facsimile copy of the document which was before the Board. The process involved in the making of an authorisation and determination is such that it is likely to involve the preparation of a fresh document after the relevant Board meeting. It seems to me that, as long as the contents of the document are accurate, the statutory obligation in s 28(2) is met. As I have said, there is nothing in this case to suggest that the contents of the 2003 authorisation and determination were not accurate. The second limb to the submission that there was a failure to comply with s 28(2) is that the determination for the purposes of s 28(2) is not only the 2003 authorisation and determination, but also any amendment or variation thereto and, in this case, that includes the 2003 variation. It is common ground between the parties that the 2003 variation did not accompany the summons.


case_title: Evans v Button (1988) 13 NSWLR 57

case_text: Evans v Button (1988) 13 NSWLR 57 , the Court of Appeal (Mahoney JA with whom Priestley and McHugh JJA agreed) said (at 63-64): "The learned trial judge considered cases in which the meaning of 'produce' in particular contexts had been examined. He concluded, in my opinion correctly, that the word is one 'that has not got an exact legal meaning, but requires an interpretation to be put upon it in the statute in which it occurs'. Hanfstaengl v American Tobacco Co [1895] 1 QB 347 at 355: and he saw the decision of the Court of Criminal Appeal in R v Amenores [1980] 2 NSWLR 34 as indicating that, in the present section, the word is used in its 'ordinary grammatical meaning' (at 37). In s 234(e) the legislature has used the phrase 'produced delivered or furnished to'. I do not think that the juxtaposition of these three terms should be seen as indicating an intention that each of them has a meaning separate and distinct from the other in the sense that they do not overlap. It may be, as his Honour was inclined to think, that 'produced' ordinarily means that the one person is presenting a document to the other whilst they are in each others presence. If this be so, then the purpose of 'delivered or furnished to' was, inter alia, to indicate that what was in contemplation in s 234(e) was not so limited and that the legislature was looking to a wide class of communication of the document to the relevant officer." I agree with counsel for the respondent that the identity of the person serving the notice to produce is immaterial. It does not have to be the person specified in the notice. It seems to me that the physical presence of the person to whom documents or things are to be produced is probably necessary. Parliament chose not to prescribe a procedure requiring production simply to the Commission or any staff member of the Commission. On the other hand, Mr Hellings was present at the time of production and the applicant had previously met him. I do not think the person to whom the documents and things are to be produced need take actual physical possession of the documents or things. Documents or things may be placed on a table, or, if produced in large quantities, be in cartons which are immediately taken away by staff members of the Commission. In my opinion, the production which took place on 19 February 2004 was in accordance with the notice to produce and s 29(1) of the ACC Act. I reject the third ground of challenge to the notice to produce.


case_text: J considered the grounds upon which a notice may be held invalid because a reasonable period for production has not been allowed. He referred to Pyneboard Pty Ltd v Trade Practices Commission (1982) 57 FLR 368, a case involving a notice under s 155 of the Trade Practices Act 1974 (Cth), and F H Faulding & Co Ltd v Commissioner of Taxation [1994] FCA 1492 ; (1994) 54 FCR 75 , a case involving a notice under s 264 of the Income Tax Assessment Act 1936 (Cth). He then said (at [65]): "...the specification of an arbitrarily short time for compliance may reflect upon the reasonableness of the exercise of the power or the good faith with which it has been exercised."


case_text: applicant referred to the decision in Ganke v Deputy Commissioner of Taxation of the Commonwealth of Australia (1975) 25 FLR 98 and submitted that the examiner was bound under the ACC Act to allow a reasonable time for the production of the documents and things and that the respondent bore the onus of establishing that "forthwith" was a reasonable time. After the hearing, the applicant wrote to my chambers and referred me to the decision of Flick J in A. B. Pty Limited v Australian Crime Commission [2009] FCA 119. In that case, his Honour referred to a number of factors which are to be considered in determining objectively whether the period of time allowed for production in a notice under s 29 is reasonable. He said (at [61]): "The objective surrounding circumstances would include the breadth of each particular notice and (perhaps) the need for a recipient to construe the terms of a notice; the classes of documents required to be produced; the apparent ability of the recipient to collate and thereafter produce the documents; the time of the year at which a notice is served and intervening disruption to business activities by reason of public or religious holidays; whether there has been a prior attempt to require the production of the same or similar documents; and the time in fact allowed. Some consideration could also be given to the amount of time an examiner thought appropriate; although that consideration would not be decisive."


case_text: summons issued under s 28 and a notice to produce issued under s 29 interfere with the rights of the citizen and, generally speaking, the courts will insist on strict compliance with conditions governing their issue. In the context of a search warrant, the High Court said in George v Rockett [1990] HCA 26 ; (1990) 170 CLR 104 (at 110-111): "Nevertheless, in construing and applying such statutes, it needs to be kept in mind that they authorize the invasion of interests which the common law has always valued highly and which, through the writ of trespass, it went to great lengths to protect. Against that background, the enactment of conditions which must be fulfilled before a search warrant can be lawfully issued and executed is to be seen as a reflection of the legislature's concern to give a measure of protection to these interests. To insist on strict compliance with the statutory conditions governing the issue of search warrants is simply to give effect to the purpose of the legislation." (See also Ousley v The Queen [1997] HCA 49 ; (1997) 192 CLR 69 at 95 per Gaudron J at 105 per McHugh J, at 141 per Kirby J.) The summons


