case_outcome: followed

case_title: Dean-Willcocks v Companies Auditors and Liquidators Disciplinary Board (2006) 59 ACSR 698 ; [2006] FCA 1438

case_text: Law did not specify that a cap was required. In Dean-Willcocks v Companies Auditors and Liquidators Disciplinary Board & Anor (2006) 59 ACSR 698 ; [2006] FCA 1438 ( Dean-Willcocks ), however, Tamberlin J accepted that in determining whether a registered liquidator has failed to carry out or perform "adequately and properly" any duties or functions required by Australian law to be carried out or performed by a registered liquidator for the purposes of s 1292(2)(d)(ii) , it was permissible to test performance of the registered liquidator in the office of administrator against professional standards and codes (at [21]-[34]). Moreover, his Honour held that the concept of the performance of the function of an administrator was wide enough to include the acceptance of appointment to that office (at [32]). Tamberlin J's views must apply a fortiori to s 1292(2)(d)(i) and the office of a liquidator a fortiori because an argument, based on the presence of the words "required by an Australian law to be carried out or performed by a registered liquidator" in para (ii) of s 1292(2)(d) , that subsection (2) refers only to legislative prescriptions (an argument rejected by his Honour) is not available in respect of para (i). ASIC's proposition was that by not including a cap or upper limit, Mr Gould had fallen short of a professional standard which was stated in the Capping provisions of the Guide and the Statement. Before the Tribunal ASIC relied on the tender of those documents unsupported by any expert testimony. The Guide and the Statement of the IPAA On 20 December 1997 the IPAA issued the Guide, called a "Guide to Hourly Rates", to have effect from 1 December 1997. The Guide included certain Classifications by reference to insolvency experience and Hourly Rates chargeable in respect of persons falling within the various classes. In Dean-Willcocks , two Codes of Professional Conduct issued by the IPAA and the Institute of Chartered Accounts in Australia dealt with professional independence, conflicts of interest, and disclosure of relationships that might be thought to impinge on the independence of a registered liquidator acting as administrator. Moreover, CALDB relied on evidence of an expert (Mr Lombe). The words "or is otherwise not a fit and proper person to remain registered as a liquidator" provide an alternative to the criteria that precede in subparas (i) and (ii). Paragraph (d) must, however, be read as a whole. Its criteria can be analysed as follows (I will refer only to para (i) but the same analysis applies to para (ii)): (1) failure to perform adequately and properly the duties of a liquidator; or (2) being otherwise not a fit and proper person to remain registered as a liquidator. The word "otherwise" shows that the provision takes it for granted that a failure of the kind described in (1) will, without more, demonstrate that the person is not a fit and proper person to remain registered as a liquidator. Consistently with this understanding, the expression "the duties of a liquidator" directs attention, not to a specific duty or even to two or more specific duties, but to the duties in general of a liquidator. Of course, whether a registered liquidator has failed to perform adequately and properly the duties in general of a liquidator will be decided by reference to his or her failure to perform specific duties. Both limbs (1) and (2) call for an exercise of assessment, evaluation and judgment in relation to the registered liquidator's conduct. It is not enough, for example, in a mechanical and arithmetical way, simply to seek to identify a minimum of two failures to perform adequately and properly particular duties. Whether the Capping provisions in the Guide and the Statement were "professional standards" of the kind to which Tamberlin J was referring in Dean-Willcocks , depends on whether they purported to establish levels of "adequate" and "proper" performance that a registered liquidator must attain at peril of enlivening criterion (1) or criterion (2) above a serious matter. I do not think that they did. Two considerations lead me to this conclusion. First, neither Capping provision was contained in a document that purported to lay down standards of professional conduct of that kind. Second, the ambiguous and loose language of the Capping provisions themselves is not what one would expect of such a standard. The Guide purported to provide guidance, and stated that it was not to be used in every instance. These features characterised the Guide as a whole. There is no reason to exclude from them the Capping provision. I turn now to the language of the Guide's Capping provision. No doubt a professional standard of the kind contemplated by Tamberlin J in Dean-Willcocks may be attended by ambiguity. Moreover, as indicated above, I accept that in the present cases remuneration was approved prospectively. However, the loose language and uncertainty of the Capping provision of the Guide suggests that it was not intended by the IPAA to be a professional standard in the sense described. The Statement likewise does not establish a professional standard in that sense. First, it is a Statement of "Best Practice", not of a minimum required. As the "Conclusion" makes clear, the Statement was not intended to be prescriptive (see [69] above). Secondly, there are again certain ambiguities touching the Capping provision. I referred to two of these at [67] and [107] above. Whereas the Capping provision in the Guide predicated a "resolution for remuneration", that in the Statement predicates a "resolution for approval of remuneration". As in the Guide, it is unclear what the "specified amount" is to be a specified amount of. Mr Gould submits that in the absence of expert evidence, it was not permissible for the Tribunal to find that he had not carried out or performed his duties as liquidator of Popwing "adequately and properly". Mr Gould submits that this question is one of judgment, not a pure question of law, and that the answer must be informed by evidence of accepted proper practice: Mr Gould refers to Re Vouris; Epromotions Australia Pty Ltd and Relectronic-Remech Pty Ltd (in liq) [2003] NSWSC 702 ; (2003) 47 ACSR 155 at [101] and [103] Goodman v Australian Securities and Investments Commission (2004) 50 ACSR 1 at [26]; Dean-Willcocks at [24]-[26]; Albarran v Companies Auditors and Liquidators Disciplinary Board [2007] HCA 23 ; (2007) 231 CLR 350 at [18] , [20] and [24].


case_text: noting the parties' submissions, the Tribunal addressed the question whether its jurisdiction to review was limited by reference to the scope of ASIC's application before the Board. The Tribunal said (at [30]) that its role was to determine the correct or preferable decision on the material before the Tribunal, not on the material that was before the primary decision-maker, and that the Tribunal was required to review the primary decision, not the reasons given for it, citing Drake v Minister for Immigration and Ethnic Affairs [1979] AATA 179 ; (1979) 24 ALR 577 ( Drake ) at 589, 599. The Tribunal thought that Mr Gould's submission sought to read too much into the word "on" in the expression "on an application by ASIC" in s 1292(2). The Tribunal stated (at [34]) that to confine the review before it to the grounds contained in the original application (as amended) would be a significant departure from the usual pattern of merits review under the AAT Act as analysed in Drake and succeeding cases.


