case_text: It was, in my view, perfectly plain and should have been such to the appellant that the entirety of his claims and his credibility generally were in issue in the review. Against this background it cannot properly be said that any further inconsistencies exposed in his s 424A answers relating to his claims or any greater doubts his answers engendered about his credibility raised new or unexpected issues for which, in fairness, a further opportunity for comment ought to have been provided. To hold otherwise in the present case would be to give rise to what in a s 424A context, the High Court has described as "a circulus inextricabilis" of invitation and comment: see SZBYR v Minister for Immigration and Citizenship [2007] HCA 26 at [20] . 17 What I have said is sufficient to warrant the dismissal of this appeal. I will order that (i) leave be given to raise the ground of appeal not raised below; (ii) the appeal be dismissed; and (iii) the appellant pay the first respondent's costs of the appeal. I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn. Associate: Dated: 9 November 2007 Counsel for the Appellant: Mr R Turner Solicitor for the Appellant: Parish Patience Immigration Lawyers Counsel for the Respondent: Mr S Lloyd Solicitor for the Respondent: Australian Government Solicitor Date of Hearing: 8 November 2007 Date of Judgment: 9 November 2007 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2007/1713.html


case_outcome: cited

case_text: Finally, what constituted or might constitute serious harm amounting to persecution within the meaning of the Convention was a matter of fact and degree for the Tribunal: see Das v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 208 ALR 229 at 237-238 per Sundberg J. 6 The applicant has not sought to articulate any other basis upon which it might be considered or suggested that the Tribunal's decision is affected by jurisdictional error. 7 On 21 November 2006 I found that the applicant's medical certificate did not provide an adequate explanation for his non-attendance at the hearing on that day. I observed that the certificate did not address the question of why the condition referred to would prevent the applicant from travelling to Court and effectively participating in a hearing. Accepting that implicit in the delivery of the certificate was an application for an adjournment, I considered that the mere giving to the Court of a certificate without further explanation was not a proper basis for an adjournment.


case_outcome: referred to

case_text: On this application I need to consider two matters: (a) whether the applicant has an arguable case; and (b) whether the applicant has provided a satisfactory explanation for non-attendance. I refer generally to the discussion in SZHFE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) [2006] FCA 648 per Jacobson J. The background to this application and the applicant's grounds of appeal filed on 18 August 2006 are set out in my reasons for judgment previously delivered on 21 November 2006: see MZXJN v Minister for Immigration and Multicultural Affairs [2006] FCA 1624.


case_text: The Tribunal also reached its conclusion about the absence of protection obligations on the basis of an independent reason. The Tribunal considered and dealt with a factual substratum of the applicant's claims. The Tribunal was not satisfied that even if the claimed circumstances existed in Pakistan they would give rise to serious harm amounting to persecution. I cannot find any basis for the conclusion that the Tribunal misconstrued or misapplied section 91R of the Migration Act 1958 (Cth). Nothing in the Tribunal's reasons suggest that it treated the examples in s 91R(2) as an exhaustive statement of what constituted or might constitute serious harm: see VTAO v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 81 ALD 332 at [60] to [66] per Merkel J. The Tribunal was entitled to consider those examples set out in subsection 91R(2) for guidance: see SBBA v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 90 at [13] .


case_text: In my view the Federal Magistrates Court decision discloses no error. There is nothing to indicate that the Tribunal's finding were not open to it on the evidence. It cannot be said the Tribunal failed to take into account any relevant consideration or took into account an irrelevant consideration or asked itself the wrong question. The Tribunal was not satisfied the applicant's claims demonstrated any Convention nexus. This was a finding of fact, which on the evidence before it was open to be made by the Tribunal: see SZFYC v Minister for Immigration and Multicultural and Indigenous Affairs [2005] FCA 1810 at [22] .


case_title: SZHFE v Minister for Immigration and Multicultural and Indigenous Affairs (No 2) [2006] FCA 648


case_title: VTAO v Minister for Immigration and Multicultural and Indigenous Affairs (2004) 81 ALD 332


case_text: appellant filed a Notice of Appeal before this Court on 11 July 2008 which raised three grounds of appeal. On the hearing of the appeal, the appellant represented by Mr Newman of Newman & Associates, sought to abandon the prosecution of any of those grounds and sought leave to amend the Notice of Appeal to rely upon one new ground of appeal. The appellant now contends that the primary judge erred by failing to find jurisdictional error on the part of the Tribunal as it disregarded: ... much of the appellant's corroborative evidence without ascribing reasons or, alternatively, misapplying the ruling in SZANI v MIMIA [2004] FCA 1298 , Tamberlin J. In further elaboration of that ground, the appellant says the Tribunal failed to exercise its statutory review function as it applied, in error, an analytical method of first assessing the creditworthiness of the appellant and then, having formed an unfavourable view of the appellant's credibility, concluded, wrongly, that it was entitled to reject the whole of the appellant's corroborative evidence without subjecting that evidence to any assessment or ascribing any reasons for rejecting the evidence. The Minister opposes the application for leave to amend the notice of appeal. The Notice of Appeal filed on 11 July 2008 is a handwritten notice filed by the appellant under her own hand. She does not appear to have been represented by a lawyer in preparing and filing that document. The appellant was initially represented in the Federal Magistrates Court proceedings by Mr Newman. For reasons which do not need to be repeated here, the hearing of the proceeding before the Federal Magistrates Court was adjourned. Mr Turner of Parish Patience Immigration Lawyers appeared for the appellant on the adjournment application and later acted for her in the conduct of the hearing. Mr Newman now acts for the appellant in the appeal. The appellant as advised by Mr Newman now seeks to agitate the new and only ground of appeal. Thirdly, guidance in the approach to the utility of corroborative statements can be found in the decision of Tamberlin J in SZANI v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1298 and the reference in that decision to the reasons of the Full Court in WAEJ v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 188 , which suggest to the Tribunal that where there is a finding by the Tribunal that the evidence of the appellant is fundamentally "discredited", any purportedly corroborative material presented in support of a discredited version of events, may be discarded. That is not this case. The Tribunal seems to have cited SZANI to illustrate the quoted reference to WAEJ v MIMIA . In that case, the Full Court, Lee, Hill and Marshall JJ at [52] noted the class of case where an appellant's evidence is so discredited that corroborative evidence presented in support of the primary claims "could be discarded without further analysis".


case_text: preceding those observations, the Tribunal contextualised its conclusions concerning the weight and utility of the witness statements by making this observation: In SZANI v MIMIA [2004] S[F]CA 1298 Tamberlin J referred to the decision of WAEJ v MIMIA [2003] FCAFC 188 where the Full Court at page [para] 52 said: "On its face the foregoing was a statement by the RRT that the document was not authentic. This was not a case where dishonesty on the part of the appellant had been demonstrated thereby providing support for the further conclusion that the appellant had arranged for the preparation, and tender of, a non authentic, or forged, document which the RRT could disregard. There was no finding by the RRT that the evidence of the appellant was so discredited that any purportedly corroborative material presented on his behalf could be discarded without further analysis (emphasis added by the Full Federal Court)." [There is no emphasis in the quoted passage] The sequence of reasoning adopted by the Tribunal seems to have been reflected in four steps. Firstly, the Tribunal has "duly considered" the information from the appellant's witnesses relating to the appellant's engagement with Maoist groups or her husband's engagement with such groups and has duly considered information from these witnesses relating to the "consequences of such connections". Secondly, the nature and degree of the credibility problems the Tribunal has with the evidence of the appellant is such that the witness statements cannot be redemptive of the poisoned well of credibility, that is, the Tribunal cannot give the statements such weight "as can help resolve the appellant's credibility problems in relation to her claims about abuse in Nepal". Thirdly, guidance in the approach to the utility of corroborative statements can be found in the decision of Tamberlin J in SZANI v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1298 and the reference in that decision to the reasons of the Full Court in WAEJ v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCAFC 188 , which suggest to the Tribunal that where there is a finding by the Tribunal that the evidence of the appellant is fundamentally "discredited", any purportedly corroborative material presented in support of a discredited version of events, may be discarded.


case_text: this case, the Tribunal has considered the evidence of the witnesses called by the appellant and has concluded that the content of the evidence does not overcome the Tribunal's conclusions about the reliability of the primary evidence of the appellant. In SZANI v MIMIA , Tamberlin J concluded that the Tribunal's failure to make "any reference" [22] to the documents in question and the Tribunal's failure "to refer to, consider, or give reasons for rejection of the documents" [25] constituted jurisdictional error. In other words, the Tribunal had "ignored" relevant material in the sense contemplated by McHugh, Gummow and Hayne JJ in Minister for Immigration v Yusuf (2001) 206 CLR 223 at [82]. In this case, the Tribunal comprehensively examined the primary case first put by the appellant. The Tribunal considered the evidence of the witnesses called by the appellant and reached the conclusions already identified. The Tribunal did not simply ignore the evidence in the sense contemplated in Minister for Immigration v Yusuf (supra). The point of principle referred to in the reasoning of the Chief Justice in Applicant S20/2002 remains determinative, whether the particular evidence is a document or a statutory declaration or embraces oral evidence.