case_outcome: followed

case_text: to the former submission, a similar submission was made and rejected by me in GG v Australian Crime Commission [2009] FCA 759. I said (at [31]): "The first ground of challenge to the second summons is that it failed to state that the applicant was required to give evidence as a "witness". It is submitted that the second summons was therefore deficient "on its face". The applicant referred to various sections in the Act which refer to a person appearing before an examiner in response to a summons as a witness: ss 25A(6), (7) and (8), 26, 27, 28 (heading), 30 and 31. I leave to one side the fact that a section heading is not part of an Act: Acts Interpretation Act 1901 (Cth) (" Acts Interpretation Act ") s 13(3). There is nothing in the Act which requires a summons to state that the person to whom it is directed is required to give evidence as a witness. It is not clear to me whether, by making this submission, the applicant was suggesting that he could only be required to give evidence as a witness in the sense that he could not be required to give evidence of his own activities or involvement in the activities of others. If he was suggesting that, it is plainly not a proposition supported by the provisions of the Act. The provisions of the Act have the effect of removing the privilege against self-incrimination: s 30(4) and (5) (see A v Boulton [2004] FCAFC 101 ; (2004) 136 FCR 420). " The applicant referred to the practice books dealing with the procedure relevant to summary offences heard by justices of the peace. He referred to a distinction between a general form of a summons and a summons of a witness. That matter may be accepted, but it does not assist in the proper interpretation of the ACC Act. Under the ACC Act, all examinees appear as witnesses and there is no need to refer to that fact in the summons. Furthermore, it seems to me strongly arguable that, read as a whole, the summons in any event makes it clear enough that the applicant is summoned to give evidence as a witness. The summons bears the heading "Summons to Appear Before the Australian Crime Commission". It refers to attendance, "to give evidence". It refers to obligations in s 30(1), (2) and (3) of the ACC Act and the first two of those subsections refer to a person appearing as a witness at an examination. A similar argument was put in two matters I heard earlier this year. I rejected the argument. I take the liberty of repeating what I said in AA v Board of the Australian Crime Commission [2009] FCA 642 at [45] - [48] : "The applicant submits that a person otherwise given the summons within the terms of s 29A(3) includes a person given the summons, not only by the Commission or an examiner, but by a person served with the summons, or by a person who has been given the summons by a person who in turn has received the summons from the person served with the summons. The applicant submits that if this proposition is correct then it follows that the Statement should set out the obligations and rights in s 29B(3) and (4) either because the words 'otherwise given, a summons' in s 29B(1) have a different meaning from the same words used in s 29A(3), or because a person 'otherwise given, a summons' can fall within the terms of both s 29B(1) on the one hand and s 29B(2) and (4) on the other. The respondents submit that the Act creates two classes, namely, a class of persons served with a summons or otherwise given a summons by the Commission or an examiner, and a class of persons to whom disclosure is made by a person in the first class or by a person otherwise in the second class. The obligations and rights of the first class are set out in s 29B(1) and (2) and the obligations and rights of the second class are set out in s 29B(3) and (4). On this analysis, the written statement referred to in s 29A(3) must set out the obligations and rights set out in s 29B(1) and (2), but need not set out the obligations and rights in s 29B(3) and (4). In my opinion, the construction of s 29A and s 29B of the ACC Act advanced by the respondents is the correct one. First, the respondents' construction means the words 'otherwise given, the summons' are given the same meaning in the two sections. Secondly, the construction is consistent with the distinction suggested by the structure of s 29B between a person directly involved with the Commission or an examiner in that he or she has been served with a summons or otherwise given a summons by the Commission or an examiner, on the one hand, and a person to whom disclosure has been made, on the other. Thirdly, the respondents' construction avoids the practical difficulties that the applicant's construction creates in terms of the obligation placed on the Chief Executive Officer of the Commission by s 29A(5). This issue was also an issue considered by Jagot J in SS . Again, I have reached my conclusions independently of her Honour's decision. However, with respect, her Honour's reasons neatly summarise why in this case the applicant's submission must be rejected and I take the liberty of repeating them. Her Honour said (at [123]-[127]): 'Three matters are apparent from this scheme. First, the scheme distinguishes between a person "served, or otherwise given" a summons or notice and a person to whom a person "served, or otherwise given" a summons or notice makes disclosure. The former is subject to ss 29B(1) and (2). The latter is subject to ss 29B(3) and/or (4). Consideration of the opening words of the provisions of ss 29B(1) to (4) supports this distinction (that is, the fact that s 29B(1) uses the words "served, or otherwise given" whereas ss 29B(3) and (4) refer to persons to whom disclosure has been made or information disclosed). This distinction indicates that the Act establishes two classes of persons for the purpose of these provisions, namely: - (i) persons who are served or otherwise given a summons or notice, and (ii) persons who are the recipient of disclosure by a person served or otherwise given a summons or notice, but who have not themselves been served or otherwise given a summons. This scheme is inconsistent with SS's case that the words "otherwise given" in s 29A(3) should be read as applying to a person who is the recipient of disclosure by a person served or otherwise given a summons or notice. Second, treating a person to whom disclosure has been made about a summons or notice as a person 'otherwise given' the summons or notice under s 29A(3) undermines the careful scheme of obligations imposed by s 29B. The reason for this is that the words 'or otherwise given' must take the same meaning wherever they appear in the ACC Act. Hence, s 29B(1), on SS's construction, would apply to a person to whom disclosure is made (and who happens to be given a copy of the summons or notice as part of that disclosure) under s 29B(2). Yet such a person would also be subject to the obligations imposed by s 29B(3). Similarly, if that person to whom disclosure is made under s 29B(2) (and who happens to be given a copy of the summons or notice as part of that disclosure) themselves makes a disclosure under s 29B(4) (and happens to be given a copy of the summons or notice as part of that disclosure) the person who is the recipient of the disclosure under s 29B(4) would also become a person subject to the obligations under s 29B(3), yet also (on SS's case) s 29B(1) as well. This makes the statutory scheme nonsensical. Third, and as the ACC pointed out, if SS's construction is correct then the CEO's obligation in s 29A(5) is unworkable. The CEO will know the persons served or otherwise given the summons by the ACC. The CEO cannot know the persons to whom a disclosure has been made in accordance with ss 29B(2) or (4). Such a disclosure is not a matter for the CEO. It is a matter for the person served or otherwise given the summons or notice by the ACC and the recipient of the disclosure. Yet SS's construction would require the CEO to give written notice of the cancellation of the notation to persons both served or otherwise given the summons or notice by the ACC and persons (unknown to the CEO) to whom such a person made disclosure (and so on in accordance with s 29B(4)). These considerations indicate that the ACC's submission must be accepted." (See also GG v Australian Crime Commission [2009] FCA 759 at [34] - [37] .)


case_text: Oke v Commissioner of the Australian Federal Police [2007] FCA 27 ; (2007) 168 A Crim R 503 , Mansfield J said (at 519 [71]): "A preliminary observation, however, is that it would not have been intended that any omission from the copy of a warrant made available under s 3H(1) to the occupier of premises being searched would invalidate the execution of the search warrant. A photocopying error may have led to an insignificant corner of a page, or the numbering of a page, being left out. The process of photocopying may have blurred a small section of the text, but a section which did not in the circumstances have any particular significance. There may be other illustrations."


case_title: Ousley v The Queen [1997] HCA 49 ; (1997) 192 CLR 69


case_text: issues raised by the applicant are essentially issues of statutory construction. It will be necessary for me to address the proper construction of various sections in the ACC Act. A breach of a statutory provision does not necessarily lead to invalidity. Whether a breach leads to invalidity is a question to be determined by the application of the principles laid down by the High Court in Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355: "An act done in breach of a condition regulating the exercise of a statutory power is not necessarily invalid and of no effect. Whether it is depends upon whether there can be discerned a legislative purpose to invalidate any act that fails to comply with the condition. The existence of the purpose is ascertained by reference to the language of the statute, its subject matter and objects, and the consequences for the parties of holding void every act done in breach of the condition. Unfortunately, a finding of purpose or no purpose in this context often reflects a contestable judgment. The cases show various factors that have proved decisive in various contexts, but they do no more than provide guidance in analogous circumstances. There is no decisive rule that can be applied; there is not even a ranking of relevant factors or categories to give guidance on the issue." (Citations omitted.) (McHugh, Gummow, Kirby and Hayne JJ at 388-389 [91]).


