case_text: Ms Kidson, counsel for the appellant, also referred to the decision of Deputy President Hack and Member Carstairs in Re Secretary, Department of Employment and Workplace Relations and QX2006/1 [2006] AATA 372 ; (2006) 90 ALD 320 ( QX2006/1 ). In that case, the applicant had applied for and received benefits using an assumed identity. After discovering the use of a false name, the Department sought to recover the payments made. It was acknowledged that had the applicant applied using his real name, he would have been entitled to the benefits paid. The applicant argued, amongst other things, that the debt should be waived under s 1237AAD. That case, therefore, is somewhat different to that under consideration here. The case was decided on other grounds; however the Tribunal made the following comments, which may be seen as relevant, with regard to "special circumstances" in s 1237AAD(b) (at 329-330): We are well satisfied that special circumstances exist where the payments made are identical to those to which the respondent would have been entitled had he applied in his own name. Provisions of this nature are designed to protect the revenue and permit the recovery of payments made in excess of an entitlement. Here, were it to be determined that there was a debt, the fact that the respondent had an equivalent, but not claimed, entitlement takes the present case out of the ordinary run of cases and gives to it a "special" character. (Emphasis added). 63 The view reflected by the Tribunal in Lyster, Huynh, Dobbie, Sara, and QX2006/1 referred to above, to the effect that notional entitlement is not necessarily excluded in considering whether "special circumstances" exist, for the purposes of s 1237AAD, is correct. 64 It follows that, in my view, notional entitlement should not be excluded from the range of available relevant considerations in deciding whether there are "special circumstances" to waive a debt under s 1237AAD. 65 The Tribunal's conclusion to the contrary, expressed in the first two sentences of [48] of its reasons, is wrong.


case_outcome: approved

case_text: In Schulze , the applicant had been overpaid a parenting allowance, following which the Department raised and sought to recover the debt. The sole question for the Tribunal was whether the debt should be waived. Following consideration of the phrase "special circumstances" and what was required to show such circumstances, Deputy President Jarvis addressed the applicant's argument that a notional entitlement of his son should be considered. The Deputy President said, at [34]-[35]: 34. The applicant also urged the Tribunal to consider the notional entitlement of his son to Youth Allowance as a further special circumstance... 35. Notional entitlement has been found to constitute part of the factual matrix of special circumstances in several cases such as Re Secretary, Department of Family and Community Services and Lyster (2000) 59 ALD 587. However, I note that the legislature has seen fit to amend the Act to provide for set-off of notional entitlement in the circumstances provided for in s 1237AAC. That provision provides for set-off of notional entitlement in only very limited circumstances and by reference to specific payments. It was the respondent's contention that any attempt to expand notional entitlement by virtue of the special circumstances provision would defeat the intention of Parliament. I think this submission is well founded. In addition, I consider, in any event, that as it is the applicant's son, and not the applicant, who is notionally entitled to youth allowance, the failure of the applicant's son to apply for a payment to which he would have personally been entitled, in circumstances in which the applicant can only estimate what portion of those moneys would have been paid to him and his wife, does not form a sound basis for consideration of waiver of a debt involving public moneys.


case_outcome: considered

case_text: The Full Federal Court in Riddell v Secretary, Department of Social Security [1993] FCA 261 ; (1993) 42 FCR 443 ( Riddell ) held, at 450: Each particular case must be considered on its merits. It is the essential nature of the provision to create a broad discretion to meet the great variety of circumstances which must occur, raising considerations of individual hardship, need, fairness, reasonableness, and whatever else may move an administrator, keeping in mind the scope and purposes of the Act, to make a decision one way or the other. 56 As Beadle, Hales and Riddell indicate, the wording of the section is broad and does not, financial hardship alone aside, impose a fetter on the matters which may be considered by the decision maker. See also Trimboli v Secretary, Department of Social Security (1989) 86 ALR 64 at 73, and Angelakos v Secretary, Department of Employment and Workplace Relations (2007) 100 ALD 9 at [33]).


case_text: It is also important, however, not to pick apart the reasons of an administrative tribunal in search of error. Kirby J in Roncevich v Repatriation Commission [2005] HCA 40 ; (2005) 222 CLR 115 stated, at 135: ... sufficient reasons on the part of the Tribunal would be required to make the system of appeals effective and to fulfil its assumptions. 74 His Honour further observed, at 136: Courts conducting [judicial] review have been repeatedly enjoined by this Court to avoid overly pernickety examination of the reasons.


case_outcome: applied

case_text: French J in Secretary, Department of Employment and Workplace Relations v Homewood (2006) 91 ALD 103 made the following relevant observations, at 111: [40] The obligations set out in s 43 are not necessarily discharged by merely setting out findings on material questions of fact, referring to the evidence on which those findings are based and then stating a conclusion. There will always be some legal rule or principle or discretion to apply. It may be that a rule or principle, like the major premise of a syllogism, will embody the factual circumstance necessary to give rise to a right or liability. Then it may be sufficient to state that rule or principle in the reasons, the facts found as the minor premise, the evidence on which they are based and the result which follows. Not all, and perhaps not many results are so easily explained. Whether the reasoning is syllogistic or otherwise, the tribunal will have discharged its duty under s 43 if its reasons disclose its findings of fact, the evidence on which they were based and the logical process by which it moved from those findings to the result in the case. [41] Where a case involves the exercise of a discretion, the tribunal's duty is not discharged by setting out the findings of fact necessary to enliven the relevant discretion. That is so even in a case in which the enlivening facts are of an evaluative character, such as the existence of special circumstances. What must appear from the reasons is why the discretion was exercised in the way it was.


case_outcome: followed

case_text: French J (as he then was) in Secretary, Department of Social Security v Hales (1998) 82 FCR 154 ( Hales ) noted, at 161: Beadle v Director-General of Social Security (1985) 60 ALR 225 [Beadle] is a decision of the Full Court of the Federal Court on appeal from Toohey J sitting as a presidential member of the Tribunal: see Re Beadle and Director-General of Social Security (1984) 6 ALD 1. The case concerned a claim for family allowance lodged more than six months after the eligibility date. In such a case payment could be backdated only in "special circumstances" (s 102 of the Social Security Act 1947 (Cth)). Even within the narrow confine of "special circumstances" which would support a discretion to overlook the delay, the Court said it "[did] not think it is possible to lay down precise limits or precise rules". The phrase, although lacking precision, was in the Court's view, "sufficiently understood ... not to require judicial gloss": Beadle v Director-General of Social Security at 228. His Honour continued at 162: The concept of special circumstances is broad. A constellation of factors, including financial circumstances, may fall within it. The express exclusion of financial hardship alone as a special circumstance is an indicator that it would otherwise be included. This gives some measure of the range of circumstances which will qualify as special. But as a matter of grammar and ordinary logic, the exclusion of financial hardship alone as a special circumstance does not mandate its inclusion in the range of matters constituting such circumstances for the purpose of enlivening the Secretary's discretion. ... The evident purpose of s 1237AAD is to enable a flexible response to the wide range of situations which could give rise to hardship or unfairness in the event of a rigid application of a requirement for recovery of debt. It is inappropriate to constrain that flexibility by imposing a narrow or artificial construction upon the words. It may be that there will be few cases in which the Secretary will be satisfied that there are special circumstances in the absence of financial hardship. It may be that there are few cases in which having found special circumstances to exist, the Secretary would exercise the discretion to waive in the absence of financial hardship. But to anticipate the limits of the categories of possible cases by imposing on the language of the section a fetter upon its application which is not mandated by its words, is to erode its useful purpose. (Emphasis added). 78 Further, the respondent argues that the discussion in paragraph [41] of French J's judgment regarding decisions involving discretion is not relevant. This is because the existence or otherwise of special circumstances is a question of fact; the issue of discretion does not arise. Such an argument finds support in French J's statement in Hales that (at 162) " [The discretion to waive] is only enlivened when the Secretary is satisfied that the three conditions specified in (a), (b) and (c) of the section are met. " It is argued that the Tribunal set out the principle, set out the materials before it, and then by its comment that the appellant's circumstances were not outside of the ordinary run of cases, and were not so special as to justify waiver, reached a factual conclusion sufficient to discharge its obligations. 79 The Tribunal set out at paragraph [17] of its reasons the basic findings of fact from which the decision proceeded. Those findings related primarily to the debts owed, the appellant's physical and mental state, correspondence and other contact between the appellant and Centrelink, and the appellant's financial situation. 80 The Tribunal then moved to a consideration of the authorities as they relate to the phrase "special circumstances". In particular, the cases on the use of the phrase "unusual, uncommon or exceptional" were examined, along with other paraphrases used to aid interpretation of what can be "special circumstances". The Tribunal concluded by saying that such paraphrases "... cannot supplant the statutory language" (at [38]) and that "... the clear and ordinary meaning of the words "special circumstances" is the meaning that should be assigned to them." (at [39]).