case_title: Minister for Immigration and Multicultural Affairs Ex parte Applicant S20/2002 [2003] HCA 30 ; (2003) 198 ALR 59

case_text: proper approach and one in which the resolution of this appeal is to be found is identified by Gleeson CJ in Minister for Immigration and Multicultural Affairs; Ex parte Applicant S20/2002 [2003] HCA 30 ; (2003) 198 ALR 59 at [12] to [14]: [12] It was contended that [the relevant passage] shows that the Tribunal member adopted a flawed approach to her evaluation of the evidence, failing to assess the evidence of the applicant/appellant in the light of the corroborating evidence, and giving no weight to the evidence of the corroborating witness for reasons that had nothing to do with the quality of that evidence. The essence of the complaint is that the Tribunal failed to consider the evidence as a whole, but first considered, and disbelieved, the evidence of the applicant/appellant, without taking account of the corroboration, and then considered and rejected the corroboration because of the rejection of the evidence of the applicant/appellant. I do not accept that this is a fair criticism of the Tribunal's reasons. In my view, all that the member was saying was that, for reasons already given at length, she found the applicant/appellant's story implausible, and in some important respects unbelievable, and that she also rejected the evidence of the corroborating witness, even though she had no separate reason to doubt his credibility other than the reasons that she had already given for rejecting the claim she was considering. The member could have expressed herself more clearly. It is not necessarily irrational, or illogical, for a finder of fact, who is convinced that a principal witness is fabricating a story, which is considered to be inherently implausible, to reject corroborative evidence, even though there is no separate or independent ground for its rejection, apart from the reasons given for disbelieving the principal witness. [13] Upon analysis, the complaint is that the Tribunal member did not have regard to the whole of the evidence before deciding whether she believed the applicant/appellant, and did not properly assess the significance of the evidence of the corroborating witness. I am not persuaded that this criticism is justified. [14] Decision-makers commonly express their reasons sequentially; but that does not mean that they decide each factual issue in isolation from the others. Ordinarily they review the whole of the evidence, and consider all issues of fact, before they write anything. Expression of conclusions in a certain sequence does not indicate a failure to consider the evidence as a whole. I do not think that the Tribunal member intended to convey that she made up her mind about the evidence of the applicant/appellant before taking account of the evidence of the witness who was said to corroborate him. At [49], McHugh and Gummow JJ put the matter in these terms: In a dispute adjudicated by adversarial procedures, it is not unknown for a party's credibility to have been so weakened in cross-examination that the tribunal of fact may well treat what is proffered as corroborative evidence as of no weight because the well has been poisoned beyond redemption. It cannot be irrational for a decision-maker, enjoined by statute to apply inquisitorial processors (as here), to proceed on the footing that no corroboration can undo the consequences for a case put by a party of a conclusion that that case comprises lies by that party. If the critical passage in the reasons of the Tribunal be read as indicated above, the Tribunal is reasoning that, because the appellant cannot be believed, it cannot be satisfied with the alleged corroboration. The appellant's argument in this Court then has to be that it was irrational for the Tribunal to decide that the appellant had lied without, at that earlier stage, weighing the alleged corroborative evidence by the witness in question. That may be a preferable method of going about the task presented by s 430 of the Act. But it is not irrational to focus first upon the case as it was put by the appellant. In this case, the Tribunal comprehensively examined the primary case first put by the appellant. The Tribunal considered the evidence of the witnesses called by the appellant and reached the conclusions already identified. The Tribunal did not simply ignore the evidence in the sense contemplated in Minister for Immigration v Yusuf (supra). The point of principle referred to in the reasoning of the Chief Justice in Applicant S20/2002 remains determinative, whether the particular evidence is a document or a statutory declaration or embraces oral evidence. In this case, the Tribunal elected to accord the evidence of the witnesses called in support of the appellant's evidence, little weight, having duly considered the evidence. It did so on the footing that the evidence did not assist the Tribunal in resolving its concerns about the reliability and creditworthiness of the appellant. That conclusion was open to the Tribunal on the evidence and the treatment of the evidence is consistent with the principles established in Ex parte Applicant S20/2002 . Accordingly, the appeal must be dismissed. I certify that the preceding forty (40) numbered paragraphs is a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate: Dated: 20 May 2009 Counsel for the Appellant: Appellant represented by her solicitor Solicitor for the Appellant: Mr N Newman, Solicitor, Newman & Associates Counsel for the First Respondent: Mr G Kennett Solicitor for the First Respondent: Australian Government Solicitor Counsel for the Second Respondent: Second Respondent abiding by decision Solicitor for the Second Respondent: Second Respondent abiding by decision Date of Hearing: 12 September 2008 Date of Judgment: 20 May 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/517.html


case_text: appellant says that SZIEW v Minister for Immigration and Citizenship 101 ALD 295 per Madgwick J is authority for the proposition that a failure by the Tribunal to accord separate deliberative reasons for the rejection of the evidence of each witness is a failure to exercise jurisdiction. In that case, Madgwick J concluded that the Tribunal wrongly accorded the evidence of a witness "little weight" for the sole reason that the Tribunal had no opportunity to test the claims made by a witness that her relative had been captured and had heard certain things about the particular applicant's husband. The case also concerned events in Nepal. Having regard to the inquisitorial role of the Tribunal and its statutory function, the rejection of the evidence of a witness as to the statements made to the witness by her relative, on the sole ground identified by the Tribunal, reflected error.


case_text: The term "staple commercial product" is not defined in the Act, and there is a dearth of authority on the topic in Australia: per Stone J in Hexal Australia Pty Ltd v Roche Therapeutics Inc (2005) 66 IPR 325 at 331; [2005] FCA 1218 at [30] . In Theta Developments Pty Ltd v Leonardis (2002) 59 IPR 368 at 384; [2002] FCAFC 170 at [100] Wilcox and French JJ held that a spacer for foundation fastenings was a "staple commercial product", but there is no discussion in that case of that expression which directly pertains to the present issue. Dowsett J, the other member of the Full Court, did not need to expressly address the issue.


case_title: Theta Developments Pty Ltd v Leonardis (2002) 59 IPR 368


case_text: The phrase "staple commercial product" also appears in s 60(3) of the Patents Act 1977 (UK). In Pavel v Sony Corporation (CA (UK), 13 January 1993, unreported) the Court at [6.4] to [6.5] held that the term means a product that is of a kind which is needed every day and is generally obtainable. See also the brief discussion in Lahore, Patents, Trade Marks and Related Right , Butterworths, 2006 at [18,285], fn 1. The term "staple article commodity of commerce suitable for substantial non-infringing use" appears in the United States Code Patents (35 USC, s 271 (1952)). As discussed by A Monotti, "Contributory Infringement of a Process Patent under the Patents Act 1990 : Does it Exist after Rescare?" (1995) 6 AIPJ 217 at 218-221, both the UK and the US provisions were said to be of significance to the Industrial Property Advisory Committee in its Report, "Patents, Innovation and Competition in Australia" (AGPS, Canberra, 1984) leading to the Act. That background does not, however, itself give meaning to the words of s 117 as enacted, although of course it is of assistance in construing those words. 30 It is not necessary to explore fully the content of that expression. The Collins accepted that, but for one feature, the timber was a staple commercial product. The distinguishing feature, it was said, was that the Territory had "written off" the trees on the Howard Springs land as a commercial crop for use as timber (which they described as included within the term silverculture) in November 1995, and therefore that the Territory thereafter regarded the Howard Springs land as only suitable for clearing so that the licences permitting the removal of the timber were merely part of a "salvage" operation. Silverculture, they said, included forestry operations for commercial timber, woodchips, aesthetics, and other commercial uses. But for having been "written off", there would (as the Collins submitted) have been no issue but that the timber was a staple commercial product. 31 I accept that, in November 1995 or thereabouts, the Territory decided upon advice that the trees on the relevant property at Howard Springs were not of sufficient quality for their initially intended use for commercial timber and other associated products.


case_outcome: discussed

case_text: As counsel for the Territory recognised, there is an apparent difference in the views of the Full Court in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 ( Rescare ) on the one hand and in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 ( Bristol-Myers ) on the other, as to the construction of s 117(1).