case_outcome: cited

case_text: Gould submits that in the absence of expert evidence, it was not permissible for the Tribunal to find that he had not carried out or performed his duties as liquidator of Popwing "adequately and properly". Mr Gould submits that this question is one of judgment, not a pure question of law, and that the answer must be informed by evidence of accepted proper practice: Mr Gould refers to Re Vouris; Epromotions Australia Pty Ltd and Relectronic-Remech Pty Ltd (in liq) [2003] NSWSC 702 ; (2003) 47 ACSR 155 at [101] and [103] Goodman v Australian Securities and Investments Commission (2004) 50 ACSR 1 at [26]; Dean-Willcocks at [24]-[26]; Albarran v Companies Auditors and Liquidators Disciplinary Board [2007] HCA 23 ; (2007) 231 CLR 350 at [18] , [20] and [24].


case_text: for ASIC submits that the role of the SOFAC was to afford procedural fairness to Mr Gould and that what procedural fairness requires does not involve a fixed body of rules to be applied at a formulaic manner. Counsel refers to the statement by Gleeson CJ in Re Minister for Immigration and Multicultural and Indigenous Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1 at [37] that: Fairness is not an abstract concept. It is essentially practical. Whether one talks in terms of procedural fairness or natural justice, the concern of the law is to avoid practical injustice. Counsel also referred to Adler v Australian Securities and Investments Commission [2003] NSWCA 131 ; (2003) 46 ACSR 504 at [139] where Giles JA quoted from Greek Herald Pty Ltd v Nikolopoulos (2001) 54 NSWLR 165 at [18] where Mason P had said that "pleadings serve the ends of justice [and] must not be permitted to assume an independent self-referential function".


case_outcome: distinguished

case_text: Gould addresses an argument relied on by ASIC before the Tribunal and accepted by it, namely, that because it was Mr Gould who chose to apply to the Tribunal for review of the Board's decision, ASIC should not be prevented from re-agitating the charges rejected by the Board. Mr Gould submits that the Tribunal should have followed the approach of the United States Supreme Court in Green v United States [1957] USSC 146 ; 355 US 184 (1957). In that case, the defendant faced alternative charges of first and second degree murder. The jury returned a verdict of guilty on the charge of second degree murder and did not return a verdict on the first charge. The defendant successfully appealed and the Court of Appeal ordered a retrial. At the retrial, the defendant was again charged with first degree murder. The trial judge ruled that the rule against double jeopardy did not apply. The defendant was convicted of first degree murder. He appealed. The opinion of the Supreme Court was given by Black J who said at 187-188: ... The State, with all its resources and power, should not be allowed to make repeated attempts to convict an individual for an alleged offense, thereby subjecting him to embarrassment, expense and ordeal and compelling him to live in a continuing state of anxiety and insecurity, as well as enhancing the possibility that, even though innocent, he may be found guilty. Later, at 193, Black J stated: Whatever may be said for the notion of continuing jeopardy with regard to an offense when a defendant has been convicted of that offense and has secured reversal of the conviction by appeal, here, Green was not convicted of first degree murder, and that offense was not involved in his appeal. If Green had only appealed his conviction of arson and that conviction had been set aside, surely no one would claim that he could have been tried a second time for the first degree murder by reasoning that his initial jeopardy on that charge continued until every offense alleged in the indictment had been finally adjudicated. Reduced to plain terms, the Government contends that, in order to secure the reversal of an erroneous conviction of one offense, a defendant must surrender his valid defence of former jeopardy not only on that offense, but also on a different offense for which he was not convicted and which was not involved in his appeal. Or, stated in the terms of this case, he must be willing to barter his constitutional protection against a second prosecution for an offense punishable by death as the price of a successful appeal from an erroneous conviction of another offense for which he has been sentenced to five to twenty years' imprisonment. As the Court of Appeal said in its first opinion in this case, a defendant faced with such a 'choice' takes a 'desperate chance' in securing the reversal of the erroneous conviction. The law should not, and in our judgment does not, place the defendant in such an incredible dilemma. Mr Gould had no finding against him before the Board on Contentions 2.1, 6.5, 6.6 and 6.7A, and should not, according to his submission, be put in jeopardy on those charges in his application for review to the Tribunal. ASIC submits that there was no oppressive conduct or unfair dealing by it in relation to Contentions 2.1, 6.5, 6.6 and 6.7A. ASIC relies on a point made by the Tribunal in rejecting Mr Gould's interlocutory application, namely, that situation before the Tribunal was materially different from that which had been before the Board. Before the Board, the application to amend was made at the end of a proceeding. Before the Tribunal, ASIC was giving notice through its SOFAC of allegations at the outset of a new proceeding. The United States case of Green v United States is distinguishable. The primary objective of the sanctions for which s 1292(2) provided was to protect the public where a person was shown not to be a fit and proper person to remain registered as a liquidator and as such to perform the duties of a liquidator or administrator. The criminal sanction for first degree murder is quite different in that the right of the accused to be treated fairly assumes the greatest importance. In the case of the disciplinary proceedings against Mr Gould, the protection of public was the dominant consideration. This factor also tells against other submissions made by Mr Gould, such as his submission asserting delay and oppression. Question 24 (set out at [260] above) should be answered "no".


case_text: offence provided for in s 1308(4) was not declared to be an offence of strict liability: cf contravention of s 450E of the Law referred to at [127] and [140] above. The failure to take reasonable steps to ensure that the statement was not false or misleading is an essential element of the offence. Contention 6.6 is deficient for failing to allege and particularise the failure to take reasonable steps. If Contention 6.6 and the particulars that ASIC gave of it had been an information for criminal purposes, it would have been quashed as insufficient in law and invalid: see, for example, John L Pty Ltd v Attorney-General (NSW) [1987] HCA 42 ; (1987) 163 CLR 508 at 519-520. The question is whether, notwithstanding its deficiency, Contention 6.6 is saved by reason of other considerations.