case_text: The High Court in The Queen v Australian Broadcasting Tribunal; Ex parte 2HD Pty Ltd [1979] HCA 62 ; (1979) 144 CLR 45 said, at 50. However, it is not a legitimate approach to interpretation to compare a statutory discretion which is expressed in unlimited terms as to one subject with another discretion in the same statute which is confined to specified considerations with reference to a different subject and thereby conclude that the first discretion necessarily excludes the considerations specified in relation to the second discretion. The general rule is that a discretion expressed without any qualification is unconfined except in so far as it is affected by limitations to be derived from the context and scope and purpose of the statute. The fact that a discretion relating to a different subject matter is confined to a particular consideration provides no rational reason for saying that another discretion expressed without qualification does not embrace that particular consideration. Applied to the criterion of public interest, the argument is even less attractive. It would bring about the result, if accepted, that a discretion generally expressed may extend to any factor except public interest merely because another discretion directed to a very different subject matter is limited to the exclusive criterion of public interest. 61 Further, the thrust of s 1237AAC, although also dealing with debt relief, is significantly different. Section 1237AAC deals with specifically enumerated benefits in particular situations which, if found, have mandatory consequences; that is, if it is shown that there was an entitlement to a particular benefit which was unclaimed, the debt must be waived. That is not the case in s 1237AAD. That section provides a more general avenue for relief, and grants a broad discretion to the Secretary to waive debts, having regard to the way in which the debt resulted, any special circumstances that might exist, and the appropriateness of waiving the debt. 62 The words in s 1237AAD(b) should not be fettered, or narrowed, in the manner argued for by the respondent and accepted by the Tribunal in this case. 68 In oral argument, Mr Rangiah, counsel for the respondent, submitted that the reason for this was that the Tribunal considered the matter should not be given any weight in the circumstances of the case. The Court was asked to infer from the Tribunal's opinion that " The notional entitlement of the Applicant ... is not sufficiently unusual, uncommon or exceptional as to justify special circumstances waiver" , that the Tribunal did in fact consider the appellant's notional entitlement within the range of relevant factors going to special circumstances, but gave it no weight, and for that reason it was unnecessary to mention it specifically. 69 In my opinion, following its conclusion that notional entitlement could not of itself amount to special circumstances, the Tribunal did not mention notional entitlement as one of a range of relevant considerations, simply because it did not consider it relevant. It follows that, in my judgment, the Tribunal misdirected itself in deciding whether special circumstances existed for the purposes of waiver under s 1237AAD of the Social Security Act. Ground one of the Notice of Appeal has therefore been made out. 70 The appellant argues that the Tribunal's reasons are insufficient to discharge its obligations under ss 43(2) and (2B) of the AAT Act. Those sections provide: (2) Subject to this section and to sections 35 and 36D, the Tribunal shall give reasons either orally or in writing for its decision. ... (2B) Where the Tribunal gives in writing the reasons for its decision, those reasons shall include its findings on material questions of fact and a reference to the evidence or other material on which those findings were based.


case_outcome: cited

case_text: As Beadle, Hales and Riddell indicate, the wording of the section is broad and does not, financial hardship alone aside, impose a fetter on the matters which may be considered by the decision maker. See also Trimboli v Secretary, Department of Social Security (1989) 86 ALR 64 at 73, and Angelakos v Secretary, Department of Employment and Workplace Relations (2007) 100 ALD 9 at [33]).


case_text: In Vock v Repatriation Commission [2005] FCA 967 , Tamberlin J said, at [17]: The rationale for the requirement that a decision-maker spell out the reasons for its conclusions on substantial issues is the need to inform the public and the parties with an immediate interest in the outcome of the proceedings of the manner in which the decision was arrived at. This, in turn, enables a determination to be made as to whether an error of law has been committed by the decision-maker. ...


case_text: The third ground of appeal, raising as it does a contention that there has been an " improper exercise of the power conferred " was not further developed. It should be rejected. It was not a ground advanced for resolution before the Federal Magistrate and, for that reason alone, it should not now be entertained -- especially in the absence of any explanation as to why it was not previously relied upon ( Coulton v Holcombe [1986] HCA 33 ; (1986) 162 CLR 1) and because of the uncertainty as to what is intended to be embraced within its terms. Moreover, whether the proposed ground is directed to the Tribunal or, as expressed, the Federal Magistrates Court, it is not made out. 19 Accordingly, the appeal must be dismissed and there is no reason why the usual approach should not be adopted in respect to costs. 20 The orders of the Court are: 1. Appeal dismissed. 2. The Appellant to pay the costs of the First Respondent of and incidental to the appeal. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick. Associate: Dated: 5 March 2008 The Appellant: In person Counsel for the First Respondent: J D Smith Solicitor for the First Respondent: Z McDonald (DLA Phillips Fox) Date of Hearing: 5 March 2008 Date of Judgment: 5 March 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/256.html


case_title: Minister for Immigration & Multicultural & Indigenous Affairs v Lay Lat [2006] FCAFC 61 , 151 FCR 214

case_text: Section 422B , contained within Division 4, is of present significance and provides as follows: Exhaustive statement of natural justice hearing rule (1) This Division is taken to be an exhaustive statement of the requirements of the natural justice hearing rule in relation to the matters it deals with. (2) Sections 416 , 437 and 438 and Division 7A, in so far as they relate to this Division, are taken to be an exhaustive statement of the requirements of the natural justice hearing rule in relation to the matters they deal with. (3) In applying this Division, the Tribunal must act in a way that is fair and just. The legislative intent was to set forth a comprehensive procedural code containing detailed provisions for procedural fairness and an exclusion of the common law natural justice hearing rule, although not other aspects of the common law rules such as the bias rule: Minister for Immigration & Multicultural & Indigenous Affairs v Lay Lat [2006] FCAFC 61 at [66] , [2006] FCA 61 ; 151 FCR 214 at 225. See also: SZINJ v Minister for Immigration & Citizenship [2007] FCA 1742 at [19] .


case_title: Minister for Immigration & Multicultural & Indigenous Affairs v SGLB [2004] HCA 32 , 207 ALR 12

case_text: The Tribunal simply did not accept the materials advanced on behalf of the now Appellant as making out his claims. Thus, for example, the Tribunal in its reasons addressed the claims advanced by reason of the Appellant being a Muslim married to a Christian woman. The Tribunal continued: ...However, the Applicant has presented no information to indicate that members of such a particular social group experience harm in Bangladesh, let alone that any such harm is experienced for reason of their membership of that group. In the absence of any information on which to base a consideration of this claim I am not satisfied that there is a real chance that the Applicant would suffer serious harm amounting to persecution for this reason if he were to return to Bangladesh. There is no procedural unfairness or contravention of any provision within Part 7 Div 4 of the 1958 Act in the Tribunal so proceeding. The Tribunal conducts an inquisitorial review of the claim made and has a power " to get any information that it considers relevant ": s 424(1). But the Tribunal is under no general duty or obligation to obtain further information: Minister for Immigration & Multicultural & Indigenous Affairs v SGLB [2004] HCA 32 at [43] , [2004] HCA 32 ; 207 ALR 12 at 21 per Gummow and Hayne JJ. 15 The Tribunal, moreover, simply did not accept in identified respects the account given. The Tribunal thus finds, for example: ... I do not accept that the Applicant did, in fact live in hiding in the nine months before he left Bangladesh. I am strengthened in this view by the inconsistency between the Applicant's claimed fear of arrest and the fact that he stayed on in Bangladesh for this nine month period ...


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

case_text: It may be accepted that compliance with s 424A is mandatory and that a breach of that provision constitutes jurisdictional error: SZBYR v Minister for Immigration & Citizenship [2007] HCA 26 at [13] , [2007] FCA 26 ; 235 ALR 609. 13 But there has been no contravention of s 424A. 17 A tribunal's disbelief of evidence arising from inconsistencies cannot be characterised as " information " within the meaning of s 424A(1): SZBYR v Minister for Immigration & Citizenship [2007] HCA 26 at [18] , [2007] FCA 26 ; 235 ALR 609 at 616 per Gleeson CJ, Gummow, Callinan, Heydon and Crennan JJ.


case_title: SZFDE v Minister for Immigration & Citizenship [2007] HCA 35 , 237 ALR 64

case_text: The grounds thus refer to " jurisdictional error ", " procedural fairness " and " natural justice ." To put this terminology into context, Part 7 of the Migration Act 1958 (Cth) provides for the review of protection visa decisions. Division 4 of that Part deals with the conduct of review undertaken by the Refugee Review Tribunal. This Division establishes a detailed regime for the review by the Tribunal and differs significantly from the procedures of inter partes civil litigation: SZFDE v Minister for Immigration & Citizenship [2007] HCA 35 at [30] , [2007] HCA 35 ; 237 ALR 64 at 72.