case_title: Pyneboard Pty Ltd v Trade Practices Commission (1982) 57 FLR 368


case_title: E I Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; (2002) AIPC 97 788 [2002] FCA 230

case_text: 12 March 2002 Branson J delivered reasons for judgment in two proceedings: N1248 of 1999, which related to Patent Application No 658005 and N1249 of 1999, which related to Patent Application No 654176. Each was an 'appeal' against a decision of a delegate of the Commissioner of Patents. Du Pont was the 'appellant' in each case and ICI was the respondent in each case, ICI being the applicant for each patent and Du Pont the unsuccessful opponent in each case. Two 'appeals' were heard together and decided at the same time in the same set of reasons ( E I Dupont de Nemours & Co v Imperial Chemical Industries PLC (2002) 54 IPR 304; (2002) AIPC 97 788; [2002] FCA 230). The description of the invention in the complete specification commences: 'The present invention relates generally to working fluid compositions contained in heat transfer devices which comprise the lubricant and a heat transfer fluid.' Branson J dealt with the claims as follows (at [22]): 'All of the claims defining the invention are concerned with a "working fluid composition". Claim 1 is the only independent claim . It is expressed as follows: "A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of at least two hydrofluoroalkanes selected from the group consisting of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: O | | R(O-C-R 1 ) n | | wherein R is the hydrocarbon radical remaining after removing the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol, or the hydroxyl containing hydrocarbon radical remaining after removing a proportion of the hydroxyl groups from pentaerythritol, dipentaerythritol, tripentaerythritol, trimethylol ethane, trimethylol propane or neopentyl glycol; each R 1 is, independently, H, a straight chain (linear) aliphatic hydrocarbyl group, a branched aliphatic hydrocarbyl group, or an aliphatic hydrocarbyl group (linear or branched) containing a carboxylic acid or carboxylic acid ester substituent, provided that at least one R 1 group is a linear aliphatic hydrocarbyl group or a branched aliphatic hydrocarbyl group; and n is an integer." ' [emphasis added] On 19 December 2002 an examination report issued on the Divisional Application raising the following objection: '1. The invention defined by the claims lacks novelty in the light of:- AU 54480/90 (638710) to The Lubrizol Corporation This citation was ruled in the Federal Court judgment as rendering the parent of the current application not novel. It is noted that the specification of the current application is identical to the parent document. See E I DuPont de Nemours & Co v Imperial Chemical Industries PLC [2002] FCA 230 in particular paragraphs 38 to 71. Note: In the light of the above the Commissioner is considering refusing this application under s. 49(2). You will be contacted early in the new year to arrange a date for a hearing into the matter.'


case_title: Imperial Chemical Industries PLC v EI Dupont De Nemours & Co (2002) AIPC 91-818 [2002] FCAFC 264

case_text: leave was refused by the Full Court on 23 August 2002 ( Imperial Chemical Industries PLC v EI Dupont De Nemours & Co (2002) AIPC 91-818; [2002] FCAFC 264). In the course of the judgment, the Full Court said (at [17] [20]): 'The primary judge found that integer (A) of Claim 1 of the Lubrizol Patent anticipated integer (A) of PA658005. Integer (A) of the Lubrizol Patent requires that the liquid composition must comprise (in addition to a minor amount of a lubricant) a major amount of at least one hydrocarbon that contains both fluorine and one or two carbon atoms. Integer A of PA 658005 requires that the composition will comprise (in addition to a lubricant) a mixture of at least two hydrofluoroalkanes selected from: • difluoromethane, • 1,1,1,2-tetrafluoroethane • pentafluoroethane An alkane is a fully saturated carbon or hydrocarbon chain. That is to say, there are as many hydrogen atoms attached to the carbon atoms as possible and only single bonds exist between the carbon atoms. Thus, the specification states that each of the above three compounds is a fully saturated hydrocarbon chain. Each of them contains fluorine and each contains one or two carbon atoms. Thus, difluoromethane contains two fluorine atoms and one carbon atom. Tetrofluoroethane contains four fluorine atoms and two carbon atoms. Pentofluoroethane contains five fluorine atoms and two carbon atoms. Clearly, each of those compounds is encompassed by the description " fluorine-containing hydrocarbon containing one or two carbon atoms ". Thus, the use of a liquid composition described in Claim 1 of PA658005 is clearly disclosed by the Lubrizol Patent. There is no suggestion in the complete specification of PA658005 that a liquid composition comprising a refrigerant that satisfies the description in integer (A) and a lubricant that satisfies integer (B) would be any more effective than, or perform a function different from, a composition comprising a major amount of at least one fluorine containing hydrocarbon containing one or two carbon atoms and the lubricant described in integer (B) of Claim 1 of the Lubrizol Patent. That is to say, PA658005 is not an instance of the selection of something disclosed by the Lubrizol Patent by way of a further inventive step. It is no more than a particular example of the invention disclosed by the Lubrizol Patent. It is, therefore, crystal clear that a patent granted pursuant to PA 658005 would be revocable. The correctness of that conclusion by the primary judge is attended with no doubt. Accordingly, there would be no utility in granting leave to appeal from her Honour's orders in relation to PA658005. In the circumstances, it is not necessary to consider the other ground upon which her Honour concluded that the opposition to PA 658005 should succeed.' In the meantime, on 28 March 2002, ICI filed a Divisional Application of Application 658005 under No 29314/02. Divisional Applications are provided for by s 79B of the Patents Act. At that stage it was in identical form to the parent application. No notice of intention to file that Divisional Application was given to either Du Pont or the Court. The proceeding had been stood over by Branson J on 12 March 2002 to 5 April 2002 for submission of draft orders.


case_title: Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399; (2004) 63 IPR 476; (2005) AIPC 92-055

case_text: 24 October 2003 ICI appealed against that decision to the Court and the matter came on before Crennan J. Du Pont sought leave to appear before Crennan J as amicus curiae and submitted that it was an abuse of process for ICI to reargue before Crennan J a matter decided by Branson J. Leave was refused ( Imperial Chemical Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 399; (2004) 63 IPR 476; (2004) AIPC 92 055 at [36]). The matter proceeded in the absence of Du Pont. On 16 December 2004 it was ordered that the appeal be allowed, that the decision of the delegate be set aside and that the matter be remitted to the delegate to reconsider the application and amendments proposed by the applicant in accordance with the Court's reasons for judgment (see Imperial Chemicals Industries Pty Ltd v Commissioner of Patents (2004) 213 ALR 319; (2004) 63 IPR 476; (2004) AIPC 92 055 at [87]).