case_text: for ASIC submits that the role of the SOFAC was to afford procedural fairness to Mr Gould and that what procedural fairness requires does not involve a fixed body of rules to be applied at a formulaic manner. Counsel refers to the statement by Gleeson CJ in Re Minister for Immigration and Multicultural and Indigenous Affairs; Ex parte Lam [2003] HCA 6 ; (2003) 214 CLR 1 at [37] that: Fairness is not an abstract concept. It is essentially practical. Whether one talks in terms of procedural fairness or natural justice, the concern of the law is to avoid practical injustice. Counsel also referred to Adler v Australian Securities and Investments Commission [2003] NSWCA 131 ; (2003) 46 ACSR 504 at [139] where Giles JA quoted from Greek Herald Pty Ltd v Nikolopoulos (2001) 54 NSWLR 165 at [18] where Mason P had said that "pleadings serve the ends of justice [and] must not be permitted to assume an independent self-referential function". The five legal principles and the authorities that Mr Gould cites in support of them are as follows: (a) ASIC must act with reasonable promptness and diligence in prosecuting charges in respect of a matter or complaint that comes to its attention: Herron v McGregor (1986) 6 NSWLR 246 at 254; Gill Herron and Gardiner v Walton (1991) 25 NSWLR 190 at 208A per Kirby P; R v Chief Constable of the Merseyside Police ; ex parte Calveley [1986] QB 424 ( Calveley ); (b) A prosecutor will generally be permitted to have only one "bite of the cherry" in respect of any formal hearing of charges against a defendant in respect of a matter in issue: Walter Construction Group v Fair Trading Administrative Corporation [2005] NSWCA 65 ; (c) A decision by an administrative body or court to stay or to refuse to deal with charges on the ground that their prosecution would be unfair and oppressive to the defendant may prevent them from being re-agitated, even if the fresh proceeding could be conducted without unfairness to the defendant, by analogy to principles which inform the rule against double jeopardy or as a species of double jeopardy: Walton v Gardiner (1993) 177 CLR 378 at 396-398 per Mason CJ, Deane and Dawson JJ; Jago v District Court of New South Wales [1989] HCA 46 ; (1989) 168 CLR 23 at 58 per Deane J; Gill v Walton (1991) 25 NSWLR 190 at 200-202 per Gleeson CJ, at 206-207 per Kirby P; (d) Allegations which, owing to the delay in their being prosecuted, may prejudice the defendant and deny him or her his right to a fair hearing, may be stayed: Jago v District Court of New South Wales [1989] HCA 46 ; (1989) 168 CLR 23 ; (e) If, because of the above matters or otherwise, it would be unfair or oppressive to a defendant to face the charges in question, a tribunal such as the Tribunal, is required to stay or to decline to hear the charges: Re Moline and Comcare (2003) 77 ALD 224 , [2003] AATA 827 ; Hughes Aircraft Systems International v Air Services Australia (1997) 146 ALR 1 at 40-42 per Finn J; Melbourne Steamship Co Ltd v Moorehead (1912) 15 CLR 332 at 342 per Griffith CJ; Logue v Shoalhaven Shire Council [1979] 1 NSWLR 537 at 558-9 per Mahoney J; SCI Operations Pty Ltd v Commonwealth of Australia (1996) 139 ALR 595 ; Greiner v Independent Commissioner Against Corruption (1992) 28 NSWLR 125.


case_outcome: discussed

case_text: National Education Advancement Programs (NEAP) Pty Ltd v Ashton (1995) 33 IPR 281 , Young J had to consider the question whether s 219 of the Law required an examination paper marketed by the plaintiff for use by schools for trial examinations to bear the plaintiff's ACN number. The answer turned on the question whether examination papers fell within s 88A of the Act. His Honour said (at p 293): An examination paper is not within the items specifically excluded from the definition in s 88A and one would have thought that such papers are closer to the categories of business letters etc than what is exempt, namely packaging. However, it does seem to me that the exercise in statutory interpretation is to look to see what is ejusdem generis with business letter, statement of account, invoice, receipt etc. All these documents are documents used in trade or commerce. An examination paper or a book or other writings which are intellectual property would seem to me to be in a different class. Young J said that while it was difficult to work out from ss 88A and 219 exactly where to draw the line, the test seemed to be whether the document concerned was one that was possibly part of a process of a business transaction or business contract involving the company. He said that if the document was non-contractual, the ACN number did not have to appear, because the purpose of s 219 appeared to be to make it clear that when a person was dealing with a company, exactly which company in perhaps a group of similarly named companies or companies using similar trading names, was the one with which the person was dealing. In my opinion, the purpose of s 450E(2) is generally similar: to make it clear to persons who are having or are contemplating having business dealings with the company or extending credit to it, that they are or will be dealing with a company that is subject to a DOCA. All five letters concerned were addressed to creditors of the particular company, Sisterella or Trinbay, that was subject to a DOCA. McPherson's Law of Company Liquidation (4 th ed, 2000, by Andrew Keay) states as follows in relation to the lien of a liquidator (at p 305): Liquidators normally have an equitable lien over the funds and assets in her or his control, not only for the costs and expenses of obtaining the property or funds but also for general remuneration [ Nationwide News Pty Ltd v Samalot Enterprises Pty Ltd (No 2) (1986) 5 NSWLR 227 ; 10 ACLR 748 , Shirlaw v Taylor (1991) 9 ACLC 1235]. While this has been accepted as the general position, Young J stated in Re Biposo Pty Ltd (No 4) [Unreported, Supreme Court, NSW, 12 December 1995] that it is an over-simplification to say that there was a lien over all of the moneys which liquidators have in their possession. His Honour went on to say that that is the normal situation, but the lien only arose if a court of equity felt that it was conscionable that there be a lien. I paraphrased the Tribunal's reasons in relation to Mr Gould's lien submission at [187] [188] above. That submission was raised for the first time in six lines in Mr Gould's written submissions before the Tribunal (para 161). While the Tribunal did not deal with the submission at length, it made it clear that the reason why the lien submission was not accepted was that the late fees were not a proper expense of the liquidation. I agree that they were not and that any lien that Mr Gould had did not extend to cover the $120. Moreover, when Mr Gould paid the $120 out of Popwing's liquidation account on 5 February 1999, he was not appropriating to himself money in part payment of fees then due to him. That he was not doing so is shown by the fact that neither in his later invoice nor elsewhere did he give credit for the sum of $120 as a payment of his fees. Nor was he preserving the fund as security for whatever fees might ultimately prove to be payable to him. At that time he was simply using money that he held for company purposes to pay $120 that he was personally liable to pay. His doing so cannot be justified retrospectively by a reconstruction of events or by an argument based on some concept of economic equivalence.


case_text: that there were no authorities on the construction of s 1308(4), the Tribunal referred to authorities on s 52 of the Trade Practices Act 1974 (Cth) (TPA Act), to the effect that in deciding whether a statement is misleading or deceptive, the Court will have regard to the persons to whom the statement is directed. The Tribunal referred to Parkdale Custom Built Furniture Pty Limited v Puxu Pty Limited [1982] HCA 44 ; (1982) 149 CLR 191 at 199, and Tobacco Institute of Australia Limited v Australian Federation of Consumer Organisations Incorporated [1992] FCA 630 ; (1992) 38 FCR 1 at 49-50 per Hill J.