case_title: SZINJ v Minister for Immigration & Citizenship [2007] FCA 1742


case_title: Re Minister for Immigration & Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 , 168 ALR 407

case_text: Reference may also be made to other like findings made by the Tribunal. Previously, for example, the Tribunal had expressed its lack of satisfaction " as to the truth of the Applicant's claim that he was falsely accused of murder, that an arrest warrant was issued for him and that he was convicted and sentenced in absentia after he left Bangladesh ." The Tribunal also set forth what it considered to be inconsistencies in the account being provided to it. These are findings " on credibility which is the function of the primary decision-maker par excellence ": Re Minister for Immigration & Multicultural Affairs; Ex parte Durairajasingham [2000] HCA 1 at [67] , 168 ALR 407 at 423 per McHugh J. Such findings are not susceptible of review by either this Court or the Federal Magistrates Court.


case_outcome: referred to

case_text: prima facie case is made out if, on the material before the court, inferences are open which, if translated into findings of fact, would support the relief claimed (per French J, as his Honour then was, in State of Western Australia v Vetter Trittler Pty Ltd (In liq) (Receiver and Manager Appointed) (1991) 30 FCR 102 at 110).


case_text: matter stipulated in respect of which the court is to be satisfied does not call for the kind of scrutiny that would occur in a submission of 'no case to answer' following the closure of an applicant's case at trial. A court may, when confronted with an application for leave, draw inferences more readily in favour of an applicant, bearing in mind, amongst other things, that the applicant will not have had the advantage of discovery, subpoenas and other procedural aids to the making out of a prima facie case at trial (per Heerey J in Merpro Montassa Limited v Conoco Speciality Products Inc [1991] FCA 70 ; (1991) 28 FCR 387 at 390).


case_text: relation to satisfying the court that an applicant has a prima facie case for the relief claimed by it, such a preliminary question should not call for a substantial inquiry. The kind of evidence adduced on a preliminary inquiry of this kind should be in proportion to the nature of such an interlocutory issue. The purpose of the inquiry is to determine by way of a mini rather than a mega trial whether the applicant has a prima facie case (per Beaumont J in WSGAL Pty Limited v Trade Practices Commission [1992] FCA 510 ; (1992) 39 FCR 472 at 476). Whatever is required to satisfy the court that there is a prima facie case, that satisfaction should leave open the possibility that the respondent could move to strike out the statement of claim or invoke s 31A of the Federal Court of Australia Act 1976 (Cth) ('Federal Court Act'), which makes provision for orders for, amongst other things, summary dismissal or provisions of the Rules which provide for the summary disposition of proceedings. To do otherwise may be setting too high a threshold for service out of the jurisdiction.


case_text: in extreme cases, Order 8 rule 3(2)(c) will not require a prima facie case in respect of each cause of action pleaded or contended for. If a prima facie case for a particular form of relief is made out on one cause of action, it is immaterial that a prima facie case for the same relief on another cause of action may not be made out (per Lindgren J in Cell Tech Communications Pty Ltd v Nokia Mobile Phones (UK) Ltd (1995) 58 FCR 365 ('Cell Tech') at 373; see also per Carr J in Bray v F Hoffman-La Roche Ltd (2003) 130 FCR 317 ('Bray') at [47]-[55] and per Branson J at [176]-[191]). In Cell Tech a joint venture business had failed. Cell Tech's application was accompanied by a statement of claim seeking damages. Three causes of action were relevantly pleaded, two of which were against Nokia. As against Nokia, Cell Tech pleaded that it breached implied terms and conditions as to fitness for purpose and merchantable quality in respect of goods which it sold to Cell Tech. The other cause of action pleaded against Nokia was that it breached the terms and conditions of a Licence Agreement between Cell Tech and Nokia. Lindgren J observed that there was a significant overlap between the facts on which the two causes of action were based. His Honour proceeded on the basis that: '...if a prima facie case against Nokia for damages based on either cause of action is established it becomes unnecessary ... to decide whether a prima facie case for the same relief based upon the other cause of action [was] also made out.' (at page 373) Lindgren J held that Nokia's claim for relief under Order 9 rule 7(1)(a), (b), (c) and (d) should be dismissed. Conclusions Contrary to Fujitsu Limited's submission, Lindgren J did not hold that a court could not be satisfied in respect of the matter covered by Order 8 rule 3(2)(c) of the Federal Court Rules unless the applicant satisfied the court that it had a prima facie case for 'the relief claimed by it' in the sense of each and every element of the relief claimed. Apart from other considerations such a construction would be absurd. How, one might task, could a prima facie case for relief which is at the discretion of the court under s 87 of the Trade Practices Act or under s 51A of the Federal Court Act or for costs, be the subject of the requisite satisfaction.


case_text: in extreme cases, Order 8 rule 3(2)(c) will not require a prima facie case in respect of each cause of action pleaded or contended for. If a prima facie case for a particular form of relief is made out on one cause of action, it is immaterial that a prima facie case for the same relief on another cause of action may not be made out (per Lindgren J in Cell Tech Communications Pty Ltd v Nokia Mobile Phones (UK) Ltd (1995) 58 FCR 365 ('Cell Tech') at 373; see also per Carr J in Bray v F Hoffman-La Roche Ltd (2003) 130 FCR 317 ('Bray') at [47]-[55] and per Branson J at [176]-[191]). Ho v Akai Pty Limited (in liquidation) [2006] FCAFC 159 ; (2006) 24 ACLC 1526 ('Ho') was an appeal from a judgment of Gyles J given under Order 9 rule 7 of the Federal Court Rules . The only issue before Gyles J was whether Akai Holdings and its liquidator had established a prima facie case for the relief sought in the proceeding against Mr Ho which satisfied Order 8 rule 3(2)(c) or its predecessor. Questions arose as to whether Mr Ho had a liability as a 'shadow director' and also whether he had a liability as an 'officer' of Akai Australia. Gyles J concluded that there was no sufficient basis for raising an arguable case that Mr Ho was a shadow director, but that there was an arguable case that he was an 'officer' of Akai Australia. Because of the construction given to Order 8 rule 3(2)(c), or its predecessor in Bray , the finding that there was a prima facie case that Ho was an officer of Akai had the consequence that he could be proceeded against on both the 'officer' and 'shadow director' bases, Gyles J having held that a prima facie case had been made out 'for the relief sought'. In Ho Finn, Weinberg and Rares JJ granted leave to appeal from the judgment of Gyles J but proceeded to dismiss each appeal. At [56] their Honours observed, by way of obiter dicta, that: '...[A]ccording to Bray , it is not the similarity in elements of the cause of action that is brought into question for O 8 r 2(2)(c) purposes. Rather it is similarity in the relief sought.' Finn, Weinberg and Rares JJ considered that the difference between the two types of claim for relief in insolvent trading cases did not reflect in substance merely a choice as to two different measures of compensation. They observed that the two species of relief served different purposes, had different statutorily prescribed measures and were required to be specified individually in an application, including an application served out of the jurisdiction. In those circumstances their Honours opined that relief sought under s 1317H of the Corporations Act 2001 (Cth) was not the same as that sought under s 588J (or for that matter s 588M). In addition, they described s 1317H as a general provision but s 588J (or s 588M) as a specific provision creating a remedy in a particular situation. They observed that the ordinary principle of statutory construction was that in cases in which ss 588J or 588M provided a remedy, s 1317H , being a general provision, would not apply. In the circumstances, Finn, Weinberg and Rares JJ doubted the correctness of Gyles J's conclusion that the principle in Bray's case would save the shadow director claim against Mr Ho from being struck out. The observations so made were qualified by their Honours saying at [58]: 'However, because of the different conclusion we have reached in that claim to that of Gyles J, the views we have expressed above on the application of Bray have no actual consequence.' In my opinion Ho is not authority for the proposition that satisfaction under Order 8 rule 3(2) cannot be reached unless an applicant has a prima facie case for each and every item of relief claimed in the proceeding. If, at an interlocutory stage, a prima facie case is made out for trade practices relief, it matters not whether that relief is ordered under s 82 or 87 of the Trade Practices Act or s 68 or s 72 of the Fair Trading Act . They provide choices in respect of the same conduct. In relation to claims for relief under s 87 of the Trade Practices Act and/or s 72 of the Fair Trading Act no greater specificity is required than is contained in the applicant's prayer for relief numbered 2 in its Amended Application. The present case is not one where discrete relief is applicable for a particular contravention of one provision of the relevant legislation and different relief is applicable where there is a contravention of a different provision in the same legislation. The first respondent's further submission that the applicant's claims for relief under the Trade Practices Act and/or the Fair Trading Act (NSW) ought not to be permitted, since the entirety of the wrongful conduct on its behalf, assuming it to be wrongful, occurred outside Australia, should be rejected. The concession made by Fujitsu Limited that the brochure published and printed in English in the United States of America was made available for distribution in Australia by it and that it was involved in the use in Australia of that promotional material, coupled with Fujitsu Limited's provision to/making available of copies of the brochure in English printed by it in Japan, to Fujitsu Australia Limited, which disclosed that Fujitsu Australia Limited was Fujitsu Limited's 'local representative', is quite inconsistent with the first respondent's submission.