case_text: there is no identity between any issue found by Branson J, confirmed by the Full Court, on the one hand, and any issue for determination in the present application, on the other, there can be no issue estoppel ( Kuligowski v Metrobus [2004] HCA 34 ; (2004) 220 CLR 363 at [21] , [40] [54]). I cannot see that the questions raised by Du Pont as to the propriety of the filing of the Divisional Application by ICI have any relevance to establishing the issue estoppels pleaded. The proceeding should be dismissed. The applicant is to pay the costs of the respondents. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles. Associate: Dated: 31 October 2006 Counsel for the Applicant: Mr IM Jackman SC, Mr PW Flynn Solicitor for the Applicant: Addisons Counsel for the First Respondent: Mr DK Catterns QC, Mr C Dimitriadis Solicitor for the First Respondent: Phillips Ormonde & Fitzpatrick Counsel for the Second Respondent: Ms KJ Howard SC Solicitor for the Second Respondent: Australian Government Solicitor Dates of Hearing: 16 and 17 October 2006 Date of Judgment: 31 October 2006 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2006/1402.html


case_text: 2 April 2003 ICI proposed amendments to the specification which had the effect that claim 1 of the Divisional Application would be as follows: '1. A working fluid composition comprising: (A) a heat transfer fluid comprising a mixture of difluoromethane, 1,1,1,2-tetrafluoroethane and pentafluoroethane; and (B) a lubricant which is at least partially soluble in each component of the heat transfer fluid said lubricant comprising one or more compounds of general formula: [formula follows]' That claim is similar in scope (although not in form) to claim 4 of the Parent Application and is similar to claim 10 of Application 654176. A delegate of the Commissioner refused the Divisional Application on the basis it lacked novelty and refused an opportunity to propose further amendments. One ground of that decision was that there was an issue estoppel created by the judgment of Branson J but for the fact that the parties were not the same. ( Re Application by Imperial Chemical Industries PLC (2003) 60 IPR 610).


case_text: Although the attribution of the statements to the ACCC is acknowledged to be incorrect, counsel for Maurice Blackburn sought to minimise the importance of such an attribution. Counsel argued that the ACCC had made several statements in various publications which, taken together with inferences which can be drawn from the judgment of Heerey J in the proceeding between the ACCC and the Visy parties and others (see Australian Competition and Consumer Commission v Visy Industries Holdings Pty Limited (No 3) [2007] FCA 1617) , support the inference that the ACCC held a view that an overcharge in the order of 10 per cent existed in this case. Counsel for Maurice Blackburn also submitted that there was some qualification of the range of between 8 and 23 per cent overcharge in the Further Amended Statement of Claim at [100]-[103], which points to the necessity for discovery before damages can be further particularised. 15 Counsel for Maurice Blackburn further submitted that, when considering the effect of the statements, regard should be had to the fact that the group members, as defined, are not simply a general cross-section of the public, but rather the specific group of persons or entities who have contracted for more than $100,000 worth of packaging products over the five year period. It is said that such persons should be treated as a "sophisticated" class of people who would be more likely to consult legal advisers and rely on their own business acumen rather than accept, without qualification, broad assertions by Mr Slade. I am not persuaded that such an inference can reasonably be drawn in the present case. The fact that someone pays $100,000 or more for packaging products does not, in my view, mean that they are more or less astute or more or less likely to be influenced by false representations in this matter than any other members of the community. 16 In considering this application, I am conscious of the uncertainty which must surround any quantification of damages at such an early stage in the proceeding, before the settlement of pleadings, return of subpoenas, full discovery and filing of evidence. However, it is necessary to ensure that the appraisal by an applicant (or any group member in a representative proceeding) of its position is not artificially inflated as to the likely monetary rewards which will flow from the litigation. This is particularly important in a complex representative proceeding, where it might be said that a group member will generally be less likely to opt out of the proceeding when the return, in its perception, is likely to be great. Of course, this may not always be so, and there may be particular circumstances apart from the amount of the prospective return, such as a desire to exercise greater control over the litigation process or the ventilation of specific issues, which could have an impact upon the decision to opt out. 17 Notwithstanding attempts by counsel for Maurice Blackburn to downplay the significance of the incorrect attribution to the ACCC, I consider that it was an important misrepresentation. This is because it is reasonable to conclude that the view of the ACCC given its detailed knowledge of the alleged cartel arrangement, its resources and its statutory function would carry significant weight with the group members in this case, and perhaps engender in them an erroneous assumption that the view of Mr Slade or Jarra Creek in relation to the eventual outcome of the case is a view shared by the ACCC. Although Maurice Blackburn has not hesitated to acknowledge the inaccuracy of the attribution of the relevant comments to the ACCC and has also offered not to repeat those comments, no satisfactory public acknowledgment has been made. Moreover, Mr Slade has not given any explanation of the basis on which the comments were made and what mechanisms are now in place to ensure they are not repeated. 18 In my view, the statements by Mr Slade are capable, on one reading, of misleading group members. In particular, the incorrect attribution of their content to the ACCC imparts to those statements a quality of authority that they would not otherwise attract if they were seen as coming only from Jarra Creek or its legal representatives. Indeed, this impression of greater authority is especially important when statements are made in the context of an opt out procedure, where group members are attempting to decide whether it is in their best interests to remain a part of the group or seek to conduct separate litigation. In particular, the reference to a total overcharge of one billion dollars could have a significant impact on a group member's opt out decision. 19 In this case, I consider that there is a need to publish a correction of the misstatements and that as a consequence the date by which a notification of opting out should be given to the Court is deferred by one month. I do not think that an inter partes undertaking by Maurice Blackburn to the Visy parties is sufficient to remedy the potential impact of the false statement in this case. Accordingly, I shall order that a correcting statement be published forthwith. The form and content of that correcting notice should be the subject of discussion between the parties, however it should as a minimum include (i) a correction of the misstated attribution; (ii) a statement that the opt out date has been extended from 4 pm on 30 April 2008 to 4 pm on 30 May 2008; and (iii) a statement of the difficulty of quantifying at this stage the amount of damages that might eventually be awarded by the Court if the representative proceeding is successful. I direct that, once the parties agree on the form of the notice, it should be sent to my Associate in chambers within three days of the date of these reasons for approval by the Court. If agreement cannot be reached, the points of difference should be identified, and the competing forms of notice sent to my Associate in chambers within three days of the date of these reasons, with brief reasons, for settlement by the Court. By adopting this course, the Court seeks to make it perfectly clear to anyone presently within the group that the integrity of the opt out process is closely monitored by the Court in order to ensure that it is properly carried out. 20 With respect to the other relief sought by the Visy parties, I do not think that an injunction against Maurice Blackburn is necessary. As I have noted, Maurice Blackburn proffered an undertaking not to repeat the comments which attribute certain representations to the ACCC. A restraining order would, in my view, be inappropriate in such circumstances. I have no doubt that this judgment will induce caution on the part of Maurice Blackburn in the future. In addition, I do not consider that there are reasonable grounds established for any inference that Mr Slade has made other similar statements, and so I am not prepared to order that he file an affidavit particularising any such further statements. 21 I consider that the applicant should bear the costs of correcting the statement in relation to the ACCC. 22 The costs of this application are reserved. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate: Dated: 29 April 2008 Counsel for the Applicant: Mr S. Gageler SC and Mr I. Wylie Solicitor for the Applicant: Maurice Blackburn Pty Ltd Counsel for the First to Third Respondents: Mr R. Harris Solicitor for the First to Third Respondents: Allens Arthur Robinson Counsel for the Fourth to Sixth Respondents: Mr J. Beach QC and Mr M. O'Bryan Solicitor for the Fourth to Sixth Respondents: Arnold Bloch Leibler Date of Hearing: 21 April 2008 Date of Judgment: 29 April 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/575.html