case_text: As counsel for the Territory recognised, there is an apparent difference in the views of the Full Court in Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 ( Rescare ) on the one hand and in Bristol-Myers Squibb Company v FH Faulding & Co Ltd [2000] FCA 316 ; (2000) 97 FCR 524 ( Bristol-Myers ) on the other, as to the construction of s 117(1). 20 The contrast with Bristol-Myers can be seen from the remarks of Black CJ and Lehane J at 559 [95] where their Honours said: "We may say, with all the advantages of hindsight, that the drafting of s 117 is less than felicitous ... it is perhaps a pity that the drafter chose to use the phrase 'use of a product', which contains such a clear reference to the terminology of para (a) of the definition of 'exploit'. But s 117 provides its own dictionary, in subs (2). And our paraphrase of s 117(1), incorporating subs(2)(c), shows, in our view, that the construction urged by the appellant is not only a possible construction but a literal one. That literal construction being consistent with the apparent purpose of the provision, it is, in our view, plainly to be preferred." The reference to the construction of the appellant is to the contention that the use of an input to the process would amount to contributory infringement of the process patent then in suit by the supplier of the input. 21 It is correct, as counsel for the Territory contended, that Bristol-Myers was decided on the ground of want of novelty, so that strictly speaking those observations are obiter dicta. 22 As I have decided this matter on another basis in any event, I think it is preferable simply to note the Territory's contention that I should follow the decision in Rescare , and not to decide the issue as between those two lines of authority. If I were to accept the Territory's contention, it would follow that s 117(1) did not apply to the "supply" of the timber to ACOC by the Territory in any event, because ACOC's use of the product supplied (the timber) did not itself infringe the patent, and that to conclude otherwise would extend the protection afforded a patentee beyond that provided for by s 13(1) of the Act. 23 The additional contention of the Territory on this topic is that, in any event, it was the trees or the timber which was "supplied", and that the relevant product used by ACOC (if Bristol-Myers is to be followed) is not the timber itself but the selected bark and wood from that timber. 24 In my view, that alternative contention draws attention to the further submission of the Territory that it did not supply any product at all by the grant of the licences referred to.


case_text: In Rescare , Lockhart J (with whom Wilcox J agreed) at 24 said: "The lasts remaining point is whether the primary judge erred in holding that s 117 of the 1990 Act did not apply in relation to the alleged infringement of claims 9 and 11 in that he held that it was a precondition to the operation of that section in relation to a method claim that there be a product the use of which would infringe that method claim. In my opinion his Honour decided that question correctly." The other member of the Full Court, Sheppard J, did not address the issue. In the decision at first instance, Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 Gummow J at 243, concluded: "As I have indicated, where the invention relevantly claims a method or process, exploitation occurs, other than by use of the method or process, only by the doing of an act mentioned in para (a) of the definition of 'exploit'. There must be an act done 'in respect of a product resulting from such use'. Here, the respondent urges, and I agree, there is no such product with the result that, in a case such as the present, s 117 has no operation." Gummow J in Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 495 repeated that view.


case_title: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479


case_text: I have referred briefly to the licences to ACOC above. They were permissive, as ACOC was not obliged to enter upon the Howard Springs land and lop or clear any trees and remove any timber. ACOC was permitted, but not obliged, to enter upon the Howard Springs land and to harvest the trees and remove the timber from that land. Similar characteristics of an arrangement under a statutory licence were described by Wilson J in The Queen v Toohey; Ex parte Meneling Station Pty Ltd [1982] HCA 69 ; (1982) 158 CLR 327 at 352 as the grant of rights under a statutory scheme (in that case, grazing rights) rather than as a supply of fodder. See also per Brennan J in Harper v Minister for Sea Fisheries [1989] HCA 47 ; (1989) 168 CLR 314 at 334 (in that case, with respect to fishing rights).


case_title: Harper v Minister for Sea Fisheries [1989] HCA 47 ; (1989) 168 CLR 314


case_text: respondent in written submissions referred to comments of the delegate in Americana International Limited v Suyen Corporation [2008] ATMO 4 at [28] - [29] . The respondent contended that the decision in Health World Ltd [2008] FCA 100 ; (2008) 75 IPR 478 is distinguishable from the facts in these proceedings, in that in Health World [2008] FCA 100 ; (2008) 75 IPR 478 while the relevant companies had the same directors they had different shareholders, whereas in these proceedings there was not only a formal assignment and licence but Mr Lawrence was the sole shareholder and managing director of both the respondent and The Food Channel Pty Ltd. The respondent also referred to Oakley, Inc (2003) 58 IPR 452 at [30], as already set out in this judgment.


case_text: is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user ( Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.


case_title: Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22


case_outcome: followed

case_title: Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51 ; (1937) 58 CLR 641


case_text: is well-established that applications of this kind, which involve an exercise of the original jurisdiction of the Court and are subject to the powers of the Court under s 197 of the Act, are conducted as re-hearings and are not strictly "appeals": Blount v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 ; Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525.


case_text: addition to the contention that, on the face of the application, the respondent is the owner of the trade mark and there is no evidence that anyone other than the respondent was ever the owner of the trade mark, the respondent also submits, in summary: At the time of the application on 28 August 2003 the owner of the trade mark was The Food Channel Pty Ltd. The applicant can apply for a trade mark even if it does not intend to use it provided it has authorised or intends to authorise another person to use it, or if it intends to assign it to another. On 15 January 2004 the application for the trade mark was formally assigned by The Food Channel Pty Ltd to the respondent (cf respondent's written submissions p 17). Mr Lawrence as the sole shareholder and managing director of The Food Channel Pty Ltd and the respondent and author of the trade mark properly authorised his companies first The Food Channel Pty Ltd and then upon assignment the respondent to use the trade mark with a licence back to The Food Channel Pty Ltd from the respondent after the assignment with the intention to use the mark on the goods being printed matter in this case printed recipes (cf respondent's written submissions p 19). "It may be fair to say Mr Lawrence sees the business as his own and sometimes confuses the distinction between himself and his companies, as might be seen from the nature of his affidavits where he defines the Respondent as the 'Food Channel' and (sic) then talks generally about the business of Food Channel meaning his business generally being himself and both of his companies. This is understandable as he is not a lawyer and it appears on the face of the affidavit that he did not have legal representation or advice at the time of drawing and filing of his main affidavit. As the sole shareholder and director of both companies he looks upon them both as his business. He did however obtain legal advice at the time of the assignment and formally transferred the trade mark application from The Food Channel Pty Ltd to Food Network Pty Ltd and formally lodged the assignment with the Trade Marks Office where the assignment was formally recorded, with Food Channel network as the new owner" (respondent's written submissions pp 19-20). In order to establish its opposition under s 58 an opponent must show that: the respective trade marks of applicant and opponent be either identical or substantially identical ( Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 ; (1994) 31 IPR 375) ; and the respective goods or services of the parties be the "same kind of thing" ( Re Hicks' Trade Mark (1897) 22 VLR 636 ; and a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant ( Settef SpA (1987) 10 IPR 402 at 413 and Re Hicks' Trade Mark (1897) 22 VLR 636) ; the respondent contends that the applicant cannot show any of these elements and therefore must fail under s 58.


case_text: 44(1) was considered in considerable detail by the delegate in her decision. In summary, the delegate found as follows: the applicant's trade marks have earlier priority dates than that of the respondent (at [18]); principles applicable to the operation of s 44 can be found in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595 (at [20]); the applicant had submitted that the word "network" is understood by the relevant public as being the plural of "channel" and that therefore "Food Channel" and "Food Network" will not be distinguished in the marketplace. The delegate observed that she was aware that there were various entities in the television industry within Australia which used a naming convention for both the overall television network and individual channels within that network. However the delegate was satisfied from her own knowledge of the Australian television market that the public understanding of the relationship between the names is as a result of exposure over time to the naming convention, rather than the result of an inherent equivalence in terminology. Although the delegate understood that most television networks in the Australian market involved several related channels, she was not satisfied that at this stage, and failing an educative process of the public whereby the public came to recognise that a television network as comprising individual television channels, that the terms were the same. Accordingly the delegate did not consider the trade marks, when viewed as wholes, as being deceptively similar (at [21]-[23]); the delegate was satisfied that the market for "printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs", being goods within class 16, is separate from that of the television broadcasting and television entertainment markets (at [24]); the delegate noted that within the applicant's service claims in class 41 in respect of registrations 881666 and 881667 was the item "publication of printed publications." The delegate referred to Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145 ; (1983) 48 ALR 511 where Lockhart J had considered service marks and the problems of confusion with goods marks. The delegate considered that publication services are closely related to the results of those services, namely printed publications, be they books, leaflets, newspapers or newsletters, and that the presence of those goods within the specification was sufficient to trigger the particular provision of s 44 which deals with goods and services. Accordingly, the delegate was satisfied that some of the applicant's claimed services, namely the "publication of printed publications", were closely related to some of the respondent's goods, namely "printed publications, periodical publications, books and newspapers" (at [25]-[26]). Issues in contention First, I reject the respondent's contention that, because the applicant's trade mark is registered for services and trade mark 967804 relates to goods, s 44(1) is not relevant. Section 44(1) clearly contemplates rejection of the application for the registration of a trade mark in respect of goods , where a trade mark applicant's trade mark is substantially identical with or deceptively similar to, inter alia , a trade mark registered by another person (or sought to be registered) in respect of similar goods or closely related services . As the delegate observed, this issue was considered in some depth by Lockhart J in Caterpillar Loader Hire (Holdings) [1983] FCA 145 ; (1983) 48 ALR 511 , particularly at 522-523. I similarly note the recognition to the possibility of deceptive similarity between a service mark and a mark in respect of closely related goods discussed in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020 ; (1999) 93 FCR 365 at 380.