case_title: Ho v Akai Pty Limited (in liquidation) [2006] FCAFC 159 ; (2006) 24 ACLC 1526

case_text: v Akai Pty Limited (in liquidation) [2006] FCAFC 159 ; (2006) 24 ACLC 1526 ('Ho') was an appeal from a judgment of Gyles J given under Order 9 rule 7 of the Federal Court Rules . The only issue before Gyles J was whether Akai Holdings and its liquidator had established a prima facie case for the relief sought in the proceeding against Mr Ho which satisfied Order 8 rule 3(2)(c) or its predecessor. Questions arose as to whether Mr Ho had a liability as a 'shadow director' and also whether he had a liability as an 'officer' of Akai Australia. Gyles J concluded that there was no sufficient basis for raising an arguable case that Mr Ho was a shadow director, but that there was an arguable case that he was an 'officer' of Akai Australia. Because of the construction given to Order 8 rule 3(2)(c), or its predecessor in Bray , the finding that there was a prima facie case that Ho was an officer of Akai had the consequence that he could be proceeded against on both the 'officer' and 'shadow director' bases, Gyles J having held that a prima facie case had been made out 'for the relief sought'. In Ho Finn, Weinberg and Rares JJ granted leave to appeal from the judgment of Gyles J but proceeded to dismiss each appeal. At [56] their Honours observed, by way of obiter dicta, that: '...[A]ccording to Bray , it is not the similarity in elements of the cause of action that is brought into question for O 8 r 2(2)(c) purposes. Rather it is similarity in the relief sought.'


case_text: Mason CJ, Deane, Dawson and Gaudron JJ said in Voth v Manildra Flour Mills Proprietary Ltd [1990] HCA 55 ; (1990) 171 CLR 538 at 568: 'If a statement is directed from one place to another place where it is known or even anticipated that it will be received by the [applicant] , there is no difficulty in saying that the statement was, in substance, made at the place to which it was directed, whether or not it is there acted upon. ...'


case_text: to the first respondent's submissions, Hunter Grain Pty Ltd v Hyundai Merchant Marine Co Ltd [1993] FCA 133 ; (1993) 117 ALR 507 ('Hunter Grain') does not support the first respondent's position. Hunter Grain was a decision of Sheppard J in a matter in which the Court had jurisdiction under the Admiralty Act 1988 (Cth). There were two defendants, the second being a company identified by the abbreviation 'Malaysian' and the first was Hyundai Merchant Marine Co Ltd ('Hyundai'). The second defendant owned the ship known as the 'Bunga Kenanga' and the first defendant was the charterer of that ship. The ship was also the subject of a voyage charter made between the first defendant and PS International Ltd of Indiana in the United States of America. The case concerned the shipment of 3,352 tonnes of soyabean meal in bulk from Portland, Oregon, in the United States, to Brisbane. When the soyabean meal was loaded on to the ship it became contaminated by the introduction of a substantial quantity of soda ash (sodium carbonate) into the hold. The problem arose because there was a residue of soda ash in the loading equipment used to load the ship. The shipper, PS International Ltd, was the vendor of the soyabean meal. A clean bill of lading was signed by a person designated at 'Authorised Rep of Carrier or Master'. Under the heading 'Consignee' were typed the words 'To Shippers Order'. The plaintiff, Hunter Grain Pty Limited, was the party to be notified of the arrival of the ship. The bill of lading was endorsed to the plaintiff. Accordingly, it had transferred to it and vested in it all rights of action in respect of the goods as if the contract contained in the bill of lading had been made with it. Sheppard J held that the trade practices cause of action must fail because relevantly, the conduct of the first defendant and its agent concluded when the 'Authorised Rep of Carrier or Master' signed the bill of lading on behalf of the first defendant and sent it to the vendor, PS International Limited's forwarding agents in the United States. The conduct said to be misleading or deceptive of which the plaintiff complained, so far as it concerned each of the defendants, was undertaken entirely in the United States. PS International Ltd was not a defendant. Whilst it was open to the Court to impute to Hyundai knowledge that the bill of lading would be used by the shipper to obtain payment for the cargo and Hyundai's employees and agents knew that it was important that the bill contain a clean receipt, otherwise the bank would not pay under the letter of credit, Sheppard J held that the relevant wrongful act in relation to the bill of lading was committed by PS International Ltd when it proffered the bill of lading to the plaintiff and its bank, which events did occur in Australia. The present case is not one where the entirety of Fujitsu Limited's wrongful conduct, assuming it to be wrongful, occurred in Japan or other places in the world outside Australia. It was in Australia that Fujitsu Limited made its brochures, whether printed in the United States of America or Japan, available for proliferation amongst potential purchasers of Fujitsu MPG3 hard disk drives. The final submission of the first respondent was to the effect that conduct engaged in by Mr Rixon in providing brochures about Fujitsu MPG3 hard disk drives and the making of representations in relation to them could not be said to be conduct engaged in on behalf of Fujitsu Limited. Even if this were correct, it would not assist the first respondent given that it made the brochures about Fujitsu MPG3 hard disk drives available in Australia to Fujitsu Australia Limited for proliferation amongst potential purchasers of its MPG3 hard disk drives.


case_text: any event, I would respectfully adopt the view expressed by Lindgren J in NMFM Property Pty Ltd v Citibank Ltd [2000] FCA 1558 ; (2000) 107 FCR 270 at [1244] which accorded with the view taken by Kiefel J in Lisciandro v Official Trustee in Bankruptcy [1995] FCA 1527 ; [1995] ATPR 41-436 at 40,903-40,904. Lindgren J's view was that an act is done 'on behalf of' a corporation for the purpose of s 84(2) of the Trade Practices Act if, relevantly, the actor engaged in the conduct intending to do so 'for' the corporation. In this case it could be said that Mr Rixon handed over brochures provided by Fujitsu Limited to the applicant 'for' Fujitsu Limited, whose brochures they were, even though he was himself an employee of Fujitsu Australia Limited. Why else, one might ask, would Fujitsu Limited have made the brochures available in Australia if not to assist in promotion of the sale of its MPG3 hard disk drives? It would seem to me that, on an interlocutory basis, it could be said that Mr Rixon's conduct was conduct engaged in with, at least, the implied consent of the director, servant or agent of Fujitsu Limited responsible for the promotion of the sale of Fujitsu MPG3 hard disk drives in Australia, sufficient to constitute Mr Rixon's conduct, conduct of Fujitsu Limited in accordance with s 84(2)(b) of the Trade Practices Act .


case_title: Lisciandro v Official Trustee in Bankruptcy [1995] FCA 1527 ; [1995] ATPR 41-436


case_text: There was once a time when an appeal to a Full Court of this Court was conceived to be an appeal in a strict sense than rather than an appeal by way of rehearing, the root authority for the former proposition being Duralla Pty Ltd v Plant [1984] FCA 146 ; (1984) 2 FCR 342. That early conception is now regarded as erroneous: Minister for Immigration v Jia Legeng [2001] HCA 17 ; (2001) 205 CLR 507 , at 533, [75], 544, [120] fn (98); Branir Pty Ltd v Owston Nominees (No 2 ) Pty Ltd [2001] FCA 1833 ; (2001) 117 FCR 424 at 434-435, [20] . Even so, that is not a licence to conduct a case in the appellate jurisdiction of this Court as if there had been no exercise of an original jurisdiction or as if an appellant had not chosen to conduct his case in a particular way and on particular grounds in that jurisdiction. The conduct of the Appellant's case on appeal exhibited a tendency, by no means unique in appeals in matters arising under the Migration Act , to treat an appeal to this Court as if it were an exercise in the direct supervision by judicial review of an Administrative Tribunal, rather than an appeal from a judicial decision. Subject to s 75(v) of the Constitution and to exceptions in the Act which are not presently material, the judicial review role in respect of a decision of the Tribunal is consigned by s 476 of the Migration Act to the Federal Magistrates Court. It is that court which is invested with the relevant original jurisdiction.