case_outcome: considered

case_title: Johnstone v HIH Limited [2004] FCA 190

case_text: It is not contentious that the Court has power under the Federal Court Act (see ss 23, 33J, 33K and 33X) to make orders, where appropriate, to protect the integrity of the opt out process. I referred to the relevant principles in Johnstone v HIH Limited [2004] FCA 190 , where I said at [105]: 'The Court has an important and continuing role in managing representative proceedings in the public interest to rectify any potentially misleading communications to class members or potential class members, in order to ensure that there is no misunderstanding engendered by such communications, particularly when they emanate from legal advisers, as to rights and obligations and procedures to be followed by recipients of such communications.'


case_text: The principle was also expressed by Goldberg J in Williams v FAI Home Security Pty Ltd (No 3) [2000] FCA 1438 at [24] in the following way: 'The nature of class actions brought pursuant to provisions of Pt IVA of the Act are such that it is imperative that any communications made to group members, in whatever form, be accurate especially in relation to the rights which they have in relation to class actions of which they are a group member and the rights which they have to opt out of such proceedings.' 11 Evident from both the above comments is the necessity of protecting the integrity of the opt out process by ensuring the accuracy of public representations made during the period of that process. 12 The Visy parties refer to the Further Amended Statement of Claim and say that the statements of Mr Slade are inaccurate and misleading because they incorrectly attributed to the ACCC a comment that the alleged cartel activity of the Visy parties and the Amcor parties resulted in an overcharge of between 8 and 23 per cent. In particular, the Visy parties say that the references by Mr Slade to damages in the amount of hundreds of million, or even a billion, dollars could not be reasonably supported and should not have been attributed to the ACCC. The Visy parties also emphasise that Mr Slade's comments that Maurice Blackburn wanted people to know what possible benefits they might obtain as a result of their decision to remain in the group or to opt out of it indicates that Mr Slade was conscious of the importance and potential effect of his statements vis-à-vis the opt out process.


case_text: Although there is no precise finding to this effect the Federal Magistrate appears to accept that the words "insurance" and "news" and "Australia" were words which are "descriptive" rather than "distinctive". It would be surprising if any other result ensued because they are self-evidently descriptive words. Although more than one descriptive word is combined, each component retains its descriptive significance in relation to the services at issue; the combination results in a composite that is itself descriptive: see Brookfield Communications Inc v West Coast Entertainment Corporation [1999] USCA9 74 ; 174 F3d 1036 (1999); Finance Express v Nowcom Corporation 564 FSupp2d 1160 (2008).


case_text: Moreover, the Federal Magistrate's comparison of the two domain names by substituting "company" for "com" and "Australia" for "au" is misplaced. The ".com" top-level domain signifies the sites' commercial nature, and the ".au" signifies where the domain is registered: see connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348 ; Prime Publishers Inc v American-Republican Inc 160 FSupp2d 266 (2001). The Federal Magistrate's commentary about the similarity in capitalisation of the website names is also not significant as web addresses are not capital-sensitive. 17 In connect.com.au Pty Ltd, Emmett J observed at [57] that for a descriptive name to become distinctive, "a very substantial amount of use in the relevant market would be necessary for it to acquire any secondary meaning". At [58] his Honour said: ...where a descriptive trade name is used there will always be the possibility of confusion...[and] where a descriptive trade name is used it will be difficult for that name to become distinctive of a particular business. Application to like businesses would not ordinarily mislead the public: see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216. 18 At [60] Emmett J earlier said: "There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind. Its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public." See also the discussion at [61] regarding possible confusion by the public where "descriptive words are used by two traders as part of their respective trade names", even where the trade names include differentiating words. 20 At 228 - 229 in the Hornsby Building case, Stephen J (with whom Jacobs J agreed) referred to the use of descriptive words in a business name as not entitling a claim for a monopoly in these words. At 229, his Honour referred to the concept stressed by Emmett J in connect.com.au Pty Ltd that "(t)here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name". See also Barwick CJ at 221 (with whom Aickin J agreed).


case_text: Similar observations have been made by Stephen J at 228 in the Hornsby Building case and by a Full Court of this Court in Dodds Family Investments Pty Ltd & Anor v Lane Industries Pty Ltd & Ors (2003) 26 IPR 261. 20 At 228 - 229 in the Hornsby Building case, Stephen J (with whom Jacobs J agreed) referred to the use of descriptive words in a business name as not entitling a claim for a monopoly in these words. At 229, his Honour referred to the concept stressed by Emmett J in connect.com.au Pty Ltd that "(t)here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name". See also Barwick CJ at 221 (with whom Aickin J agreed). 21 I also note that in Dodds Family Investments at 269, the Full Court said: The causative connection is reputation, an association in the minds of consumers between the originator's designation and its goods or services. Merely descriptive words will not ordinarily effect such an association: per Gummow, French, Hill JJ.