case_text: Shi v Migration Agents Registration Authority [2008] HCA 31 ; (2008) 235 CLR 286 the High Court held that the Tribunal was entitled to take into account facts and circumstances that had arisen since the primary decision. This approach was said to be consistent with s 43(1) of the AAT Act. It supports the view that the Tribunal's role and the Tribunal proceeding were independent of the Board's role and the Board proceeding. Once this fact is fully appreciated, any force that Mr Gould's present submission might be thought to have disappears. In my view there is no substance in Mr Gould's second submission either. Question 23 (set out at [260] above) should also be answered "yes". Parties' submissions relevant to Question 24 Finally, ASIC submits that Mr Gould's argument that it is unfair that he was denied a merits review after an adverse finding by the primary decision maker could also be said in relation to the facts in Shi . A person in Mr Shi's position could be found by the Tribunal to be unfit based on new facts that emerged after the original decision was made. According to the High Court, however, the fact that there might be no merits review on the new facts as found by the Tribunal was not an impediment to the Tribunal's acting on those new facts. Consideration of Question 24 In my opinion, ASIC's submissions should in substance be accepted. The proceeding before the Tribunal was a new and independent proceeding in which the Tribunal was required, for the protection of the public, to arrive at the correct or preferred decision on the evidence before it.


case_text: Tribunal saw the issue between the parties as being whether there was a statutory provision to the contrary of the view that effective exercise of the Tribunal's review power normally required it to be free to consider the application of any of the criteria on which the proper exercise of the statutory power might depend: the Tribunal cited Sleiman and Australian Securities and Investments Commission [2007] AATA 1383 ( Sleiman ) at [9]. Sleiman was also concerned with an application by ASIC to the CALDB in relation to a registered liquidator. In that case, as in the present one, s 1317B of the Law (s 1317B of the Act is in the same terms) permitted an application to be made to the Tribunal for review of a decision made under the Act by the Board. The Tribunal found nothing in s 1292 or s 1317B to alter the ordinary position as recognised in that line of cases, and referred with approval to Senior Member Taylor's statement in Sleiman at [10] that: ... it is likely to be appropriate, subject to being satisfied that Mr Sleiman has a proper opportunity to deal with them, and subject to any order that might be made under s 25(4A) of the AAT Act, for ASIC to seek to support the cancellation order against Mr Sleiman on the additional grounds contained in its amended Statement of Facts and Contentions. Consideration of Tribunals' decision of 2 November 2007 not to preclude ASIC from relying on Contentions 2.1, 6.5, 6.6 and 6.7A Question 23 Question 23 raises the question whether the Tribunal had jurisdiction to hear and determine Contentions 2.1, 6.5, 6.6 and 6.7A. Mr Gould submits that Sleiman and a case relied on in it, Re Wharton and Australian Securities and Investments Commission [2002] AATA 443 ; (2002) 69 ALD 419 , were either wrongly decided or should be distinguished.


case_title: Tobacco Institute of Australia Limited v Australian Federation of Consumer Organisations Incorporated [1992] FCA 630 ; (1992) 38 FCR 1


case_title: Vines v Australian Securities and Investments Commission [2007] NSWCA 75 ; (2007) 62 ACSR 1

case_text: seems, in view of the seriousness of the consequences, that the failure to take "reasonable steps" in the s 1308(4) offence, would have to be unreasonable or blameworthy, as distinct from merely at a level that would give rise to a breach of the common law duty of care: compare Vines v Australian Securities & Investments Commission [2007] NSWCA 75 ; (2007) 62 ACSR 1 at [142] - [152] per Spigelman CJ. In his statement of facts and contentions in response, Mr Gould stated (at para 21) in relation to Contention 6.6 that the material allegations of fact pleaded did not disclose or make out a contravention of s 1308(4) and that Contention 6.6 was therefore "deficient, embarrassing and liable to be struck out at the hearing". Mr Gould also denied that he had contravened s 1308(4). In his statement Mr Gould said (at para 177), after referring to the reference in s 1308(4) to the omission to take reasonable steps, that his staff, who were qualified beyond industry standards and practice, had filled out the Forms 524. He further said: The particulars do not state that I personally as opposed to my staff, failed to take reasonable steps, for what those steps were, that were available to me to ensure the forms were not false. Hence, I cannot respond to the charge. [Emphasis in original]


case_title: Vouris; Epromotions Australia Pty Ltd and Relectronic-Remech Pty Ltd (in liq) [2003] NSWSC 702 ; (2003) 47 ACSR 155


case_text: Gould submits that Sleiman and a case relied on in it, Re Wharton and Australian Securities and Investments Commission [2002] AATA 443 ; (2002) 69 ALD 419 , were either wrongly decided or should be distinguished.


case_text: once a generic is released into the market for PBS products, it would be likely to have the effect of reducing Wyeth's market share. As Gyles J observed in GenRx Pty Limited v Sanofi Aventis [2007] FCA 1485 ; (2007) 73 IPR 502 at [15] . A new entrant ... would have an effect which may be both unpredictable and irreversible. The question which arises in all these circumstances is whether damages would be an adequate remedy. Wyeth submitted that any doubts which may exist in its ability to recover its losses at a final hearing point toward an order being made in the interests of justice for identity discovery at the earliest possible date.


case_outcome: applied

case_text: seems to me to follow that the Court should approach an application along the same lines as that which applies to a claim for interlocutory injunctive relief. Whilst an applicant under O 15A is not required to establish a serious question to be tried, the applicant's prospects of success are not to be considered in isolation from the element of the interests of justice. The strength or otherwise of the prospects will bear upon the question of where the interests of justice lie: Hexal Australia Pty Limited v Roche Therapeutics Inc (2005) 66 IPR 325 at [18].