case_title: Minister for Immigration v Jia Legeng [2001] HCA 17 ; (2001) 205 CLR 507


case_title: Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd [2001] FCA 1833 ; (2001) 117 FCR 424


case_text: I have emphasised the words "is satisfied" in the definition of "spouse" because they indicate that one of the "facts" upon the existence of which the Minister's power to grant this type of visa is conditioned is a state of Ministerial "satisfaction" in respect of specified criteria. The following observations of Gummow J in Minister for Immigration v Eshetu [1999] HCA 21 ; (1999) 197 CLR 611 at 651, [130] - [131] are therefore apposite: "The 'jurisdictional fact', upon the presence of which jurisdiction is conditioned, need not be a 'fact' in the ordinary meaning of that term. The precondition or criterion may consist of various elements and whilst the phrase 'jurisdictional fact' is an awkward one in such circumstances it will, for convenience, be retained in what follows. In Bankstown Municipal Council v Fripp, Isaacs and Rich JJ pointed out that, with the object of preventing litigation on questions of jurisdictional fact, the legislature may introduce into the criterion elements of opinion or belief by the decision-maker. ... A determination that the decision-maker is not 'satisfied' that an applicant answers a statutory criterion which must be met before the decision-maker is empowered or obliged to confer a statutory privilege or immunity goes to the jurisdiction of the decision-maker and is reviewable under s 75(v) of the Constitution ." (internal footnote references omitted) 19 To this Gummow J added in Eshetu , supra at 654, [137]: "This passage is consistent with the proposition that, where the criterion of which the authority is required to be satisfied turns upon factual matters upon which reasonable minds could reasonably differ, it will be very difficult to show that no reasonable decision-maker could have arrived at the decision in question. It may be otherwise if the evidence which establishes or denies, or, with other matters, goes to establish or to deny, that the necessary criterion has been met was all one way." 20 Later in his judgement in Eshetu , supra at 656-657, [145] Gummow J stated: "Where the issue whether a statutory power was enlivened turns upon the further question of whether the requisite satisfaction of the decision-maker was arrived at reasonably, I would not adopt the criterion advanced by Lord Wilberforce. I would prefer the scrutiny of the written statement provided under s 430 by a criterion of "reasonableness review". This would reflect the significance attached earlier in these reasons to the passage extracted from the judgment of Gibbs J in Buck v Bavone. It would permit review in cases where the satisfaction of the decision-maker was based on findings or inferences of fact which were not supported by some probative material or logical grounds."


case_text: A "satisfaction" based administrative decision is amenable to judicial review on one or more of the bases described by Gibbs J (as his Honour then was) in Buck v Bavone [1976] HCA 24 ; (1976) 135 CLR 110 at 118-119: "In all such cases the authority must act in good faith; it cannot act merely arbitrarily or capriciously. Moreover, a person affected will obtain relief from the courts if he can show that the authority has misdirected itself in law or that it has failed to consider matters that it was required to consider or has taken irrelevant matters into account. Even if none of these things can be established, the courts will interfere if the decision reached by the authority appears so unreasonable that no reasonable authority could properly have arrived at it. However, where the matter of which the authority is required to be satisfied is a matter of opinion or policy or taste it may be very difficult to show that it has erred in one of these ways, or that its decision could not reasonably have been reached." 20 Later in his judgement in Eshetu , supra at 656-657, [145] Gummow J stated: "Where the issue whether a statutory power was enlivened turns upon the further question of whether the requisite satisfaction of the decision-maker was arrived at reasonably, I would not adopt the criterion advanced by Lord Wilberforce. I would prefer the scrutiny of the written statement provided under s 430 by a criterion of "reasonableness review". This would reflect the significance attached earlier in these reasons to the passage extracted from the judgment of Gibbs J in Buck v Bavone. It would permit review in cases where the satisfaction of the decision-maker was based on findings or inferences of fact which were not supported by some probative material or logical grounds."


case_text: There is no want of logicality in the Tribunal's reasons. Those reasons discharge the statutory obligation with respect to reasons cast on the tribunal by s 368 of the Migration Act , as the learned Magistrate correctly concluded. The Tribunal's absence of "satisfaction" was based on evidence, not, as the Appellant contended, suspicion, cf Tolibao Cortes v Minister for Immigration and Multicultural Affairs [2001] FCA 1183. Appeal grounds 3, 4 and 6 fail.


case_text: The Appellant contends that the Tribunal should have referred in its reasons to receipts, letters, statutory declarations made by the Appellant, his spouse and their friends, utility bills, photographs and two home videos. The law does not require this. The Tribunal is not obliged "to give a line by line refutation of the evidence for the claimant either generally or in those respects where there is evidence that is contrary to findings of material fact made by the Tribunal": Re Minister for Immigration and Multicultural Affairs; ex parte Durairajasingham [2000] HCA 1 ; (2000) 74 ALJR 405 at 416, [65] . Appeal ground 2 fails. 25 Prior to reaching its decision the Tribunal sent to the Appellant a letter dated 9 August 2006 in which attention was drawn to and comment invited upon there being little substantive evidence in 2002 of a then continuing relationship, to the notes of field visits (copies of which were enclosed) to the claimed matrimonial residence which it was said raised doubts as to whether the Appellant and his wife resided together or were in a spousal relationship, to the Appellant's inconsistencies in response at interview as mentioned in the Ministerial delegate's reasons, to an absence of spousal identification on tax returns, to the Appellant's having bills sent to his aunt's address, to his wife's having purchased a house in her own name and to the Appellant's residing regularly at his aunt's house. 26 The delegate had noted, inter alia, of the Appellant's responses at interview, "the sponsor was emphatic that she did not want children" whereas, in the record of a previous hearing in the Tribunal, she had been recorded as saying that she and the Appellant, "love each other and plan to have children".


case_text: Section 65A provides an exemption from the application of s 52. That is to say, conduct which would otherwise contravene s 52 does not do so if it is conduct to which s 65A applies. The section provides no exemption for a media organisation which is an accessory to a contravention which is not covered by s 65A. So, if a news organisation aids, abets or induces somebody who is not covered by s 65A to make statements in trade or commerce which are misleading or deceptive and contravene s 52 or one of the State Fair Trading Acts , then the news organisation may be "involved in" that contravention within the meaning of s 75B of the TPA or its equivalent under the relevant Fair Trading Act . That is not to say that a newspaper or other media outlet would be held liable simply for reporting the fact of a statement by a third party which is of itself misleading or deceptive. It is not necessary to consider the conditions of accessorial liability in such a case because that is not the case now before the Court. The proposition remains that there is no protection in s 65A or its Fair Trading Act equivalents against accessorial liability for misleading or deceptive conduct: Advanced Hair Studio Pty Ltd v TVW Enterprises Ltd (1987) 18 FCR 1. 33 Section 65A exempts from the application of s 52 "a prescribed publication of matter by a prescribed information provider". The party claiming the exemption must be a prescribed information provider. This means a person "who carries on a business of providing information". The term includes but is not limited to licence holders under the Broadcasting Services Act 1992 or who provide broadcasting services under a class licence under that Act. The word "information" is not defined. Its ordinary meaning relevantly includes "knowledge or facts communicated about a particular subject, event etc.; intelligence, news". It also extends to "an item of news": Shorter Oxford English Dictionary (5 th ed, Oxford University Press, 2002). 34 There are no doubt many activities which could involve carrying on a business of providing information. Many, if not most professions and trades which involve the provision of information would no doubt be covered. The limitations on the application of s 65A are not to be found in the definition of prescribed information provider, but rather in subs 65A(1)(a) and (b).


case_text: Section 65A of the TPA was enacted in 1984 as a response to concerns that news media could be liable for incorrect news reports under the misleading or deceptive conduct provisions of the TPA. This followed the decisions of the Full Court of the Federal Court in Universal Telecasters (Qld) Ltd v Guthrie (1978) 32 FLR 360; Universal Telecasters (Qld) Ltd v Ainsworth Consolidated Industries Ltd (1983) ATPR 40-384 and Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82. In Australian Ocean Line Pty Ltd v West Australian Newspapers Ltd (1983) 66 FLR 453, Toohey J refused to dismiss proceedings against the newspaper for misleading or deceptive conduct in relation to a story it carried about services and conditions aboard a cruise ship, The Dalamacija. Subsequently he made an award of damages against the newspaper: Australian Ocean Line Pty Ltd v West Australian Newspapers Ltd (1985) 58 ALR 549.


case_title: Australian Ocean Line Pty Ltd v West Australian Newspapers Ltd (1985) 58 ALR 549


case_text: The term "freelance journalist" is not explained in the statement of claim. It may be taken to include a person who writes articles for publication in media outlets on the basis that he or she will be paid for articles so published by the relevant media organisation. A freelance journalist is necessarily a person working on his or her own account and not as an employee of a particular media organisation. A person who carries on business as a freelance journalist is plainly within the class of persons described in s 65A as a "prescribed information provider": see Carlovers Carwash Ltd v Sahathevan [2000] NSWSC 947 at [36] (Levine J). 36 In written submissions filed on behalf of Mr Bond and Lesotho Diamond it was argued that "chequebook journalism" is not covered by the s 65A exemption. "Chequebook journalism" is not a term of any statutory significance. It is generally used to describe the practice of media organisations paying non-journalists who happen to have undergone particular experiences to tell the story of their experiences exclusively to the paying organisation for publication by it. So a person who has been involved in some notorious or tragic event or scandal may make himself or herself available, for a fee, to be interviewed exclusively by a particular media organisation who may then publish the interview or a story based upon it. It can be said that selling the story amounts to providing information. That does not however constitute "carrying on the business of providing information". Payment to freelance journalists cannot be equated with the practice of chequebook journalism. 37 The exemption under s 65A applies only to a "prescribed publication of matter". That is a publication by the prescribed information provider "in the course of carrying on a business of providing information". There is a question whether the transmission by a freelance journalist to a media outlet of an article for publication itself constitutes publication. 40 Where more than one construction is open on the statute, that construction should be adopted which is consistent with its purpose. The purpose of s 65A was clearly stated in the Second Reading Speech. To exclude from the exemption the supply of information by freelance journalists to media organisations is to partially defeat that purpose. The communication of news articles to media organisations by freelance journalists is so plainly within the intended purpose of the section that a construction covering it should be adopted provided that construction is open. In my opinion, as stated above, such communication is within the natural and ordinary meaning of publication as publication to the world at large. And even if transmission of an article by a freelance journalist to the editor of a media organisation were to be construed as merely one-to-one communication, the concept of such communication as publication is familiar in the area of defamation law. In Webb v Bloch [1928] HCA 47 ; (1928) 41 CLR 331 Isaacs J said (at 363): To publish a libel is to convey by some means to the mind of another the defamatory sense embodied in the vehicle. In Krahe v Freeman (1988) ATPR 40-871 at 49,430, Rogers J, in a passage cited with approval by Levine J in Carlovers [2000] NSWSC 947 at [44] , said: ... the Fair Trading Act was never meant to be a substitute for actions for defamation. The Parliament has made that clear by the enactment of s 60. In my respectful view, the Court, should be astute not to allow utilisation for a purpose for which it was never intended.