case_title: Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127


case_text: is also clear from the cases that ownership of a trade mark can vest in another without formal assignment, for example in a corporate alter ego of the creator of the trade mark. Examples of the application of this principle are Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318. I shall consider these cases later in this judgment. However, the respondent relies in its written submissions on Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? It may very well be the case that Mr Lawrence initially considered that The Food Channel Pty Ltd should apply for registration of trade mark 967804, but later considered a more appropriate trade mark applicant would be the respondent with the result that the trade mark application were assigned to the respondent. Commercially, this is perfectly acceptable. However from the perspective of the Act, this approach would only be acceptable if The Food Channel Pty Ltd were also the owner at the filing date (s 58). If The Food Channel Pty Ltd was not the owner at the filing date, as indeed the evidence suggests, but Mr Lawrence subsequently considered that the appropriate trade mark applicant should be the respondent, then Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 supports the proposition that the trade mark application should have been withdrawn and a fresh trade mark application lodged ( Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 at [130] - [131] ). I have already considered evidence from Mr Lawrence that the respondent was the owner at the filing date, and substantial conflicting evidence as to who the owner has been throughout the application process. The respondent's submissions as to s 27(1) do not clarify this matter. I do not consider that reliance on s 27(1) assists the respondent in discharging its evidentiary onus under s 58.


case_title: Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767 ; (2006) 69 IPR 243


case_title: Erven Warnink Besloten Vennootschop v J. Townend and Sons (Hull) Ltd (1979) AC 731

case_text: order to substantiate a claim in passing off the applicant must show: A misrepresentation Made by a trader in the course of trade To its prospective customers or ultimate consumers of goods or services supplied Which is calculated to injure the business or goodwill of the applicant (in the sense that this is a reasonably foreseeable consequence) and Which causes actual damage to a business or goodwill of the applicant or will probably do so. (Lord Diplock in Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742, cf re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.)


case_outcome: distinguished

case_text: has been observed elsewhere, s 58 is conventionally used as a ground of opposition where disputing parties have had a business or contractual relationship, and are in dispute as to which of those parties is the true owner of the mark ( Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) p 380, cf Elkington B, Hall M, Kell D, Trade Mark Law in Australia (Butterworths, 2000) p 77). However s 58 does not confine opposition to registration of a trade mark to a party itself claiming ownership of that trade mark. Examples of cases in which claims albeit unsuccessful were made by a third party against the registered owner of a trade mark pursuant to s 58 are Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 ; (2008) 76 IPR 161 and Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404 ; (2003) 61 IPR 98. Indeed in this case the respondent has not disputed the standing of the applicant to oppose registration of trade mark 967804 on the ground of s 58. I shall return to these cases later in this judgment. Onus Whether the act of making an application to register a trade mark in the name of a party other than the owner is a fatal defect in that application was given some consideration in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161. The decision in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 was delivered after my judgment in this case was reserved. The Court in Global Brand Marketing [2008] FCA 605 ; 2008) 76 IPR 161 also considered the decision in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98. So far as is relevant in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the cross-claimant in that case claimed that the validity of registration of a trade mark was to be determined at the filing date. The trial judge in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 referred to Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 where the trial judge had noted the innocent error in registering the wrong applicant. Further, in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the trial judge was satisfied that the company to which the application for registration was eventually assigned was the owner of the trade mark in question (at [135]-[136]). Both Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 are distinguishable from this case because in both cases the ownership position was clear. In contrast, I do not accept that the Act sanctions a position in which an application can be made where ownership of a trade mark is not capable of identification during the application process, and a finding cannot be made that the applicant was the owner, as is the case in these proceedings.


case_text: principles articulated in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 are not in issue in these proceedings. Contrary to the submission of the respondent, I find that there is no inconsistency between these principles and the concept of shift of the evidentiary onus of proof referred to by Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478. I note in passing that an appeal against the decision of Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478 was recently dismissed by the Full Court ( Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14) , although the Full Court did not consider the evidentiary issue raised by the respondent in this case. I accept the submission of the applicant that, once the opposer to registration makes a prima facie case, the evidentiary onus as to ownership shifts to the applicant for registration. The respondent in written submissions referred to comments of the delegate in Americana International Limited v Suyen Corporation [2008] ATMO 4 at [28] - [29] . The respondent contended that the decision in Health World Ltd [2008] FCA 100 ; (2008) 75 IPR 478 is distinguishable from the facts in these proceedings, in that in Health World [2008] FCA 100 ; (2008) 75 IPR 478 while the relevant companies had the same directors they had different shareholders, whereas in these proceedings there was not only a formal assignment and licence but Mr Lawrence was the sole shareholder and managing director of both the respondent and The Food Channel Pty Ltd. The respondent also referred to Oakley, Inc (2003) 58 IPR 452 at [30], as already set out in this judgment.


case_title: Kimberly-Clark Worldwide, Inc v Goulimis [2008] FCA 1415 ; (2008) 78 IPR 612


case_title: Knight v Beyond Properties Pty Ltd [2007] FCAFC 170


case_title: Levi Strauss & Co v Shah [1985] RPC 371

case_text: key issue in considering s 7(1) in this context is whether, notwithstanding the similarities between the two marks, the additions or alterations are such as to "substantially affect the identity" of trade mark 967804. This is clearly a question of fact in each case. Although there are decisions in which the court or relevant administrative body has considered whether, in the particular circumstances, alterations or embellishments have affected the identity of a trade mark (for example Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D), 131 (CA); Levi Strauss & Co v Shah [1985] RPC 371 ; QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553) I do not find these decisions of assistance in the present proceedings.


case_title: Malibu Boats West, Inc v Catanese (2000) 180 ALR 119


case_text: respondent submitted in summary that, because there was no evidence from the Australian licensees of the applicant, there is no evidence of any reputation of the applicant or its trade marks in Australia; further, no other evidence was given as to the applicant's reputation in Australia prior to the priority date of trade mark 967804. The respondent also referred to McCormick & Company Inc v McCormick (2000) 15 IPR 102, and, in what appears to be a confused submission, another of the respondent's trade marks. In order to successfully oppose registration of a trade mark pursuant to s 60 the applicant must satisfy the Court that: Its trade marks had acquired a reputation in Australia in relation to goods or services before the priority date of trade mark 967804; and Because of the reputation of the applicant's trade marks, the use of trade mark 967804 would be likely to deceive or cause confusion. The current form of s 60 of the Act follows amendments to the Act by the Trade Marks Amendment Act 2006 ( Cth). The most significant amendment to s 60 effected in 2006 was the removal of the reference to the opposed trade mark being "substantially identical with, or deceptively similar to" a relevant trade mark. First, in McCormick [2000] FCA 1335 ; (2000) 51 IPR 102 at [81] Kenny J said: What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows: reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.


case_text: has been observed elsewhere, s 58 is conventionally used as a ground of opposition where disputing parties have had a business or contractual relationship, and are in dispute as to which of those parties is the true owner of the mark ( Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008) p 380, cf Elkington B, Hall M, Kell D, Trade Mark Law in Australia (Butterworths, 2000) p 77). However s 58 does not confine opposition to registration of a trade mark to a party itself claiming ownership of that trade mark. Examples of cases in which claims albeit unsuccessful were made by a third party against the registered owner of a trade mark pursuant to s 58 are Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605 ; (2008) 76 IPR 161 and Mobileworld Communications Pty Ltd v Q & Q Global Enterprise [2003] FCA 1404 ; (2003) 61 IPR 98. Indeed in this case the respondent has not disputed the standing of the applicant to oppose registration of trade mark 967804 on the ground of s 58. I shall return to these cases later in this judgment. Onus Whether the act of making an application to register a trade mark in the name of a party other than the owner is a fatal defect in that application was given some consideration in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161. The decision in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 was delivered after my judgment in this case was reserved. The Court in Global Brand Marketing [2008] FCA 605 ; 2008) 76 IPR 161 also considered the decision in Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98. The trial judge in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 referred to Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 where the trial judge had noted the innocent error in registering the wrong applicant. Further, in Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 the trial judge was satisfied that the company to which the application for registration was eventually assigned was the owner of the trade mark in question (at [135]-[136]). Both Mobileworld Communications [2003] FCA 1404 ; (2003) 61 IPR 98 and Global Brand Marketing [2008] FCA 605 ; (2008) 76 IPR 161 are distinguishable from this case because in both cases the ownership position was clear. In contrast, I do not accept that the Act sanctions a position in which an application can be made where ownership of a trade mark is not capable of identification during the application process, and a finding cannot be made that the applicant was the owner, as is the case in these proceedings.