case_title: Finance Express v Nowcom Corporation 564 FSupp2d 1160 (2008)


case_outcome: applied

case_title: Hornsby Building Information Centre Pty Ltd v Sydney Building Information (1978) 140 CLR 216

case_text: At [17], by reference to the High Court's judgment in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd (1978) 140 CLR 216 , his Honour noted, correctly, that "...a party is not able to obtain a monopoly over a name which is not distinctive but rather descriptive." 11 At [63], his Honour referred to the names of the websites as using "common words". At [64] he referred to "the descriptive nature of the words". 17 In connect.com.au Pty Ltd, Emmett J observed at [57] that for a descriptive name to become distinctive, "a very substantial amount of use in the relevant market would be necessary for it to acquire any secondary meaning". At [58] his Honour said: ...where a descriptive trade name is used there will always be the possibility of confusion...[and] where a descriptive trade name is used it will be difficult for that name to become distinctive of a particular business. Application to like businesses would not ordinarily mislead the public: see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216.


case_text: Moreover, the Federal Magistrate's comparison of the two domain names by substituting "company" for "com" and "Australia" for "au" is misplaced. The ".com" top-level domain signifies the sites' commercial nature, and the ".au" signifies where the domain is registered: see connect.com.au Pty Ltd v GoConnect Australia Pty Ltd (2000) 178 ALR 348 ; Prime Publishers Inc v American-Republican Inc 160 FSupp2d 266 (2001). The Federal Magistrate's commentary about the similarity in capitalisation of the website names is also not significant as web addresses are not capital-sensitive.


case_text: Although the Federal Magistrate, at [65], considered the names of the two websites and the get-up of those sites in combination provided the requisite confusion, this finding is at odds with his Honour's earlier observation at [11] that the two sites are not strikingly similar. So much is evident, at least, when it is remembered that one site is a free service and another a subscriber based service thereby lessening possible confusion. As described by the Federal Magistrate the appearance of the two websites is not sufficiently similar to give rise to confusion on the basis of appearance alone or in combination with the names. The fact that some interested people may be confused between the two sites is an insufficient basis to establish a reasonable likelihood of an appreciable or relevant confusion. That is especially so where there is no finding as to whether the number of possible confused people was significant or otherwise. See Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181. 23 Having regard to the foregoing it is apparent that JEM's claim under the Act should not have succeeded. The lack of a finding about whether the words insurance, news and Australia - had acquired a distinctive meaning through extensive use is fatal to JEM's ability to maintain the orders it secured below. His Honour did not deal with the claim made by JEM under the tort of "passing off". Rather, his Honour found it unnecessary due to his finding that the respondents succeeded under the TPA. It may be likely that no such claim could be established. In any event, the parties consider, and I agree, that no different result would ensue concerning the passing off claim. The appeal should be allowed, the operative orders below set aside and the appellants should have their costs of the appeal and of the proceeding below. I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Marshall. Associate: Dated: 19 December 2008 Solicitor for the Appellants: Mahoneys Solicitors Counsel for the Appellants: Mr G McGowan SC with Mr P Ehrlich Solicitor for the Respondent: Davis Lawyers Counsel for the Respondent: Ms S Gatford Date of Hearing: 17 December 2008 Date of Judgment: 19 December 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/1966.html


case_text: On the first occasion such relief was sought, Kiefel J on 10 March 2005 declined to make orders of the Mareva kind but did make Anton Pillar orders by which the Respondents were ordered to permit the Applicant's solicitor, Mr Peter Mills, and other nominated persons together with independent supervising solicitors to enter the premises of the Respondents and search for, inspect and remove into the custody of the nominated individuals, documents listed in Schedule A of that order. The Respondents were also ordered to deliver up to the Applicant all originals and copies of the documents and classes of documents identified in Schedule A to the order. See: Lifetime Investments Ltd v Commercial (Worldwide) Financial Services Pty Ltd [2005] FCA 226. 4 Kiefel J declined to make a Mareva order on the basis that the evidence did not establish a real risk that the Second Respondent might dispose of or deal with his assets. Her Honour observed that the evidence established that the First Respondent did not have any assets. Her Honour further observed that the Applicant must establish a sufficient likelihood of risk which, in the circumstances of the particular case, justified an asset preservation order.


case_text: The Applicant now contends that since then, circumstances have changed and material is now available arising out of the execution of the Anton Pillar orders and other material which reveals facts from which, on an interlocutory basis, a conclusion can safely be reached that the Applicant has a demonstrated claim of real strength against both Respondents, inferences of dishonest conduct and the secretion of monies on the part of the Second Respondent are plainly open and there is a real risk that either the Second Respondent or third party entities controlled by the Second Respondent will dispose of "assets (including claims and expectancies) so as to frustrate the process of the Court by depriving the plaintiff of the fruits of any judgment obtained in the action": Jackson v Stirling Industries Ltd [1987] HCA 23 ; (1987) 162 CLR 612 per Deane J at 625. 6 The Applicant says this is the class of case where an analysis of the essential character of the conduct of the Second Respondent reveals duplicity and dishonesty and in such a case, the Court will readily draw an inference of real and serious risk to the Applicant of dissipation of assets, particularly movable assets. Accordingly, it will be necessary to examine the foundation of the Applicant's claims in a little more detail than usual for interlocutory purposes. 7 Accordingly, the Applicant seeks orders appropriately framed to serve the purpose of preventing the Second Respondent from effecting such a deprivation: Jackson v Stirling Industries Ltd (supra) at 625. 8 Orders are not sought against the First Respondent since, on 16 February 2006 a liquidator was appointed by the Supreme Court of Queensland to the First Respondent on the application of an unsecured creditor, Mr Roger de Saint Quentin. By operation of s471B of the Corporations Act 2001 (Cth), the Applicant cannot proceed with the present action against the First Respondent (which is being wound up in insolvency) or proceed with enforcement process in relation to property of the First Respondent except with leave of the Court and on such terms as the Court determines. No application has yet been made for leave to proceed against the First Respondent. The Applicant says, based upon searches and enquiries reflected in the affidavit material that the First Respondent has no identifiable assets. The Applicant says it is presently assessing its position in relation to the First Respondent. 9 On 19 April 2006, the liquidator wrote to Forbes Dowling, Lawyers, the agents for the solicitors for the Applicant advising that the liquidator would not appear at the hearing of the Notice of Motion and had no objection to the orders sought. Notwithstanding that letter, no interlocutory relief (and no leave) is sought against the First Respondent, in liquidation.