case_title: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82


case_text: Counsel for Mr Bond and Lesotho Diamond submitted that in relation to copyright law "publishing" and "publication" are "fundamental expressions meaning making available to the public" and that "it would take a great deal of contextual constraint to force them into a narrower and special meaning": Infabrics Ltd v Jaytex Ltd [1981] 1 All ER 1057 at 1061. It was argued that, because s 65A exempts those who fall within it from, amongst other things, the consequences of misleading or deceptive conduct, there is no reason why the Court should adopt an expansive interpretation of the word "publication". It should be interpreted in accordance with its ordinary natural meaning. In my opinion, however, the ordinary and natural meaning of "publication" includes transmission of a news article to a media organisation for publication to the world at large.


case_title: Krahe v Freeman (1988) ATPR 40-871

case_text: Where more than one construction is open on the statute, that construction should be adopted which is consistent with its purpose. The purpose of s 65A was clearly stated in the Second Reading Speech. To exclude from the exemption the supply of information by freelance journalists to media organisations is to partially defeat that purpose. The communication of news articles to media organisations by freelance journalists is so plainly within the intended purpose of the section that a construction covering it should be adopted provided that construction is open. In my opinion, as stated above, such communication is within the natural and ordinary meaning of publication as publication to the world at large. And even if transmission of an article by a freelance journalist to the editor of a media organisation were to be construed as merely one-to-one communication, the concept of such communication as publication is familiar in the area of defamation law. In Webb v Bloch [1928] HCA 47 ; (1928) 41 CLR 331 Isaacs J said (at 363): To publish a libel is to convey by some means to the mind of another the defamatory sense embodied in the vehicle. In Krahe v Freeman (1988) ATPR 40-871 at 49,430, Rogers J, in a passage cited with approval by Levine J in Carlovers [2000] NSWSC 947 at [44] , said: ... the Fair Trading Act was never meant to be a substitute for actions for defamation. The Parliament has made that clear by the enactment of s 60. In my respectful view, the Court, should be astute not to allow utilisation for a purpose for which it was never intended.


case_title: Universal Telecasters (Qld) Ltd v Guthrie (1978) 32 FLR 360


case_title: Universal Telecasters (Qld) Ltd v Ainsworth Consolidated Industries Ltd (1983) ATPR 40-384


case_text: It is appropriate that Cytel pay the costs of and incidental to the notice of motion. Peoplebank points to the fact that the notice of motion was filed some time after the service of the order and after the acknowledgment of liability to pay those costs, as referred to above. As Peoplebank points out, at no time have any objections to the amount sought been notified or formulated. If it had a genuine concern as to the quantification of costs, Cytel had every opportunity to bring an application to set aside the certificate of taxation of which it acknowledged receipt. Cytel did not do so. Peoplebank has been forced to incur unnecessary costs in respect of an obligation to pay costs previously acknowledged. The attempt to avoid that payment and to extend the litigation is without merit and the burden of the solicitor-client costs of the motion should not be borne by Peoplebank ( Yang v American International Assurance Company (Australia) Ltd (No 2) [2008] FCA 493). 32 It is appropriate that Cytel pay Peoplebank's costs of the notice of motion on an indemnity basis. I certify that the preceding thirty-two (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Bennett. Associate: Dated: 21 April 2008 Counsel for the Applicant: B DeBuse Solicitor for the Applicant: Marsdens Law Group Counsel for the Respondent: P R Garling SC, G Lucarelli Solicitor for the Respondent: Thomson Playford Date of Hearing: 9 April 2008 Date of Judgment: 22 April 2008 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2008/518.html


case_text: Section 7(4) defines 'use' of a trade mark not only as the application of the mark to the product itself, but also the application of the mark to other items relating to the product, such as packaging, invoices, correspondence and advertisements: see Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51 ; (1974) 131 CLR 592 at 600 (per Jacobs J); Angoves Pty Ltd v Johnson (1982) 43 ALR 349 at 359-360 (per Deane J); Davison M, Johnston K and Kennedy P, Shanahan's Australian Law of Trade Marks & Passing Off (3 rd ed, Lawbook Co., 2003) at [2.145] and [2.230]. Sections 9(1)(b)(i) , 9 (1)(c)(ii) and 9 (2) of the Act provide that a trade mark used on an invoice or attached to either the packaging in which the product is stored or transported is to be taken as being applied in relation to the goods. Accordingly, the use of the Sample Packaging or invoices displaying the mark in respect of the Sample Units is 'use' of a trade mark within s 7 of the Act .


case_text: In response to these submissions, Dynamic Supplies denies that it made representations alleged. Dynamic Supplies relies on Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at 605 (per Gleeson CJ, Hayne and Heydon JJ), and submits that, when selling the trap purchase products, it did no more than communicate what was represented by Brother, without adopting or endorsing it. It was a mere conduit in the distribution process. Dynamic Supplies also reiterates that Brother's Australian trade marks were not registered in relation to the Sample Units, and that Dynamic Supplies did not 'use' the trade marks. 86 In light of my findings above at [52], [54] and [68], Dynamic Supplies' submissions on non-use and non-registration do not succeed in relation to the trade practices claim. 87 The remaining issue is whether Dynamic Supplies merely communicated a representation made by Brother or whether it represented that the products were in some way connected with Brother when they were not.


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

case_text: In Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12 ; (2000) 202 CLR 45, the High Court held at 88 that the use of the brand "Nike" was likely to mislead or deceive members of the public into thinking that "Nike Sports Fragrance" was " in some way promoted or distributed by Nike International itself or with its consent or approval ". The Full Federal Court in Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 ; (2000) 104 FCR 61 at 73 and 77 adopted a similar approach, finding that the evidence established that the respondent had used the appellant's name in a way which gave rise to a misrepresentation that "in some way" the respondent acted with the appellant's approval. It is not necessary to be more precise, provided the association is more than de minimis .


case_text: In R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.)


case_title: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107

case_text: In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods.


case_text: Counsel referred to several authorities in relation to the meaning of 'use'. The term was considered by the High Court in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81 ; (1967) 116 CLR 254, where the respondent was an English manufacturer which sold its products to Australian retail traders for re-sale in Australia. In affirming the judgment of Windeyer J, the Full Court observed at 271 that: '... when an overseas manufacturer projects into the course of trade in this country , by means of sales to Australian retail houses, goods bearing his mark and the goods , bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer .' (Emphasis added.) Put another way, where an overseas company has registered a trade mark in Australia for products it exports to the Australian market, then it is that company, when and if it distributes the goods into Australia, which can be said to have 'used' its trade mark. 43 In R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 44 In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods. 47 The authorities discussed above are different from the present case because here the foreign manufacturer manufactured the products, sold them without any branding and took steps to dissociate itself as the originator of the products. Brother did not in any way project or authorise the sale or distribution of the OEM products into the Australian market. Brother later became aware that, contrary to its policy, the product was retailed in Australia by Dynamic Supplies as a Brother-branded product in counterfeit packaging which prominently displayed the Brother name and trade mark. Authorities such as Estex [1966] HCA 81 ; 116 CLR 254 and Bailey 4 NSWLR 701 lay down principles in relation to their own peculiar facts and so the observations they make are not applicable to the facts of this case. The broad propositions noted above were made in quite a different commercial context.


case_text: Having regard to the evidence in this case, I find that Dynamic Supplies' conduct was likely to mislead members of the public into believing that the trap purchases were in some way promoted or distributed by Brother or with its consent, when in fact they were not. Put another way, the use of the name gives rise to the making of a connection with Brother and its reputation. The packaging and invoices identified the Sample Units as genuine Brother DR-200 units when, to the contrary, they were OEM products not branded with the Brother trade mark and sold exclusively to Company X. This suffices to establish a breach of ss 52 and 53 (a), (c), (ea) and (g) of the TPA. In oral submissions counsel for Dynamic Supplies submitted that it was merely a conduit for the impugned products, and had no part in the counterfeiting or the packaging of Sample Units, but its intention in this case is irrelevant. In some cases intention may be relevant to support an inference of deception, but not here. Objectively, its misrepresentations were made in the course of trade and commerce and were likely to mislead or deceive, and this is sufficient to establish a breach of ss 52 and 53 : see Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216 at 223 (per Stephen J); Given v CV Holland (Holdings) Pty Ltd (1977) 29 FLR 212 at 217.