case_title: Morny Ltd's Trade Mark (1951) 68 RPC 55 (Ch D)


case_title: Newell v Mattel Inc (2001) 55 IPR 648


case_title: Nikken Wellness Pty Ltd v Van Voorst [2003] FCA 816


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


case_title: Pfizer Products Inc v Karam [2006] FCA 1663 ; [2006] 237 ALR 787

case_text: applicant has submitted that there is nothing contradictory or incompatible between the two decisions. I agree. So far as relevant in the context of this case, Gyles J observed in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 that: The principles articulated in Pfizer [2006] FCA 1663 ; [2006] 237 ALR 787 are not in issue in these proceedings. Contrary to the submission of the respondent, I find that there is no inconsistency between these principles and the concept of shift of the evidentiary onus of proof referred to by Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478. I note in passing that an appeal against the decision of Jacobson J in Health World [2008] FCA 100 ; (2008) 75 IPR 478 was recently dismissed by the Full Court ( Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14) , although the Full Court did not consider the evidentiary issue raised by the respondent in this case. I accept the submission of the applicant that, once the opposer to registration makes a prima facie case, the evidentiary onus as to ownership shifts to the applicant for registration.


case_text: is well-established that applications of this kind, which involve an exercise of the original jurisdiction of the Court and are subject to the powers of the Court under s 197 of the Act, are conducted as re-hearings and are not strictly "appeals": Blount v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 ; Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 ; (2002) 126 FCR 525. It is not in contention that s 27 of the Act requires that there be, inter alia , use of the trade mark "in relation to the goods and/or services." As Mansfield J observed in Philmac Pty Ltd [2002] FCA 1551 ; (2002) 126 FCR 525 at 539-540 it is necessary that the trade mark applicant was using or intended to use the trade mark as a trade mark. Whether a trade mark is used as a trade mark is judged objectively ( Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438 ; (2004) 61 IPR 242 at 248-249). Thus, for example, there is authority that preliminary discussions and negotiations about whether the mark should be used ( Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414) , forwarding of samples or brochures in order ascertain whether there is a market for the relevant goods or services (cf Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 417-418), and distribution of a product free of charge (cf re Ferodo Ltd's Application (1945) 62 RPC 111) do not constitute "use" of a trade mark as contemplated by the legislation.


case_text: in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 424 Richardson J in the New Zealand Court of Appeal said, in considering a provision similar to s 60, that: for myself I prefer to use a more neutral term such as "awareness" or "cognisance" or "knowledge" and on that basis to ask: having regard to the awareness of the opponent's mark in the New Zealand market for goods covered by the registration proposed, would the use of the applicant's mark be likely to deceive or cause confusion to persons in that market. Fourth, the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) is helpful in interpreting the s 60. Paragraph 4.10 of the Explanatory Memorandum provides as follows: 4.10 TRADE MARK SIMILAR TO TRADE MARK THAT HAS ACQUIRED A REPUTATION IN AUSTRALIA Section 60(a) 1 . The intention of section 60 of the Act is to implement Australia's obligations to protect well known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The provisions have not been written so as to establish a new class of trade marks ("well-known" marks) or to prescribe a particular threshold of how well-known a mark must be. Rather, the test has been written so that it can be applied to all marks. The test depends on the extent of the reputation in Australia that has been acquired by a sign. In light of that reputation, the question to be asked is whether the use of a subsequent trade mark would be likely to result in deception or confusion. Section 60 is a ground for opposition to a trade mark application for registration, which can also be used under section 88 as a basis for cancellation of a registration by the courts. 2. Under the current arrangements the provisions of section 60 require that the applied-for mark be substantially identical with, or deceptively similar to, the trade mark forming the basis of opposition before consideration of any deception or confusion, resulting from the reputation of the opponent's trade mark, can take place. Substantial identity and deceptive similarity are tests undertaken in examination of an application before the opposition process, and have very well established scope. 3. There have been a number of instances where a trade mark has an established reputation in Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion, even though the subsequent trade mark is not substantially identical with, or deceptively similar to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it is not possible to currently use this provision to prevent registration of a mark which fails the tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion or deception in relation to a well-known mark. The tests for deception and confusion are all well established in judicial authority, and hinge on the question of whether or not a reasonable number of people may be caused to wonder if a trade connection exists between the marks. By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark. 4. Under the amended provisions the consideration of oppositions would take into account the extent of the reputation of the opposing mark at the time the opposed mark was applied for, and the likelihood of deception and confusion occurring in the marketplace because of this. 4.10.1 Items 31 32 1. New paragraph 60(a) of the Act provides that a trade mark may be opposed where another trade mark has a reputation, and the registration of the opposed mark will cause confusion or deception in the market place, whether or not the reputation is built on a mark that is identical or deceptively similar to the opposed mark. In light of this material I consider that the following is clear.


case_text: the respondent relies in its written submissions on Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? Further, the cases cited by the respondent support the proposition that a trade mark may be a "house mark" of a corporate group, and that members of a corporate group other than the registered proprietor may have implied authority to use it (see in particular Revlon [1980] FSR 85 at 106 per Buckley LJ and Templeman LJ at 114-115 and Polo Textiles [1993] FCA 203 ; (1993) 42 FCR 227 at 239). In this respect these cases do not consider issues of ownership, only authorised use of a trade mark.


case_title: QH Tours Ltd v Mark Travel Corporation (1999) 45 IPR 553


case_text: is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12) , because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261 at 266.


case_title: Re Application by PPI Industries Pty Ltd (1989) 17 IPR 667


case_title: Re Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302


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


case_title: Re Hicks' Trade Mark (1897) 22 VLR 636


case_text: in Renaud Cointreau v Cordon Bleu International Ltee (2001) 193 ALR 657 at [74] the Full Court, approving the observation of the primary judge in those proceedings, said that the reputation which the applicant is required to demonstrate pursuant to the equivalent of s 60 is: one of which a significant or substantial number of persons were aware... What is "significant" or "substantial" will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.


case_title: Re Peddie's Application (1944) 61 RPC 31


case_title: Revlon Inc v Cripps & Lee Ltd [1980] FSR 85


case_title: Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158


case_title: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1


case_text: is not in contention that s 27 of the Act requires that there be, inter alia , use of the trade mark "in relation to the goods and/or services." As Mansfield J observed in Philmac Pty Ltd [2002] FCA 1551 ; (2002) 126 FCR 525 at 539-540 it is necessary that the trade mark applicant was using or intended to use the trade mark as a trade mark. Whether a trade mark is used as a trade mark is judged objectively ( Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2004] FCA 438 ; (2004) 61 IPR 242 at 248-249). Thus, for example, there is authority that preliminary discussions and negotiations about whether the mark should be used ( Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73 ; (1984) 156 CLR 414) , forwarding of samples or brochures in order ascertain whether there is a market for the relevant goods or services (cf Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 417-418), and distribution of a product free of charge (cf re Ferodo Ltd's Application (1945) 62 RPC 111) do not constitute "use" of a trade mark as contemplated by the legislation. The respondent submitted that giving away recipes could constitute use of a trade mark in trade or commerce and relied on findings of Drummond J in Oakley, Inc v Franchise China Pty Ltd ACN 080 032 604 (2003) 58 IPR 452 , in particular at [30] where his Honour said: That marked goods are supplied free of charge does not necessarily mean that the mark is not being used in the course of trade. That is shown by the free sample cases, such as Settef . The Irish Supreme Court, in Golden Pages Trade Mark [1985] FSR 27 , held that marked classified telephone directories distributed by the Post Office free of charge to telephone subscribers involved use of the mark by the directory publisher "in the course of trade": the publisher engaged in this activity to earn income from the sale to traders of advertising in the directory... Golden Pages was referred to with approval by Whitford J in "Visa" Trade Mark (1985) 102 RPC 323. I consider it correctly states the law. While it is not in contention that use of a trade mark on free trade samples may be trade mark use in relation to those goods, the applicant submits that the evidence does not disclose use of the trade mark in relation to goods and services within class 16 and that the respondent's reliance upon Oakley (2003) 58 IPR 452 in this context is misplaced. I agree. "Use" of trade mark 967804 by the original trade mark applicant, The Food Channel Pty Ltd, in the sense that the trade mark has been applied to written documents such as menus or recipes used in relation to catering services (which would be registrable in class 43) or free gifts in the promotion of, for example, meat (which are goods registrable in class 29), is not use in the sense of trade or dealing in relation to these documents. None of these uses appear to be with respect to "printed publications" within class 16 in relation to which application for registration of the trade mark was made. I do not consider that the respondent has demonstrated use by The Food Channel Pty Ltd, which was the trade mark applicant of trade mark 967804, as a trade mark so as to establish ownership through use. The respondent's case - relationship of Mr Lawrence, the respondent and The Food Channel Pty Ltd In addition to the contention that, on the face of the application, the respondent is the owner of the trade mark and there is no evidence that anyone other than the respondent was ever the owner of the trade mark, the respondent also submits, in summary: At the time of the application on 28 August 2003 the owner of the trade mark was The Food Channel Pty Ltd. The applicant can apply for a trade mark even if it does not intend to use it provided it has authorised or intends to authorise another person to use it, or if it intends to assign it to another. On 15 January 2004 the application for the trade mark was formally assigned by The Food Channel Pty Ltd to the respondent (cf respondent's written submissions p 17). Mr Lawrence as the sole shareholder and managing director of The Food Channel Pty Ltd and the respondent and author of the trade mark properly authorised his companies first The Food Channel Pty Ltd and then upon assignment the respondent to use the trade mark with a licence back to The Food Channel Pty Ltd from the respondent after the assignment with the intention to use the mark on the goods being printed matter in this case printed recipes (cf respondent's written submissions p 19). "It may be fair to say Mr Lawrence sees the business as his own and sometimes confuses the distinction between himself and his companies, as might be seen from the nature of his affidavits where he defines the Respondent as the 'Food Channel' and (sic) then talks generally about the business of Food Channel meaning his business generally being himself and both of his companies. This is understandable as he is not a lawyer and it appears on the face of the affidavit that he did not have legal representation or advice at the time of drawing and filing of his main affidavit. As the sole shareholder and director of both companies he looks upon them both as his business. He did however obtain legal advice at the time of the assignment and formally transferred the trade mark application from The Food Channel Pty Ltd to Food Network Pty Ltd and formally lodged the assignment with the Trade Marks Office where the assignment was formally recorded, with Food Channel network as the new owner" (respondent's written submissions pp 19-20). In order to establish its opposition under s 58 an opponent must show that: the respective trade marks of applicant and opponent be either identical or substantially identical ( Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 ; (1994) 31 IPR 375) ; and the respective goods or services of the parties be the "same kind of thing" ( Re Hicks' Trade Mark (1897) 22 VLR 636 ; and a person other than the applicant has the earlier claim to ownership based on use prior to both the present application to register and actual use of the trade mark by the applicant ( Settef SpA (1987) 10 IPR 402 at 413 and Re Hicks' Trade Mark (1897) 22 VLR 636) ; the respondent contends that the applicant cannot show any of these elements and therefore must fail under s 58.