case_text: In determining whether an asset preservation order ought to be made, I am influenced by these considerations: 1. Although his Honour the Chief Justice of the Supreme Court of New South Wales, Gleeson CJ in Patterson v BTR Engineering (Aust) Ltd (1989) NSWLR 319 (Gleeson CJ, Meagher JA and Rogers A-JA) observed at page 321 that "... in addition to any other considerations that may be relevant in the circumstances of a particular case, as a general rule a plaintiff will need to establish, first, a prima facie cause of action against the defendant, and secondly, a danger that by reason of the defendant's absconding, or of assets being removed out of the jurisdiction or disposed of within the jurisdiction or otherwise dealt with in some fashion, the plaintiff, if he succeeds, will not be able to have his judgment satisfied", their Honours Gaudron, McHugh, Gummow and Callinan JJ in Cardile v LED Builders Pty Ltd [1999] HCA 18 ; (1999) 198 CLR 380 at 408 observed that the applicant "has to show a reasonably arguable case on legal as well as factual matters ". 2. The Mareva order for the preservation of assets is an expression of the development of doctrines and remedies to protect the integrity of the processes of the Court in the administration of justice. The scope of the order to be made in a particular case is conditioned by the source of the remedy and the power conferred by s.23 of the Federal Court Act 1976. 3. In respect of orders sought against parties to the proceeding against whom final relief is framed, the focus of the order is directed against the frustration of the Court's process. If relief is available against non-parties, the focus of the Court's intervention must be the administration of justice: Cardile v LED Builders Pty Ltd (supra) at page 401, paragraph 42. 4. The evidence may establish deliberate blurring and attempts at transferring of property rights and interests which go beyond mere mixing or intermingling of affairs and in the light of such evidence, there is a sufficient basis for the grant of the relief: Cardile v LED Builders Pty Ltd (supra) at page 402, paragraph 47. 5. Although the relief takes effect in personam, the availability of an equitable or other proprietary remedy such as tracing may be sufficient to constitute a substantive right in aid of which the Mareva relief, in personam, might go. Cardile v LED Builders Pty Ltd (supra) at page 405, paragraph 55. 6. The evidence may establish that the directors of a company against whom proceedings are brought are "mere conduits" for the transmission to a third party of funds received by a respondent. Such directors may exercise control over other entities which have received funds transferred by an applicant to a respondent on a certain basis. In assessing the activities of third parties generally, their Honours in Cardile v LED Builders Pty Ltd (supra) at page 405, paragraph 57 said this: "What then is the principle to guide the courts in determining whether to grant a Mareva relief in a case such as the present where the activities of third parties are the object sought to be restrained? In our opinion, such an order may, and we emphasise the word 'may' be appropriate, assuming the existence of other relevant criteria and discretionary factors, in circumstances in which: (i) the third party holds, is using, or has exercised or is exercising a power of disposition over or is otherwise in possession of, assets, including 'claims and expectancies' of the judgment debtor or potential potential debtor; or (ii) some process, ultimately enforceable by the courts, is or may be available to the judgment creditor as a consequence of a judgment against that actual or potential judgment debtor, pursuant to which, whether by appointment of a liquidator, trustee in bankruptcy, receiver or otherwise, the third party may be obliged to disgorge property or otherwise contribute to the funds or property of the judgment debtor to help satisfy the judgment against the judgment debtor". 7. The application of that principle is a matter of law although discretionary elements are involved. 8. In Patterson v BTR Engineering (Aust) Ltd (1989) NSWLR 319 at page 325, Gleeson CJ accepted the force of the criticism of the proposition that an applicant must show a "more than usual likelihood" of a defendant dealing with or disposing of his assets so as to defeat a plaintiff's claim. His Honour observed that "it may be that all that is meant is that the facts of the case disclose circumstances giving rise to such a likelihood other than the bare circumstances, which exists in the 'usual' case, that one person is being sued by another". His Honour also rejected a balance of probabilities test as too inflexible observing that "it is not difficult to imagine situations in which justice and equity would require the granting of an injunction to prevent dissipation of assets pending the hearing of an action even though the risk of such dissipation may be assessed as being somewhat less probable than not " . 9. In Patterson v BTR Engineering (Aust) Ltd (1989) NSWLR 319, the conduct in issue concerned a senior employee of BTR purchasing major items of equipment from overseas suppliers through a company interposed by the employee between the supplier and BTR. The employee fraudulently procured the overpayment by BTR for equipment purchases thus securing a secret commission of substance. In examining the evidence of that conduct, his Honour said: "... the evidence as to the nature of the scheme in which the appellant was allegedly involved, which established a prima facie case against him, was such as to justify the conclusion that there was a danger that the appellant would dispose of assets in order to defeat any judgment that might be obtained against him and that such danger was sufficiently substantial to warrant the injunction. There is no reason in principle why the evidence which is relevant to the first of the issues earlier referred to [a prima facie case] might not also have a bearing on the second, and this will especially be so where the prima facie case that is made out against the defendant is one of serious dishonesty involving diversion of money from its proper channels. The present is not a case in which a plaintiff who claims simply to be an unsecured creditor seeks to prevent a dissipation of assets which have no particular connection with the claim in question. This is a case in which the plaintiff claims that the defendant, making use of a corporation controlled by him, fraudulently misappropriated a large sum of money which, if it is still under the control of the appellant would be quite likely to constitute, directly or indirectly the bulk of his assets. As Giles J held, the nature of the scheme in which, on the evidence to date, the appellant appears to have engaged, is such that it is reasonable to infer that he is not the sort of person who would, unless restrained, preserve his assets in tact so that they might be available to his judgment creditor." 10. The Applicant may choose to lodge a proof of debt in the liquidation of the First Respondent. That proof might be accepted. If rejected, the Applicant may challenge the rejection. The liquidator might well consider whether monies have been transferred by individuals to other entities in circumstances which confer a basis for a claim by the liquidator against particular parties. It may be that certain third parties will be obliged to disgorge property or otherwise contribute to the funds or property of the First Respondent in satisfaction of an accepted or demonstrated claim against the First Respondent. The Applicant may seek to pursue an equitable or other proprietary remedy tracing its interest in the fund or the chose in action which may stand outside the liquidation rather than a claim for damages. 11. The Applicant has a prima facie case of a claim for monies had and received against the First or Second Respondents and may seek to pursue tracing remedies either at common law subject to the limitations upon the common law remedy or more particularly a tracing order in equity or particular declarations of charge again subject to the limitations upon the equitable remedies. As to those matters see: Recovering Lost Assets: Tracing at Common Law and in Equity , Mr David Murr SC (2006) 27 Australian Bar Review, 174. 