case_title: Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd [1978] HCA 11 ; (1978) 140 CLR 216


case_text: Dynamic Supplies submits that Brother Japan was engaged in 'trade and commerce' within the meaning of s 4 of the TPA because the provenance of the units can be traced from Australia back though America and ultimately to their manufacturer in Japan. It submits that it there is sufficient evidence of defectiveness of the units. Mr Piccinini deposed that the units were returned to Dynamic Supplies by customers, who then received a refund. Counsel for Dynamic Supplies submitted that the only commercially sensible inference is that the refund was paid because the units were defective. This evidence is supported, it is said, by inferences to be drawn from a consistent pattern according to which defective units were replaced by Brother Australia and the thoroughness of the practices by which Mr Dobrowolski of Brother Australia inspected and tested the units. Dynamic Supplies also submits that, since it is agreed that Brother Japan manufactured the products, there is no difficulty in establishing that Brother bears the liability rather than Dynamic Supplies: see Leeks v FXC Corporation [2002] FCA 72 ; (2002) 118 FCR 299 at 302. 95 The cross-claim must fail in this case due to the lack of sufficient evidence establishing the defectiveness of the units. The assertion by Mr Piccinini that Dynamic Supplies provided refunds to its consumers is not sufficient evidence of the defectiveness of the units. There are no details of specific defects or their nature and extent. Refunds may be given for many reasons other than discovery of a fault in the product, for example, to maintain goodwill, for public relations purposes, to enhance reputation, or as a matter of general corporate policy when goods are claimed to be defective. Normally, a retailer making a claim under ss 74D and 74H will adduce some specific evidence in the form of documents, photographs or statements, as to the fault and give evidence as to how the product fails to function properly and why it has been deemed defective. In cases such as the present where the product can no longer be obtained, at least some evidence identifying the type of defect, and when and how the defect was ascertained in the particular products, should be adduced. This evidence may be in the form of, for example, test sheets, affidavits by the person who inspected and identified the defect, or documentation which identifies the defective product and its defects. The inferences which Dynamic Supplies submits should be drawn in this case are not open on the sparse evidence adduced. 96 In light of my finding that the evidence does not establish the defectiveness of the units, it is not necessary for me to express an opinion on Brother's submission that it has not engaged in 'trade and commerce' for the purposes of TPA. Accordingly, I do not propose to deal with that question in these reasons. 97 For these reasons, the cross-claim should be dismissed. 98 I allow the applicants' claim that the respondent has infringed the registered trade marks, and has engaged in misleading and deceptive conduct in contravention of ss 52 and 53 of the TPA and the tort of passing off. I dismiss the respondent's cross-claim. I direct the applicants to draft, file and provide to the respondent Draft Short Minutes of Orders in respect of the precise form of the orders arising out of these reasons for judgment, costs and directions as to the future conduct of these proceedings. I certify that the preceding ninety-eight (98) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate: Dated: 26 September 2007 Counsel for the Applicants Mr R Macaw QC and Ms J Baird Solicitor for the Applicants Corrs Chambers Westgarth Counsel for the Respondent Mr G Clarke SC and Mr R Millar Solicitor for the Respondent Home Wilkinson Lowry Dates of Hearing: 4, 5, 6, 12, 13 and 14 June 2007 Date of Judgment: 26 September 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1490.html


case_title: Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 ; (2000) 104 FCR 61


case_text: The central question arising is whether the term 'consumables' falls within the ordinary dictionary meaning or terms in the specifications of Brother's Australian trade marks, in particular, the terms 'parts', 'accessories' and 'attachments'. The dictionary definition of 'accessory' has been considered in the authorities and has been described as " an additional or subordinate thing; an adjunct, an accompaniment; a minor fitting or attachment ": see Nokia Corporation v Truong (2006) 66 IPR 511 at 516. 66 I accept Brother's submissions that printer drum units are apparatus for the transmission or reproduction of images, and that the categorisation of a printer drum unit as a 'consumable' does not take it outside the description of a 'part', 'accessory' or 'attachment'. The evidence of both parties' witnesses indicates that printer drum units are part of the internal working of printers, facsimiles and multi-function devices. They are called consumables because they are parts or accessories with a limited life span, which is generally shorter than the life span of the machine in which they function. Although printer drum units are not fixed permanently within the machines and are removable for replacement, the machines cannot function without them. Given this essential role of the printer drum units, it is wrong to characterise them on the basis they are not a part of or an accessory to those machines. Accordingly, the proper conclusion is that trade marks 440897, 479964 and 1000137 are registered in respect of Brother's printer drum units, such as the Brother DR-200. I also accept Brother's submission that the cardboard box in which a printer drum unit is packaged is itself a 'good' made of cardboard falling within the scope of both class 16 and the specifications of registered trade mark 479964. Indeed, there was little genuine dispute on this point. 67 However, despite my finding that printer drum units are covered by the specifications of trade marks 440897, 479964 and 1000137 (and cardboard packaging by the specifications of trade mark 479966), in my view, Dynamic Supplies' submission that registered trade mark 1000137 was registered only after the conduct of Dynamic Supplies impugned by Brother, and therefore was not breached by that conduct, is correct. The trap purchases in this case were made in late February and early March 2004, and Brother did not register trade mark 1000137 until 30 April 2004. It is not possible, therefore, for registered trade mark 1000137 to be infringed by Dynamic Supplies' conduct in the same way the remainder of Brother's Australian trade marks have been. 68 For these reasons, I find that both the Brother DR-200 units and Brother DR-200 packaging are goods in respect of which Brother's Australian trade marks are registered, but that trade mark 1000137 has not been infringed by the Dynamic Supplies' conduct. 69 A respondent which uses an applicant's registered trade mark in the course of trade in relation to goods which fall within the scope of the mark's specifications will not infringe the mark if the use was with the consent of the applicant: see s 123 of the Act .


case_title: Pioneer v The Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670

case_text: In R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 51 In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet & Maxwell, 1986) at [14-13].


case_text: In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet & Maxwell, 1986) at [14-13].


case_title: R & A Bailey & Co Lt v Boccaccio Pty Ltd (1986) 4 NSWLR 701

case_text: In R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 47 The authorities discussed above are different from the present case because here the foreign manufacturer manufactured the products, sold them without any branding and took steps to dissociate itself as the originator of the products. Brother did not in any way project or authorise the sale or distribution of the OEM products into the Australian market. Brother later became aware that, contrary to its policy, the product was retailed in Australia by Dynamic Supplies as a Brother-branded product in counterfeit packaging which prominently displayed the Brother name and trade mark. Authorities such as Estex [1966] HCA 81 ; 116 CLR 254 and Bailey 4 NSWLR 701 lay down principles in relation to their own peculiar facts and so the observations they make are not applicable to the facts of this case. The broad propositions noted above were made in quite a different commercial context.


case_text: In any event, a finding that Brother America was part of the supply chain of the impugned products would not allow Dynamic Supplies to rely on s 123 of the Act because it is the consent of the registered owner which must be acquired. Here, Brother Japan is the registered owner of Brother's Australian trade marks. There is no evidence, and Dynamic Supplies submitted that it should not be expected to adduce such evidence, that Brother Japan (rather than Brother America) consented to the application of its mark to or in relation to the products in question. The fact that Brother America and Brother Japan are related entities within the same corporate group does not affect the clear and ordinary meaning and operation of s 123 of the Act . The consent to apply Brother's Australian trade marks to or in relation to a product must be acquired from Brother Japan. The situation where consent is not acquired from the registered owner of the trade mark but from a related entity in its corporate group has not, so far as I am aware, been considered in Australian law: cf the decision of the English Court of Appeal, which was decided on the basis of significantly different legislation in Revlon Inc v Cripps and Lee [1980] FSR 85. I am of the view that Brother Japan's consent for the purposes of s 123 of the Act is not to be implied from the fact that another member of the Brother corporate group may have, contrary to my finding, given its consent. 80 Accordingly, Dynamic Supplies' use of the 'BROTHER' trade mark was not done with the licence or authority of Brother Japan. I therefore find that its infringement of Brother's Australian trade marks is not excused by s 123 of the Act . 81 Although there was some uncertainty during the hearing as to whether Dynamic Supplies had conceded that Brother had a reputation for the purposes of ss 52 and 53 of the TPA, Dynamic Supplies' ultimate position was that it acknowledged Brother's reputation, but said that its acknowledgment did not constitute a concession as to Brother's trade practices claim. There was no substantial dispute between the parties on this, nor was there significant cross-examination by counsel for Dynamic Supplies on the issue. The uncontested evidence led by Brother showed that Brother Australia has been active in Australia since 1977 and that its sales run into the tens of millions of dollars. Advertisement of its products has been extensive. In cross-examination, Mr Piccinini acknowledged that Brother is a " well-known brand ".