case_title: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407

case_text: is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user ( Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.


case_text: 44(1) was considered in considerable detail by the delegate in her decision. In summary, the delegate found as follows: the applicant's trade marks have earlier priority dates than that of the respondent (at [18]); principles applicable to the operation of s 44 can be found in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 and Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-595 (at [20]); the applicant had submitted that the word "network" is understood by the relevant public as being the plural of "channel" and that therefore "Food Channel" and "Food Network" will not be distinguished in the marketplace. The delegate observed that she was aware that there were various entities in the television industry within Australia which used a naming convention for both the overall television network and individual channels within that network. However the delegate was satisfied from her own knowledge of the Australian television market that the public understanding of the relationship between the names is as a result of exposure over time to the naming convention, rather than the result of an inherent equivalence in terminology. Although the delegate understood that most television networks in the Australian market involved several related channels, she was not satisfied that at this stage, and failing an educative process of the public whereby the public came to recognise that a television network as comprising individual television channels, that the terms were the same. Accordingly the delegate did not consider the trade marks, when viewed as wholes, as being deceptively similar (at [21]-[23]); the delegate was satisfied that the market for "printed matter, periodical publications, books and newspapers; paper and cardboard articles; posters, calendars; writing instruments, pencils, pens, stationery, writing pads, greeting cards; photographs", being goods within class 16, is separate from that of the television broadcasting and television entertainment markets (at [24]); the delegate noted that within the applicant's service claims in class 41 in respect of registrations 881666 and 881667 was the item "publication of printed publications." The delegate referred to Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145 ; (1983) 48 ALR 511 where Lockhart J had considered service marks and the problems of confusion with goods marks. The delegate considered that publication services are closely related to the results of those services, namely printed publications, be they books, leaflets, newspapers or newsletters, and that the presence of those goods within the specification was sufficient to trigger the particular provision of s 44 which deals with goods and services. Accordingly, the delegate was satisfied that some of the applicant's claimed services, namely the "publication of printed publications", were closely related to some of the respondent's goods, namely "printed publications, periodical publications, books and newspapers" (at [25]-[26]). Issues in contention


case_title: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203


case_title: The Shell Company of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601

case_text: is clear from the cases that the date on which it is necessary for the applicant to show that it is the owner of the relevant trade mark is the date of filing the application (in this case, a date which is also the priority date as defined by s 12) , because it is based on the state of facts existing at that date that the title of a trade mark to registration is determined: The Seven Up Company v O.T. Limited [1947] HCA 59 ; [1947] 75 CLR 203 at 211, The Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 624, Rael Marcus v Sabra International Pty Ltd [1995] FCA 1059 ; (1995) 30 IPR 261 at 266. As a general proposition, it may be inferred that, by the act of filing an application for registration of a trade mark, the applicant claims "ownership" of the trade mark for the purposes of s 58. As Dixon J observed in The Shell Company of Australia Ltd [1948] HCA 27 ; (1949) 78 CLR 601 at 627-628: But, however that may be, it is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. It is settled law in Australia that "ownership" of a trade mark, which confers the right to registration under the Act, arises because the claimant for registration is either (or both) the author of the trade mark or first user ( Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184 ; (2007) 243 ALR 127 per Kenny J at [4]-[5] and Allsop J at [66]-[67]; cf Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co, 2008)). As Finkelstein J observed in Malibu Boats West, Inc v Catanese (2000) 180 ALR 119 at [25]: In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: In Re Hudson's Trade Marks (1886) 32 ChD 311 , 319; Seven-Up Co v O T Ltd [1947] HCA 56 ; (1947) 75 CLR 203 ; Shell Co of Australia Ltd v Rohm & Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 , 626. Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202. A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia , at 625, 627. At common law that is the person who first used the mark.


case_text: is also clear from the cases that ownership of a trade mark can vest in another without formal assignment, for example in a corporate alter ego of the creator of the trade mark. Examples of the application of this principle are Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318. I shall consider these cases later in this judgment. However, the respondent relies in its written submissions on Revlon Inc v Cripps & Lee Ltd [1980] FSR 85 , Polo Textile Industries v Domestic Textile Corporation Pty Ltd [1993] FCA 203 ; (1993) 42 FCR 227 , Crazy Ron's [2004] FCAFC 196 ; (2004) 209 ALR 1 and Torpedoes [2003] FCA 901 ; (2003) 59 IPR 318. As the respondent has relied on these cases in the context of referring to s 27(1) of the Act, I can only infer that the respondent claims that, at the filing date, there was implied authorisation by The Food Channel Pty Ltd of the respondent to use trade mark 967804 within the meaning of s 27(1)(b)(ii). Was there implied authorisation to use? The cases cited by the respondent support the proposition that a person may be impliedly vested with ownership by the original owner of a trade mark such as, for example, as a parent company causing a subsidiary to apply for ownership. So, for example, in Torpedoes Sportswear [2003] FCA 901 ; (2003) 59 IPR 318 while the relevant trade mark was originally owned by Mr Thorpe, it was not in contention that it was registered, with his authority, in the name of a company under his control, and that that company was the "owner" of the trade mark within the meaning of the Act. However ownership impliedly vested and resulting in an application for registration by the person so vested (which would satisfy s 58) should not be confused with an implied intention of a registered owner to authorise use of the trade mark by related parties (which is relevant under s 27(1)(b)(ii)). They are distinct concepts.


case_title: Watson v Foxman (1995) 49 NSWLR 315

case_text: 52 Trade Practices Act , provides that a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive. It is ordinarily necessary for a party claiming breach of s 52 to prove to the reasonable satisfaction of the Court the nature of the alleged conduct and the circumstances which rendered the conduct misleading: Watson v Foxman (1995) 49 NSWLR 315 at 318. Principles relevant to consideration of claimed breach of s 52 include the following: In these proceedings the evidence clearly shows that the applicant is a television programming network, web site and publisher specialising in the subject of food, and that it distributes internationally television programmes focussing on the subject of food. The evidence before the Court as to the activities of the respondent reveals that it is a company with one shareholder and one director (Mr Lawrence), and that its activities have included distribution of free recipes, menus and leaflets to promote, inter alia , the sale of meat. I consider it very likely that, while there could be a transitory association between the products of the applicant and the respondent in the mind of a member of the public, the brief association would be quickly dispelled on closer association with the products. In any event, as I have observed, no submissions have been put to the Court to substantiate a case pursuant to s 52 Trade Practices Act in the terms which I have outlined (or otherwise), and no evidence put to the Court to support such a case. Passing off