case_text: considerations which are to inform the exercise of the discretion were stated by a Full Court in Hooper v Kirella Pty Ltd [1999] FCA 1584 ; (1999) 96 FCR 1. See also Apache Northwest Pty Ltd v Newcrest Mining Ltd [2009] FCAFC 39 in relation to the principles applicable under O 15A r 6. Two of the considerations referred to in Hooper are critical to the determination of the present application. The first is that, although an applicant is not required to demonstrate the existence of a prima facie case against the prospective respondent, the power conferred by O 15A r 3 is not to be exercised in favour of a person who intends to commence "merely speculative proceedings". The prospects of success are a material factor in the exercise of the discretion: Hooper at [33]. The second consideration is that an applicant must show that the order is necessary in the interests of justice. Their Honours said that this means that an applicant must show that the making of the order is necessary to provide that person with an effective remedy in respect of the actionable wrong of which he or she complains: Hooper at [34]. The jurisdictional facts There was substantial argument between the parties as to whether two of the necessary jurisdictional facts were established. The first was whether Wyeth had made reasonable inquiries. The second was whether the "proceeding" to which O 15A r 3 refers is final or interlocutory, it being contended by the Department that Wyeth's purpose is to commence a proceeding for interlocutory relief, which is not contemplated by the Rule. These issues can be disposed of quite briefly. There was some force in Mr Howe's submission that Wyeth has not adduced any evidence of inquiries made overseas as to the identities of the sponsors. Wyeth acknowledged that TGA applications are often preceded by similar applications made in other jurisdictions. Nevertheless, I am prepared to proceed on the basis that inquiries in those jurisdictions would not be conclusive. The test stated in Hooper does not expressly stipulate any threshold which an applicant must satisfy for the exercise of the power. But in stating that a material factor in the exercise of the discretion is the prospect of success in the proceedings, the Full Court in Hooper specified, as one of the elements of the claim for identity discovery, that an applicant provide evidence in support of its claim for final relief. In my view the decision in Viskase does not establish a gloss on the principles stated in Hooper . Whilst good cause must be shown, each case must turn on its own facts and the prospects of success are to be weighed in the balance of the interests of justice. Wyeth's evidence as to prospects of success


case_text: observations of Jessup J in Interpharma Pty Ltd v Commissioner of Patents [2008] FCA 1498 at [71] [73] recognise the difficulties which may arise in restoring a patentee to the position it occupies as the only supplier of the product in the event that the patent holder succeeds at the final hearing but is denied interlocutory relief. Nevertheless, I have come to the view that it is not in the interests of justice to order identity discovery on this application. There are two reasons for this. First, I am not satisfied on the evidence before me that Wyeth has good prospects of success at a final hearing. The most that can be said is that it has a provisional working hypothesis which would need to be supplemented by further evidence, including expert evidence, to determine the strength of Wyeth's case.


case_text: counsel for the Department placed considerable emphasis upon the decision of French J in Viskase Corporation v Cryovac Inc [2000] FCA 1695. There, his Honour was dealing with an application for information discovery under O 15A r 6. He said at [24] that the rule should not be permitted to authorise information discovery except for good cause shown in terms of the conditions. He continued:- In respect of patents for inventions, the exercise of the discretion must have regard both to the intrusive nature of the order and the need to encourage research and development unhampered by the prospect of speculative review of working papers by competitors. To allow the remedy in this case based upon formulaic recitations of wide application would set the threshold for pre-action discovery so low that there would be few cases in which a person wishing to challenge a patent could not obtain discovery of the kind which is sought here. However, these remarks are to be read in their context. His Honour expressed the view at [23] that the evidence which was required to satisfy the first element of O 15A r 6, namely reasonable cause to believe that an applicant has the right to obtain relief against the prospective respondent, was an opinion expressed as a conclusion stated in terms of the rule. His Honour considered that the conclusionary statement was insufficient to meet the requirements of O 15A r 6(a). I do not think it follows that his Honour's observations establish that a high threshold must be satisfied before an order will be made under O 15A r 3. It is true that French J said at [24] that if an order were made in that case it would establish a very low threshold for the application of the rule. But, in my opinion, that was because of the slender basis of the evidence in support of the "reasonable cause to believe". In my view the decision in Viskase does not establish a gloss on the principles stated in Hooper . Whilst good cause must be shown, each case must turn on its own facts and the prospects of success are to be weighed in the balance of the interests of justice. Wyeth's evidence as to prospects of success


case_outcome: referred to

case_text: The same differences are created by an aural comparison. Here, stress and pronunciation would usually given to the first syllable of the word or mark: see for example Aldi Stores Limited Partnership v Frito-Lay Trading GmbH (2001) 54 IPR 344 at [32], [157] [164]. 142 Thus, an aural comparison of the marks by the person of ordinary intelligence and memory would bear out the impression that Health Plus is concerned with enhanced general health whereas Inner Health Plus invokes improved internal health. 143 I reject Health World's submission that the Health Plus mark should be characterised as two words, at least in a visual sense. Although the word " Plus " is italicised, the usual impression is plainly of one word.


case_text: The function of a trade mark is to give an indication to a purchaser as to the manufacture or quality of the goods and an indication of the trade source from which the goods come or through which they pass on their way to market: Aristoc Limited v Rysta Limited (1944) 62 RPC 65 at 74, 79. 186 Here, whatever the subjective intentions of the Shin family may have been, the public face of the Health Plus trade mark was that of Nature's Hive. It was the only name that appeared publicly as part of the "badge of origin" of the product.


case_text: In Australian Co-operative Foods v Norco Co-operative [1999] NSWSC 274 ; (1999) 46 NSWLR 267 at [84] [86], Bryson J took a wide view of the operation of s 88(2)(c). His Honour proceeded on the basis that the ground is available if the use of the mark is likely to deceive or cause confusion for any reason. 178 In Norco , Bryson J was of the view that there was no likelihood of deception because the packaging of the goods accurately identified the source of the goods and the registered owner of the trade mark: Norco at [84]. 179 In the present case, Health World points to the evidence which discloses that at the date of the commencement of the rectification proceedings, the Health Plus trade mark was used to identify the goods as those of Nature's Hive, and not those of Shin-Sun. I will deal with this below. 180 This would give rise to the likelihood of deception or cause confusion because of the failure to identify the registered owner as the source of the goods. 182 Pending consideration of s 88(2)(c) by a Full Court, or by the High Court, it seems to me that I should follow the approach adopted by Bryson J in Norco . On that basis the s 88(2)(c) ground is enlivened by the failure to distinguish the Health Plus products as goods of Shin-Sun. 183 In dealing, later in my judgment, with Health World's non-use application, I give six reasons why the Health Plus trade mark is used to identify the goods as those of Nature's Hive. 184 In summary, the effect of the evidence was that Shin-Sun's name has never appeared on the packaging and Nature's Hive procured the manufacture of the products.