case_title: Thunderbird Products Corp v Thunderbird Marine Product Pty Ltd [1974] HCA 51 ; (1974) 131 CLR 592


case_title: Transport Tyres Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421

case_text: In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods. 51 In some circumstances, a retailer or importer may be said to lawfully 'use' a trade mark owned by an overseas manufacturer: see Transport Tyre 93 FCR at 440; Pioneer 137 CLR at 688; W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15 ; (1956) 94 CLR 182 at 188. However, where a retailer imports for sale goods which are in packaging bearing a counterfeit trade mark, that importation will be an infringing 'use' of the mark. This is an application of the principle accepted by Lindgren J in Playboy Enterprises International Inc v Hong (2004) 63 IPR 533 at 538 and briefly described in Blanco White TA and Jacobs R, Kerly's Law of Trade Marks and Trade Names (12 th ed, Sweet & Maxwell, 1986) at [14-13]. 78 The second ground on which Dynamic Supplies' submissions fail is that even if Brother America was part of the supply chain, it has not demonstrated that Brother Japan, the registered owner of the relevant trade marks, expressly or impliedly consented to the application of its trade mark to or in relation to the goods in question. Although the Full Court of this Court in Transport Tyre 93 FCR at 440 found that the sale of the goods in question constituted a 'use', which was excused by s 123 of the Act , that decision is distinguishable. In that case the registered owner of the trade mark applied it to the goods which were subsequently sold. The chain of supply could be traced back from the retailer of the goods to the registered owner of the trade marks which were applied to or in relation to those goods. The registered owner's consent for the purpose of s 123 was, in the opinion of the Full Court, necessarily implied in those circumstances. No such chain of supply exists in the present case. The Sample Units were not branded by Brother with its mark, and the Sample Packaging was counterfeit. No consent, whether express or implied, was given by Brother to any person or entity to apply its registered trade mark to the products. To the contrary, Brother has distanced itself from the OEM products, manufacturing them only as unbranded products and selling them only through a confidential arrangement with Company X.


case_title: W.D. & H.O. Wills (Australia) Lrd v Rothmans Ltd (1956) 94 CLR 131


case_text: At [70] to [72] (pp 83 and 84), their Honours went on to explain the similarities and differences between the test expounded in Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; 118 CLR 618 and the test articulated in American Cyanamid Co v Ethicon Ltd [1975] UKHL 1 ; [1975] AC 396 as follows: 70 When Beecham and American Cyanamid are read with an understanding of the issues for determination and an appreciation of the similarity in outcome, much of the assumed disparity in principle between them loses its force. There is then no objection to the use of the phrase "serious question" if it is understood as conveying the notion that the seriousness of the question, like the strength of the probability referred to in Beecham , depends upon the considerations emphasised in Beecham . 71 However, a difference between this Court in Beecham and the House of Lords in American Cyanamid lies in the apparent statement by Lord Diplock that, provided the court is satisfied that the plaintiff's claim is not frivolous or vexatious, then there will be a serious question to be tried and this will be sufficient. The critical statement by his Lordship is "[t]he court no doubt must be satisfied that the claim is not frivolous or vexatious; in other words, that there is a serious question to be tried" [1975] UKHL 1 ; [[1975] AC 396 at 407]. That was followed by a proposition which appears to reverse matters of onus [1975] UKHL 1 ; [[1975] AC 396 at 408]: So unless the material available to the court at the hearing of the application for an interlocutory injunction fails to disclose that the plaintiff has any real prospect of succeeding in his claim for a permanent injunction at the trial, the court should go on to consider whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought. (Emphasis added.) Those statements do not accord with the doctrine in this Court as established by Beecham and should not be followed. They obscure the governing consideration that the requisite strength of the probability of ultimate success depends upon the nature of the rights asserted and the practical consequences likely to flow from the interlocutory order sought. 72 The second of these matters, the reference to practical consequences, is illustrated by the particular considerations which arise where the grant or refusal of an interlocutory injunction in effect would dispose of the action finally in favour of whichever party succeeded on that application [See the judgment of McLelland J in Kolback Securities Ltd v Epoch Mining NL (1987) 8 NSWLR 533 at 535-536 and the article by Sofronoff, " Interlocutory Injunctions Having Final Effect ", Australian Law Journal, vol 61 (1987) 341.95]. The first consideration mentioned in Beecham , the nature of the rights asserted by the plaintiff, redirects attention to the present appeal.


case_text: In Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63 ; (2001) 208 CLR 199 , a majority of the High Court held that, where an interlocutory injunction is sought (inter alia) in respect of private rights, it is necessary to identify the legal or equitable rights which are to be determined at the trial and in respect of which the final relief is sought. Their Honours who comprised the majority made clear that the final relief sought need not be injunctive in nature. See [8] to [21] (pp 216 220) (per Gleeson CJ); [59] to [61] (pp 231 232) (per Gaudron J); and [86] to [92] (pp 239 242); [98] to [100] (pp 244 246); and [105] (p 248) (per Gummow and Hayne JJ). At [10] (p 216), Gleeson CJ also specifically cited with approval Spry, The Principles of Equitable Remedies , 5th edn, 1997 (pp 446 456).


case_text: In Australian Broadcasting Corporation v O'Neill [2006] HCA 46 ; (2006) 227 CLR 57 at [65] (pp 81 82), when referring to the well-known passage in Beecham Group Ltd v Bristol Laboratories Pty Ltd [1968] HCA 1 ; 118 CLR 618 at 622 623, Gummow and Hayne JJ said: By using the phrase "prima facie case", their Honours did not mean that the plaintiff must show that it is more probable than not that at trial the plaintiff will succeed; it is sufficient that the plaintiff show a sufficient likelihood of success to justify in the circumstances the preservation of the status quo pending the trial. That this was the sense in which the Court was referring to the notion of a prima facie case is apparent from an observation to that effect made by Kitto J in the course of argument [(1968) [1968] HCA 1 ; 118 CLR 618 at 620]. With reference to the first inquiry, the Court continued, in a statement of central importance for this appeal [1968] HCA 1 ; [(1968) 118 CLR 618 at 622]: "How strong the probability needs to be depends, no doubt, upon the nature of the rights [the plaintiff] asserts and the practical consequences likely to flow from the order he seeks."


case_text: There is a body of authority in this Court which establishes the following propositions: (a) The scope of s 51AC is wider than that of s 51AA. The meaning of unconscionable for the purposes of s 51AC is not limited to the meaning of the word according to established principles of common law and equity: per French J in Australian Competition and Consumer Commission v C G Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491 at [24] and [25] (p 503); per Sundberg J in Australian Competition and Consumer Commissioner v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [31] (p 265); per Selway J in Australian Competition and Consumer Commission v 4WD Systems Pty Limited (2003) 59 IPR 435 at [183] (p 487) and per Jacobson J in Pacific National (ACT) Limited v Queensland Rail (2006) 28 ATPR 46-268 (p 53,515) at [918] (p 53,527). (b) The ordinary or dictionary meaning of unconscionable, which involves notions of serious misconduct or something which is clearly unfair or unreasonable, is picked up by the use of the word in s 51AC. When used in that section, the expression requires that the actions of the alleged contravenor show no regard for conscience, and be irreconcilable with what is right or reasonable. Inevitably the expression imports a pejorative moral judgment: per Heerey, Drummond and Emmett JJ in Hurley v McDonalds Australia Limited (2000) 22 ATPR 41-741 (p 40,578) at [22] (p 40,585). This helpful articulation of the meaning of the word when used in s 51AC was followed by Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [183]-[185] (pp 487-488) and by Sundberg J in ACCC v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253 at [30] (p 264); and (c) Normally, some moral fault or moral responsibility would be involved. This would not ordinarily be present if the critical actions are merely negligent. There would ordinarily need to be a deliberate (in the sense of intentional) act or at least a reckless act: per Selway J in ACCC v 4WD Systems Pty Ltd (2003) 59 IPR 435 at [185] (p 488).


case_text: In order to make clear the basis on which that undertaking was given, I delivered Reasons for Judgment on 7 November 2008 in which I explained the circumstances in which that undertaking had been given and made certain directions concerning any future publication of the fact that that undertaking had been given and of its terms: See Australian Competition and Consumer Commission v Allphones Retail Pty Limited [2008] FCA 1664. 12 These Reasons for Judgment deal with the ACCC's extant claim for interlocutory relief. It is apparent from what I have already said that Allphones resists the making of any interlocutory orders.


case_title: Australian Competition and Consumer Commission v C G Berbatis Holdings Pty Ltd (No 2) [2000] FCA 2 ; (2000) 96 FCR 491


case_title: Australian Competition and Consumer Commissioner v Simply No-Knead Franchising Pty Limited [2000] FCA 1365 ; (2000) 104 FCR 253