case_text: Section 298K, it is contended, must be read subject to the objects of Pt XA contained in s 298A and particularly s 298F which has the effect of importing into s 298K a central notion of discrimination against a person or relevantly identified class of persons as compared with others. Since the termination was ubiquitous, there was no threshold of discrimination or differential treatment. Accordingly, the statutory presumption has no role to play in the circumstances of this case. The Employment Advocate must discharge an onus of establishing the colour of the 'ingredients' (to use a term adopted by Dixon J in another context in The King v Hush; Ex parte Devanny [1932] HCA 64 ; (1932) 48 CLR 487 at p.507) of s 298K which involves establishing facts which would support an hypothesis that the conduct occurred for a reason or reasons falling within s 298L and only then could the presumption contained in s 298V arise or have a role to play. 28 The notion that the Employment Advocate might prove the conduct and simply allege a reason or reasons falling within s 298L and then stand on the presumption as a proper discharge of the onus of proof fails, it is said, to understand the proper role of s 298V of the Act. 29 In relation to the second contravention based upon the alleged refusal to employ 11 of the 12 individuals, the respondents say that as to Blackadder, his employment was continued notwithstanding the alleged dismissal. As to Brooks, Campbell, Delaforce, Forrest, M R McKenzie, P F McKenzie, Moss and J K Young, the respondents say that each of those former employees was offered re-employment and in some cases the offers of re-employment were taken up and in other cases refused. In the case of Hambly, the respondents say that he was not offered further work after the termination, for reasons related to his work performance and conduct. As to Swain, the respondents plead that he contacted the abattoir by letter dated 12 September 2002 and again on or about 18 January 2003 and was advised that no work was then available. Accordingly, the respondents deny a refusal to employ. 329 The conventional approach to this section is explained by Wilcox and Cooper JJ in David's Distribution Pty Ltd v National Union of Workers [1999] FCA 1108 ; (1999) 91 FCR 463 at [109] , in these terms: 'Section 298L(1)(l) requires that the applicant prove the employee was dismissed from his or her employment. It also requires it to be proved that the employee was at the time of the dismissal dissatisfied with his or her industrial conditions and was a member of an industrial association that was seeking better industrial conditions. In order to make the link between the dismissal and the circumstances which the applicant must establish to bring the dismissal within s 298K, the Act provides in s 298V a statutory presumption that the link exists in certain circumstances. Under s 298V in proceedings under Div 6 of Pt XA of the Act for a contravention of a section in Pt XA, an allegation in those proceedings of conduct for a prohibited reason is sufficient for it to be presumed that the conduct was engaged for that reason unless the employer proves to the contrary. Section 298V does not relieve the applicant in proceedings under Div 6 of Pt XA of the Act from proving, on the balance of probabilities, each of the ingredients of the contravention. It enables the allegation to stand as sufficient proof of the fact unless the employer proves otherwise: R v Hush; Ex parte Devanny [1932] HCA 64 ; (1932) 48 CLR 487 at 507'


case_text: These proceedings were commenced on 9 May 2003 and have been the subject of extensive case management. Some aspects of the interlocutory steps (but not all) are described at [38], pages 29-33 of McIlwain v Ramsey Food Packaging Pty Ltd [2005] FCA 1233 based upon a chronology put before me by the respondents as part of the respondents' application for non-party discovery and leave to issue subpoenas. 62 All of these steps demonstrate that the factual and legal controversy has been framed over a considerable period with many interlocutory orders directed to joinder of parties, amendments to the Statement of Claim, the filing of defences, amendments to the Defence, the provision of particulars, verified discovery, inspection, various interlocutory applications and the preparation of statements in support of the claim, statements in response and statements in reply. A considerable amount of time, energy, cost and intellectual effort has been directed by the parties to joining issue on the factual and legal controversy with extensive recourse to Court supervision and Court engagement. 63 The trial of the action was to commence on Monday, 10 October 2005. However, approximately one week prior to the trial a question arose as to whether the trial would proceed on the issue of the alleged contravention with a separate hearing on the issue of compensation. As to the question of bifurcating the issues, I indicated that I was not prepared at that late stage to separate issues and required the applicant to provide particulars of the compensation claim. The preparation for trial throughout proceeded on the footing that particulars of the compensation claim would be provided to the respondents prior to trial. By consent, the trial was adjourned to 12 October to enable particulars of the compensation claim to be provided to the respondents, discussions to take place between the parties as to a proposed Reply by the applicant to the Amended Defence of the respondents and to deal with objections to evidence with the trial to commence on Monday, 17 October. 65 The essence of the Reply was to put in issue, as counsel for the applicant put it, 'whether or not what was offered to the named persons was, in fact, a genuine offer and whether what was offered amounted to a breach [of the Act] or not' (page 9, line 27 of the Transcript). After hearing counsel for the respondents opposing leave, I stood the matter down briefly and took the view that the responsive matters the subject of the Reply were within the scope of the existing factual controversy, that no prejudice was demonstrated to the respondents in giving leave and that the question of whether a further contravention based upon s 298K(1)(c) arose on the facts before the parties arising out of the statements was a conclusionary matter which could properly be raised. I gave short Reasons about those matters ( McIlwain v Ramsey Food Packaging Pty Ltd [2005] FCA 1445) but directed that the third ground of contravention should be pleaded by way of a Further Further Amended Statement of Claim ('F F A S C'). 66 Counsel for the applicant and the respondents took the view that the trial of the action would be concluded within two weeks commencing Monday, 17 October and accordingly the commencement of the trial was adjourned until 17 October to enable the F F A S C to be formulated by the applicant and served on the respondents during the course of Thursday, 13 October 2005. I made it clear to counsel for the respondents that should the F F A S C raise further material facts which went beyond the scope of the facts raised in the statements exchanged between the parties, I would be willing to hear the respondents in relation to the F F A S C and determine whether the third ground of contravention should properly be the subject of leave in the context of the facts actually pleaded in the F F A S C as it emerged. The F F A S C was also to incorporate proper particulars of the compensation claim. 67 On Monday, 17 October at the commencement of the trial, the respondents opposed leave to amend the Further Amended Statement of Claim in accordance with a proposed F F A S C to introduce the third ground of contravention in reliance on s 298K(1)(c) having regard to what was said to be the proper understanding of the scope and construction of that provision and particularly the meaning of 'employee' in s 298K(1)(c).


case_text: Order 35, Rule 1 of the Federal Court Rules is the source of the power to entertain a 'no case' submission without the need to invoke s 79 of the Judiciary Act 1903 (Cth) ( Australian Competition and Consumer Commission v Amcor Printing Papers Group Ltd (2000) 169 ALR 344 at [60] per Sackville J). The general rule of practice is that a 'no case' submission will not be entertained or, alternatively, no ruling made unless the moving party elects to call no evidence ( Protean (Holdings) Ltd v American House Assurance Co. [1985] VR 187; Stevenson v Barham [1977] HCA 4 ; (1977) 136 CLR 190 at page 202, per Mason and Jacobs JJ) although, the general rule is not an 'inflexible rule' ( Compaq Computer Australia Pty Ltd v Merry & Ors (1998) 157 ALR 1 at page 7) and not necessarily the 'right course in every kind of case' ( Parry v Aluminium Corporation [1940] WN 44 at 46 per Goddard LJ). The general rule must 'give way to particular circumstances' in the exercise of the discretion ( Stevenson v Barham (supra) at page 203, per Mason and Jacobs JJ) and ultimately the matter is one for the discretion of the judge having regard to the just and convenient disposition of the litigation ( Protean at page 238 per Tadgell J) or, as French J observes, a function of judicial case management conditioned by the circumstances of the case ( J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (Western Australian Branch) & Ors (No. 2) (1992) 38 FCR 458. 86 The general rule recognises the undesirability of the judge embarking upon an assessment of the evidence and particularly the reliability of witnesses twice in the one proceeding, the importance of avoiding a delay in the conduct of the trial and the utility of avoiding a second trial if a 'no case' submission upheld by the trial judge with judgment for the respondent is set aside upon appeal. If the 'no case' submission turns solely on a question of law or jurisdiction ( Stevenson v Barham (supra)), or the cause of action relied upon by the applicant involves an allegation of fraud or allegations analogous to fraud ( ACCC v Amcor (supra)), the respondent (defendant) ought, as a matter of discretion, not be put to an election. If however, the submission involves taking the totality of the evidence of the applicant, assessing that evidence at its highest for the applicant and dealing with a contention by the moving party that the evidence does not support the causes of action pleaded or, alternatively, where it is contended that there is some evidence to support the plaintiff's claim but the evidence is sufficiently unreasonable that it should be dismissed without calling upon the respondents to adduce evidence, there seems no relevant point of departure from the application of the general rule that the respondents ought to make an election to adduce no evidence before being given leave to make the submission of 'no case' to answer (see Residues Treatment Trading Co. Ltd v Southern Resources Ltd (1989) 52 SASR 54 at page 68 per Perry J. 91 Mr Hatcher, having made the election, made extensive submissions in support of the application. Counsel for the applicant responded and Mr Hatcher made submissions in reply. In dealing with the disposition of the matter, I propose to review all of the evidence and the issues with a view to making final dispositive determinations on all matters. In James v ANZ Bank (supra), Toohey J made these observations at pg 400: 'If a defendant elects not to call evidence, the judge has before him all the evidence upon which he is called to make a decision. Any distinction between the role of the judge in ruling on a no case submission and the role of the judge as an arbiter of fact becomes largely illusory.' And in Prentice v Cummins (supra), Sackville J made these observations at [110]: 'In Rasomen Pty Ltd v Shell Co. of Australia Ltd (1997) 75 FCR 216, the Full Court held (at 228) that in addressing a no case submission the function of a judge sitting alone is no different from that which has to be performed by a judge who has heard all the evidence of the parties in the usual way and who has to give final judgment. In particular, where the moving party (in this case the respondents) contends that the evidence does not give rise to the inferences of fact alleged by the opponent (in this case the Trustees), it is appropriate for the trial judge to decide what inferences he or she would draw from the evidence and to act on those conclusions, if necessary to determine finally the issues in the case: Australian Competition and Consumer Commission v Amcor Printing Papers Group Ltd (2000) 169 ALR 344 at 360.'