case_text: These principles are well established. They were stated by Dixon and McTiernan JJ more than 50 years ago in Australian Woollen Mills Limited v FS Walton & Co Limited [1937] HCA 51 ; (1937) 58 CLR 641 at 658 and reiterated by the High Court in other authorities. 133 Perhaps the most succinct statement of the principles is to be found in the observation of Dixon and McTiernan JJ in Australian Woollen Mills at 659 that the question is: ... never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs. 134 The Health Plus mark was not being used as at 7 May 2001. Thus, the comparison which is to be made for the purposes of s 60 is between the unregistered mark Inner Health Plus and the Health Plus registered trade mark. 135 In my opinion the Health Plus trade mark was not deceptively similar to the Inner Health Plus mark for the reasons set out below.


case_text: Those authorities, as well as authorities of Full Courts in CA Henschke & Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] [90]. 196 There was nothing to suggest that Shin-Sun exercised quality control in the way in which the executors of the estate of Cyril Henschke exercised control over the Henschke partnership: Henschke at [67]. 197 Nor did Shin-Sun exercise "financial control" over Nature's Hive's trading activities within the meaning of s 8(4). This is because, in my view, the financial control to which the subsection is directed is a legally enforceable power of control which did not exist between Shin-Sun and Nature's Hive. 198 Ms Shin's evidence was that Nature's Hive did not have a bank account. I accept this evidence but it does not follow that Shin-Sun exercised financial control within the meaning of s 8(4). What that subsection requires is evidence of the exercise of financial control over trading activities, perhaps in the way in which a parent company may exercise control over a wholly owned subsidiary. Here, there was no such relationship and any control by Shin-Sun was revocable: Henschke at [69]. 199 Nature's Hive and Shin-Sun have different shareholders. They have common directors but that has only been the position since July 2006. Of course, in a practical sense, it may be unlikely that Ms Shin would remove her parents as directors of Nature's Hive. But that is not an answer to the separate corporate identity of Shin-Sun and the power of Ms Shin as the majority shareholder to revoke any exercise of control flowing from common directorships. 200 The "control" which is contemplated by s 8(5) would seem to be as wide as the "connection in the course of trade" to which Aickin J referred in Pioneer at 683. His Honour said that the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary: see also Henschke at [70]. 223 Section 101(3) confers a broad discretion on the Court: Henschke at [72]. The discretion is conferred so as to give the Court a sufficient degree of flexibility to give effect to public interest considerations: Ritz Hotel at 221-225. 224 In Henschke , the Full Court declined to interfere with the primary judge's exercise of discretion in a manner favourable to the registered proprietor under s 101(3). However, I do not consider that the approach taken in that case assists Shin-Sun because the primary judge found that there was no public interest adversely affected by the use of the mark: see at [72]. 225 In my view, Henschke was concerned with a very distinctive family business where the members of the family who were using the mark were the persons who gave the mark its value. That was why the primary judge could see no useful purpose to be served by removing the mark so as to compel a fresh application to be made by the "Henschke interests." 226 Accordingly, I would not exercise my discretion in favour of Shin-Sun in the present proceedings. 227 Section 92 in the form in which it stood when Health World filed its non-use application provided that a person aggrieved had standing to bring an application.


case_title: Campomar Sociedad, Limitada v Nike International Limited [2000] HCA 12 ; (1998) 85 FCR 331 (2000) 202 CLR 45

case_text: If I were of the view that the Health Plus trade mark was deceptively similar to the Inner Health Plus trade mark, I would be satisfied that Health World is an aggrieved person: Campomar Sociedad, Limitada v Nike International Limited (1998) 85 FCR 331 at 364; reversed by the High Court but not on the "aggrieved person" issue in [2000] HCA 12 ; (2000) 202 CLR 45. 126 However, for reasons set out below, in my opinion, Health Plus is not deceptively similar to INNER HEALTH PLUS. 127 Accordingly, subject to what I say below about the s 59 ground (which Health World relies upon under s 88(2)(a)) and the s 88(2)(c) ground, I do not consider that Health World is an aggrieved person. 181 It is possible that the observations of the High Court in Nike at [61], suggest a more restrictive approach to the construction of s 88(2)(c). In Nike (2000), their Honours were concerned with the provisions of s 28 of the Trade Marks Act 1955 (Cth), which was in different terms but it is part of the legislative history of s 88(2)(c) which is discussed in Shanahan at [14.230]ff.


case_text: Subject to a dispute about the terms of s 60 , all parties' counsel proceeded on the basis that the Act applies as it stood at the time of the hearing. However, the general rule of the common law, and the effect of s 8 of the Acts Interpretation Act , is that: when the law is altered during the pendency of an action the rights of the parties are decided according to the law as it existed when the action was begun, unless the new statute shows a clear intention to vary such rights: see Continental Liqueurs Pty Ltd v G F Heublein & Bro Inc [1960] HCA 37 ; (1960) 103 CLR 422 at 427 per Kitto J. 31 All three of the proceedings described were commenced prior to the commencement of the Trade Marks Amendment Act 2006 (Cth) on 23 October 2006. The rectification proceeding was commenced on 13 February 2006. Health World's non-use application was commenced on 25 July 2006. Shin-Sun's non-use application was commenced on 15 September 2006. Thus in the absence of a clear legislative intention to the contrary, the provisions of the Act apply as they stood prior to the 2006 amendments. The relevant provisions are set out below, in their pre-amendment form. 32 Section 7 of the Act deals with the use of a trade mark. It provides: 7 Use of trade mark (1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. (2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark. (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark. (4) In this Act: use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods) ... 118 The expression "an aggrieved person" is to be given a wide interpretation: see In the Matter of Powell's Trade Mark (1893) 10 RPC 195 at 201 (C.A. UK); (1894) 11 RPC 4 at 7-8 (HL); see also Continental Liqueurs at 427. 119 An aggrieved person is one who has a real interest in having a trade mark removed from the Register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the Register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113.