12. A claim against either the First or Second Respondent for monies had and received will give rise to a prima facie obligation to make restitution to the Applicant, in the sense of compensation for the benefit of any unjust enrichment. In Australia and New Zealand Banking Group Ltd v Westpac Banking Corporation [1988] HCA 17 ; (1998) 164 CLR 662 at 673, Mason CJ, Wilson, Deane, Toohey and Gaudron JJ observed: "The common law right of action may arise in circumstances which also give rise to a resulting trust of specific property or funds or which would lead a modern court to grant relief by way of constructive trust. However, notwithstanding that the grounds of the action for recovery are framed in the traditional words of trust or use and that contemporary legal principles of restitution or unjust enrichment can be equated with seminal equitable notions of good conscience, the action itself is not for the enforcement of a trust or for tracing or the recovery of specific money or property. It is a common law action for recovery of the value of the unjust enrichment and the fact that specific money or property received can no longer be identified in that hands of the recipient or traced into other specific property which he holds does not of itself constitute an answer in a category of case in which the law imposes a prima facie liability to make restitution". 13. It may be, with the benefit of proper discovery and non-party discovery, that the passage of the actual funds will be identified beyond the account of CPFSP/L in a way which reveals the acquisition of specific assets out of the funds (or a part of the funds) or accounts (intermingled or mixed) which support a tracing order or a declaration of charge or a constructive trust. The Applicant claims by way of final relief the subsistence of a constructive trust and a tracing order. 14. In this case, the evidence for interlocutory purposes, establishes a strong prima facie case that monies were transferred by the Applicant to the First Respondent controlled by Mr and Mrs Wallader to be applied for a particular purpose in reliance upon Mr Wallader. A substantial proportion of the funds were transferred to another company controlled by Mr and Mrs Wallader. Mr Wallader chooses not to admit the receipt of the funds and has elected not to swear any affidavit disclosing the treatment of the funds. In the period since the receipt of the funds, the Applicant has expended significant sums in improving assets under his control or under the control of proprietary entities of which he is a director. Although there is no evidence that the actual funds transferred on or about 30 March to the First Respondent have been applied in a particular way (apart from the transfer of substantial funds to the account of CPFSP/L and the withdrawal of US$250,000.00) or to a particular asset, the inference is open that Mr Wallader has applied the monies to his own advantage or to the advantage of himself and his wife whether directly or by the vehicle of companies controlled by him. 15. Although the events leading to the agreement of 30 March 2001 and the transfer of the Applicant's funds occurred in March 2001, the evidence for interlocutory purposes, establishes an explanation for the election on the part of the Applicant not to commence proceedings until either it became clear that the investment would not be made by Mr Wallader or until efforts by ARL and the Applicant's solicitors failed to result in a refund of the investment monies as promised by Mr Wallader. 16. Although the Second Respondent says the action has been on foot for a year, the Applicant secured access to the documents pursuant to the Anton Pillar order relatively recently on 10 February 2006. Whilst the Respondents were not able to undertake the task of categorising of the documents into the privileged and non-privileged groups for eight weeks due to an illness on the part of Mr Wallader and other delays were explained on the basis of Mr Wallader suffering a bee sting which provoked an allergy reaction, the Respondents failed to comply with directions orders and ultimately took no step to assert privilege of any kind in respect of the documents. The Applicant was in effect held out of the benefit of the Anton Pillar order from the date of execution on 14 March 2005 until counsel for the Applicant saw the documents in Melbourne for the first time in the week beginning 13 February 2006. The execution of the Anton Pillar order failed to reveal bank statements for the National Australia Bank account to which the Applicant's funds were transferred and nor do the documents reveal the field of documents comprehended by paragraph 1 of Schedule A. 17. The conjunction of the failure on the part of the Second Respondent to effect a refund of the investment monies by the First Respondent as promised by him, his election to remain silent concerning the application of the funds and any material particular in relation to them, his election to put the Applicant to proof as to the receipt of the funds by the First Respondent, the delays in dealing expeditiously with the claim of privilege either on the ground of legal professional privilege or the privilege against self-incrimination thus preventing the Applicant from securing access to documents arising out of the execution of the Anton Pillar order, is evidence which has a strong bearing on the risk of a dealing in the assets of the Second Respondent or entities controlled by him so as to defeat the benefit of any judgment in terms of the relief claimed in the Statement of Claim. Although the Second Respondent says that the Applicant could and should have brought applications for third party discovery against various banks and other parties to discover the chain of dealing in the Applicant's funds, the Applicant is entitled to proceed on the basis that execution of the Anton Pillar order would properly reveal the receipt and treatment of the monies. 18. Although it is true that the real property assets of Mr and Mrs Wallader and the trustee of the Wallader Family Trust remain in place and unrealised, there have been substantial dealings in the assets and the creation of charges. Mr Wallader has not sworn to the value of the assets directly. Mr Watts has sworn to information from Mr Wallader of information given to Mr Wallader by a valuer but limited to the three domestic properties. No evidence has been provided of value in relation to Colinton Station . 19. It seems to me that by reason of all these factors, there is, in the light of all the material, a risk of dissipation of assets or a risk of a further dealing in assets which would be prejudicial to an effective remedy ordered in favour of the Applicant consequent upon a trial of the action. 20. In Cardile v LED Builders Pty Ltd (supra) at page 404, their Honours referred to a number of considerations demanding care in the exercise of the power to grant a Mareva order including difficulties associated with the quantification and recovery of damages pursuant to the undertaking should it transpire that the order ought not have been granted (see paragraph 52), the identification of the trigger events leading to dissolution of the order, discretionary considerations (see paragraph 53), the availability of and possible failure of the Applicant to take other proceedings which might be efficacious and the conditioning of the grant of the relief upon an undertaking by the Applicant to ensure as far as is possible, the expedition of the proceedings (see paragraph 53). 21. In this case, it may be difficult to assess and quantify damages pursuant to the undertaking as to damages. However, the strength of the claim is compelling. The difficulty of quantification of the claim might weigh more heavily in the exercise of the discretion if the Second Respondent had proffered some explanation as to the location of the funds or provided an explanation, by affidavit, of the apparent inconsistency between his election not to admit receipt of the monies and the sequence of oral and written communications contained in the affidavits of the Applicant. The Directions Orders provide for a trial of the action in approximately two months which provide the Second Respondent with a clear commitment from the Applicant to prosecute the action and the horizon by which the orders might be dissolved. The Second Respondent remains at liberty to make an application for security for costs should he choose to do so. 22. On the question of the susceptibility of the two instruments to stamp duty under Queensland legislation, that matter need not be resolved as the Applicant has now provided an undertaking to pay any stamp duty assessed to be payable in respect of the Agreement or the Deed of Guarantee and Indemnity.


case_title: Cardile v LED Builders Pty Ltd [1999] HCA 18 ; (1999) 198 CLR 380


case_title: Australia and New Zealand Banking Group Ltd v Westpac Banking Corporation [1988] HCA 17 ; (1998) 164 CLR 662