case_text: Order 35, Rule 1 of the Federal Court Rules is the source of the power to entertain a 'no case' submission without the need to invoke s 79 of the Judiciary Act 1903 (Cth) ( Australian Competition and Consumer Commission v Amcor Printing Papers Group Ltd (2000) 169 ALR 344 at [60] per Sackville J). The general rule of practice is that a 'no case' submission will not be entertained or, alternatively, no ruling made unless the moving party elects to call no evidence ( Protean (Holdings) Ltd v American House Assurance Co. [1985] VR 187; Stevenson v Barham [1977] HCA 4 ; (1977) 136 CLR 190 at page 202, per Mason and Jacobs JJ) although, the general rule is not an 'inflexible rule' ( Compaq Computer Australia Pty Ltd v Merry & Ors (1998) 157 ALR 1 at page 7) and not necessarily the 'right course in every kind of case' ( Parry v Aluminium Corporation [1940] WN 44 at 46 per Goddard LJ). The general rule must 'give way to particular circumstances' in the exercise of the discretion ( Stevenson v Barham (supra) at page 203, per Mason and Jacobs JJ) and ultimately the matter is one for the discretion of the judge having regard to the just and convenient disposition of the litigation ( Protean at page 238 per Tadgell J) or, as French J observes, a function of judicial case management conditioned by the circumstances of the case ( J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (Western Australian Branch) & Ors (No. 2) (1992) 38 FCR 458.


case_text: Order 35, Rule 1 of the Federal Court Rules is the source of the power to entertain a 'no case' submission without the need to invoke s 79 of the Judiciary Act 1903 (Cth) ( Australian Competition and Consumer Commission v Amcor Printing Papers Group Ltd (2000) 169 ALR 344 at [60] per Sackville J). The general rule of practice is that a 'no case' submission will not be entertained or, alternatively, no ruling made unless the moving party elects to call no evidence ( Protean (Holdings) Ltd v American House Assurance Co. [1985] VR 187; Stevenson v Barham [1977] HCA 4 ; (1977) 136 CLR 190 at page 202, per Mason and Jacobs JJ) although, the general rule is not an 'inflexible rule' ( Compaq Computer Australia Pty Ltd v Merry & Ors (1998) 157 ALR 1 at page 7) and not necessarily the 'right course in every kind of case' ( Parry v Aluminium Corporation [1940] WN 44 at 46 per Goddard LJ). The general rule must 'give way to particular circumstances' in the exercise of the discretion ( Stevenson v Barham (supra) at page 203, per Mason and Jacobs JJ) and ultimately the matter is one for the discretion of the judge having regard to the just and convenient disposition of the litigation ( Protean at page 238 per Tadgell J) or, as French J observes, a function of judicial case management conditioned by the circumstances of the case ( J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (Western Australian Branch) & Ors (No. 2) (1992) 38 FCR 458. 85 Nevertheless, the generality of the usual practice is well recognised and approved by the High Court ( Stevenson v Barham (supra) at page 202; Tozer Kemsley & Millbourn (Australasia's Asia) Pty Ltd v Collier's Interstate Transport Services Ltd (1955 1956) [1956] HCA 6 ; 94 CLR 384 at pg 402 per Fullagar J), recognised by the Federal Court ( James & Ors v Australia and New Zealand Banking Group Ltd (1985 86) 64 ALR 347 per Toohey J at pg 400 (Appendix); Compaq v Merry (supra) at pgs 6 and 7) and applied in State superior courts (see the discussion of the authorities by Finkelstein J in Compaq v Merry (supra) at pages 6 and 7). 86 The general rule recognises the undesirability of the judge embarking upon an assessment of the evidence and particularly the reliability of witnesses twice in the one proceeding, the importance of avoiding a delay in the conduct of the trial and the utility of avoiding a second trial if a 'no case' submission upheld by the trial judge with judgment for the respondent is set aside upon appeal. If the 'no case' submission turns solely on a question of law or jurisdiction ( Stevenson v Barham (supra)), or the cause of action relied upon by the applicant involves an allegation of fraud or allegations analogous to fraud ( ACCC v Amcor (supra)), the respondent (defendant) ought, as a matter of discretion, not be put to an election. If however, the submission involves taking the totality of the evidence of the applicant, assessing that evidence at its highest for the applicant and dealing with a contention by the moving party that the evidence does not support the causes of action pleaded or, alternatively, where it is contended that there is some evidence to support the plaintiff's claim but the evidence is sufficiently unreasonable that it should be dismissed without calling upon the respondents to adduce evidence, there seems no relevant point of departure from the application of the general rule that the respondents ought to make an election to adduce no evidence before being given leave to make the submission of 'no case' to answer (see Residues Treatment Trading Co. Ltd v Southern Resources Ltd (1989) 52 SASR 54 at page 68 per Perry J.


case_text: Order 35, Rule 1 of the Federal Court Rules is the source of the power to entertain a 'no case' submission without the need to invoke s 79 of the Judiciary Act 1903 (Cth) ( Australian Competition and Consumer Commission v Amcor Printing Papers Group Ltd (2000) 169 ALR 344 at [60] per Sackville J). The general rule of practice is that a 'no case' submission will not be entertained or, alternatively, no ruling made unless the moving party elects to call no evidence ( Protean (Holdings) Ltd v American House Assurance Co. [1985] VR 187; Stevenson v Barham [1977] HCA 4 ; (1977) 136 CLR 190 at page 202, per Mason and Jacobs JJ) although, the general rule is not an 'inflexible rule' ( Compaq Computer Australia Pty Ltd v Merry & Ors (1998) 157 ALR 1 at page 7) and not necessarily the 'right course in every kind of case' ( Parry v Aluminium Corporation [1940] WN 44 at 46 per Goddard LJ). The general rule must 'give way to particular circumstances' in the exercise of the discretion ( Stevenson v Barham (supra) at page 203, per Mason and Jacobs JJ) and ultimately the matter is one for the discretion of the judge having regard to the just and convenient disposition of the litigation ( Protean at page 238 per Tadgell J) or, as French J observes, a function of judicial case management conditioned by the circumstances of the case ( J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (Western Australian Branch) & Ors (No. 2) (1992) 38 FCR 458. 85 Nevertheless, the generality of the usual practice is well recognised and approved by the High Court ( Stevenson v Barham (supra) at page 202; Tozer Kemsley & Millbourn (Australasia's Asia) Pty Ltd v Collier's Interstate Transport Services Ltd (1955 1956) [1956] HCA 6 ; 94 CLR 384 at pg 402 per Fullagar J), recognised by the Federal Court ( James & Ors v Australia and New Zealand Banking Group Ltd (1985 86) 64 ALR 347 per Toohey J at pg 400 (Appendix); Compaq v Merry (supra) at pgs 6 and 7) and applied in State superior courts (see the discussion of the authorities by Finkelstein J in Compaq v Merry (supra) at pages 6 and 7).


case_title: Parry v Aluminium Corporation [1940] WN 44


case_title: J-Corp Pty Ltd v Australian Builders Labourers Federated Union of Workers (Western Australian Branch) & Ors (No. 2) (1992) 38 FCR 458


case_text: Nevertheless, the generality of the usual practice is well recognised and approved by the High Court ( Stevenson v Barham (supra) at page 202; Tozer Kemsley & Millbourn (Australasia's Asia) Pty Ltd v Collier's Interstate Transport Services Ltd (1955 1956) [1956] HCA 6 ; 94 CLR 384 at pg 402 per Fullagar J), recognised by the Federal Court ( James & Ors v Australia and New Zealand Banking Group Ltd (1985 86) 64 ALR 347 per Toohey J at pg 400 (Appendix); Compaq v Merry (supra) at pgs 6 and 7) and applied in State superior courts (see the discussion of the authorities by Finkelstein J in Compaq v Merry (supra) at pages 6 and 7).


case_title: James & Ors v Australia and New Zealand Banking Group Ltd (1985-86) 64 ALR 347