case_text: Section 10 of the Act defines the expression "deceptively similar". The opposed mark must so nearly resemble the other mark that it is likely to deceive or cause confusion. The authorities dealing with the question of whether one trade mark is deceptively similar to another were reviewed by a Full Court of this Court in Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 61 IPR 212 at [72]ff. 130 The Full Court in Crazy Ron's distilled five legal principles from the many authorities which have dealt with this subject. Their Honours were dealing with the question of deceptive similarity in the context of trade mark infringement but the same principles apply to the test of deceptive similarity in s 60 as it stood in May 2001. 131 It is unnecessary to set out the five principles stated in Crazy Ron's . It is sufficient to say that the marks are not to be judged by a side by side comparison; they are to be considered by their look and sound, with due allowance for imperfect recollection. The goods to which the marks are to be applied must be considered together with all the surrounding circumstances. 146 Those authorities, as well as authorities of Full Courts in CA Henschke & Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] [90]. 147 The effect of those authorities is that the enquiry is not as wide as would be undertaken in a passing off action or in a proceeding under s 52 of the Trade Practices Act . Rather, the search is to be concentrated on ascertaining the essential element of the mark and the impression taken away by one who looks at it and how it sounds when pronounced: Crazy Ron's at [86], [88]. 148 The essential element of the Inner Health Plus mark is not found in the words "Health Plus". Rather, as I have already said, the idea or essential feature of Inner Health Plus is that it is concerned with internal health. Health Plus embraces a different concept. 149 To the extent that any notoriety of Inner Health Plus is to be taken into account, consumers must be taken to be familiar with it as an improved and more convenient version of Inner Health powder: Crazy Ron's at [90]. 151 Furthermore, there is no tangible danger of deception or confusion: Crazy Ron's at [76]. The Inner Health Plus product and the goods encompassed by the Health Plus trade mark have their own separate attributes. They may be recommended by health professionals. Their purchase is likely to be a considered decision after close appraisal and consideration. Health professionals are usually careful to listen and ensure that their customers select the correct product.


case_text: I do not consider that the Health Plus mark captures one of the essential features of the Inner Health Plus mark: c.f. Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147; de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106.


case_outcome: considered

case_text: The power to order rectification under s 88 is expressed in discretionary terms. However, in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287, Branson J expressed the view that the terms of s 89 suggest that s 88(1) does not vest a true discretion in the Court. 204 In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see eg. Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 at [97] ; Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 at [75] .


case_text: As Fullagar J stated in Fisher v Hebburn Limited [1960] HCA 80 ; (1960) 105 CLR 188 at 194, a statute is, prima facie , to be construed as not attaching new legal consequences to facts or events which occurred before the commencement of the statute. 115 In my view, Shin-Sun's approach to statutory construction is correct, although more accurately it ought to be based on s 88(2)(a) as it stood when the rectification proceeding was commenced on 13 February 2006. On that date, s 88(2)(a) enlivened the power to order rectification of the register on "any of the grounds on which registration of the trade mark could have been opposed under Division 2 of Part 5". The pre-amendment form of s 88(2)(a) still requires s 60 to be applied as it stood when the trade mark was filed on 7 May 2001. The significance of applying the pre-amendment form rather than current form of s 88(2)(a) is that Health World is precluded from relying on the 'contrary to law' ground under s 42 (that provision not being found in Division 2 of Part 5). 116 For all these reasons, it follows, in my opinion, that the ground of opposition based upon deceptive similarity is to be determined under s 60 in its pre-amended form.


case_text: In December 2001 Health World filed notice of opposition to the Health Plus trade mark relying inter alia on the ground contained in s 60. The Registrar of Trade Marks dismissed the opposition but Health World appealed to the Federal Court under s 56 of the Act. The appeal was heard by Cooper J. His Honour determined the appeal adversely to Health World: see Health World Limited v Shin-Sun Australia Pty Ltd (2005) 64 IPR 495.


case_text: The present proceedings are, of course, not an appeal from Cooper J. Nor is Health World estopped from asserting that the Health Plus mark was deceptively similar to the Inner Health Plus trade mark at 7 May 2001, even though Cooper J found on the balance of probabilities that the Health Plus mark was not deceptively similar to the Inner Health Plus mark as at that date: see Health World v Shin-Sun (per Cooper J) at [6], [41]; Health World Limited v Shin-Sun Australia Pty Ltd [2006] FCA 647. 11 The proceedings before me consist of three separate applications. In the first, Health World seeks expungement of the Health Plus mark under ss 88(2)(a) and (c) of the Act. This proceeding is sometimes referred to as the rectification proceeding. 12 Section 88(2)(a) provides that an application for cancellation or removal of a mark may be made on any of the grounds on which the registration of the trade mark could have been opposed under the Act. The grounds on which Health World relies in the rectification proceeding are those contained in ss 42 , 59 and 60 . 96 Indeed, the entire thrust of Health World's launch of the Inner Health Plus capsules was to take advantage of the reputation of the Inner Health Powder and the goodwill attaching to it. This is graphically revealed in Mr Joiner's evidence in the proceedings before Cooper J, as put to Mr Joiner by counsel for Shin Sun in cross-examination in the present proceedings. The relevant passage is as follows: I did not want to discontinue the Inner Health line as it had been and was still a successful product. I believed that the fact that Inner Health was an established product in its field gave Health World an excellent opportunity to introduce a new type of probiotic product similar to the existing Inner Health product but in an improved version which could be launched onto the market. My plan was to take advantage of the goodwill which had already been built up in the Inner Health brand. 97 I understood Mr Joiner to accept the accuracy of this evidence when it was put to him in cross-examination before me. In any event, its accuracy is fully supported by the promotional and advertising material referred to above. 98 It is true that when Inner Health Plus capsules were introduced they contained bifidobacteria which were not an ingredient of Inner Health powder at that time. But that does not distinguish the reputation of Inner Health Plus from its predecessor. 110 Second, this approach to construction is consistent with the scheme of the Act as discussed by a Full Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [18]. The Full Court there observed that opposition proceedings are quasi-summary and an unsuccessful opponent will have the opportunity to bring an expungement application if the opposition proceeding fails: see also the authorities to which I referred in Health World Limited v Shin-Sun Australia Pty Limited [2006] FCA 647 at [27] , [36], [40], and [41].


case_title: In the Matter of Powell's Trade Mark (1893) 10 RPC 195 (C.A. UK); (1894) 11 RPC 4 (HL)

case_text: The expression "an aggrieved person" is to be given a wide interpretation: see In the Matter of Powell's Trade Mark (1893) 10 RPC 195 at 201 (C.A. UK); (1894) 11 RPC 4 at 7-8 (HL); see also Continental Liqueurs at 427.


case_text: An aggrieved person is one who has a real interest in having a trade mark removed from the Register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the Register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113.


case_text: Second, this approach to construction is consistent with the scheme of the Act as discussed by a Full Court in Lomas v Winton Shire Council [2003] AIPC 91-839 at [18]. The Full Court there observed that opposition proceedings are quasi-summary and an unsuccessful opponent will have the opportunity to bring an expungement application if the opposition proceeding fails: see also the authorities to which I referred in Health World Limited v Shin-Sun Australia Pty Limited [2006] FCA 647 at [27] , [36], [40], and [41].


case_text: Moreover, the general rule of the common law is that, subject to any contrary intention appearing with reasonable certainty, a statute changing the law is not to be understood as applying to facts that have already occurred so as to confer or otherwise affect rights or liabilities which the law has defined by reference to past events: Maxwell v Murphy [1957] HCA 7 ; (1957) 96 CLR 261 at 267 per Dixon CJ.


case_text: In my opinion, there is force in Branson J's view because s 88(1) is subject to s 89, and s 89 confers a discretion, to be exercised in limited circumstances, not to grant an application for rectification. Nevertheless, this approach has not been taken in other courts: see eg. Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166 at [97] ; Mayne Industries Pty Limited v Advanced Engineering Group Pty Limited [2008] FCA 27 at [75] .


case_text: As to the exercise of discretion under s 88(1), the guiding principles would seem to be those that were referred to in the authorities under the 1955 Act. The principal factors would therefore seem to be the public interest and the respective contributions made by the parties to the proceedings in creating the likelihood that the use of the registered mark would deceive or cause confusion: New South Wales Dairy Corporation v Murray Goulburn Co-operative Limited [1990] HCA 60 ; (1990) 171 CLR 363 at 391 per Brennan J. 208 In my view, these factors point against the exercise of the discretion so that even if I may withhold relief under s 88(1), I would not exercise my discretion to do so. In short, it seems to me that the public interest is better served by expunging a mark that has become deceptive in the circumstances of this case. 209 Even though I am satisfied that Health World has made out the grounds for rectification under s 88(2)(a) (the s 59 ground) and s 88(2)(c), in my view it does not have standing to seek the relief because it is not an aggrieved person. 210 As I said above, I do not consider that Health World has any genuine desire to use the Health Plus mark. Accordingly, I am not satisfied that it has a real interest in having the Health Plus mark removed. Nor would it be appreciably disadvantaged in a legal or practical sense if the mark remains on the register. 211 By reason of my findings on the questions of the reputation of Inner Health Plus and deceptive similarity, I reject the claims of contravention of the Trade Practices Act and passing off against both Shin-Sun and Nature's Hive.


case_text: However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent's evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96 ; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].


case_text: In Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 686, Aickin J recognised that a mark may be used to indicate a connection with an unidentified person. His Honour said that in those circumstances it must indicate a connection with both the proprietor and the user. 188 In my opinion, that requirement is not satisfied as a matter of fact because the evidence does not demonstrate any connection between the actual use of the mark and the registered proprietor, Shin-Sun. 189 Nevertheless, Shin-Sun contends that s 88(2)(c) is not enlivened because Nature's Hive's use of the mark was under the control of Shin-Sun so that Nature's Hive was an "authorised user" within the meaning of s 8(1) of the Act. 191 However, s 8(3) and s 8(4) do not limit the meaning of the expression "under the control of" the owner of the trade mark in s 8(1): see s 8(5). It is therefore necessary to deal with the question of whether Shin-Sun exercised quality or financial control over Nature's Hive's use of the mark, or whether it controlled the use in the broad sense referred to by Aickin J in Pioneer at 683. 192 There is no evidence before me that Shin-Sun has exercised quality control over the Health Plus products manufactured for Nature's Hive and supplied under Nature's Hive's packaging. 193 Indeed, in my view, the evidence establishes that Nature's Hive has the relevant obligations of quality control under the Therapeutic Goods Act . Nature's Hive is the sponsor and the certificate of listing for the goods imposes the obligation of quality control on Nature's Hive. 200 The "control" which is contemplated by s 8(5) would seem to be as wide as the "connection in the course of trade" to which Aickin J referred in Pioneer at 683. His Honour said that the connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary: see also Henschke at [70]. 201 However, Aickin J observed in Pioneer at 683 that it is essential that the user maintains the connection of the registered proprietor with the goods. That connection is not established on the facts of the present case. 202 It follows in my view that Nature's Hive was not an authorised user of the mark. It also follows that the use of the Health Plus trade mark was likely to deceive or cause confusion within the meaning of s 88(2)(c) of the Act.


case_text: Those authorities, as well as authorities of Full Courts in CA Henschke & Co v Rosemount Estates Pty Limited (2000) 52 IPR 42 and Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020 ; (1999) 93 FCR 365, were discussed by the Full Court in Crazy Ron's at [80] [90]. 152 Under s 60 in its pre-amended form, a finding of deceptive similarity was a pre-condition for the Court to go on to consider the test set out in s 60(b): Registrar of Trade Marks v Woolworths at [82]. It is therefore unnecessary for me to consider that test. 153 Under the amended form of the section it would be necessary to consider that question because a finding of deceptive similarity is no longer a pre-requisite. However, even if the amended form of the section applies, Health World would not succeed in its application for rectification on this ground. 154 Section 60(a) as amended would be enlivened because Inner Health Plus had acquired the necessary reputation. But the causal link required under s 60(b) would not be made out. This is because the reputation of Inner Health Plus was that of a more potent and convenient form of Inner Health powder.


case_text: Nor do I accept that the letter of 4 April 2007 from Shin-Sun's solicitors constitutes an admission that the marks are deceptively similar. It is well settled that the issue of deceptive similarity is for the Court itself to decide: Rhone-Poulenc Agrochimie SA v UIM Chemical Services Pty Limited (1986) 12 FCR 477 at 487-488, referred to by Cooper J in Health World v Shin-Sun (2005) at [33].


case_text: An aggrieved person is one who has a real interest in having a trade mark removed from the Register, or one who would be appreciably disadvantaged in a legal or practical sense if the trade mark remained on the Register: Continental Liqueurs at 427; Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193-194; Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 at 112-113. 160 In my view, the intention, or lack thereof, to which s 59 is directed, is a "real and definite intention" of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time: Ritz Hotel at 202-203. 161 The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition, or an application for rectification, to succeed on this ground: see Shanahan at [2.120], [11.110]; Dufty A & Lahore J, Lahore, Patents Trade Marks & Related Rights (LexisNexis Butterworths, 2006) at [55,580]. 169 Indeed, the effect of Mr Shin's evidence was that "we wanted to widen our business" to use the mark on any products which Shin-Sun might make. This does not satisfy the test stated in the authorities to which McLelland J referred in the Ritz Hotel case at 202-203. 170 Ms Shin, in her affidavit of 20 December 2006, stated that Shin-Sun conceived the Health Plus mark and that she had taken certain steps on behalf of that company which were consistent with an intention, as at 7 May 2001, for Shin-Sun to use the mark. 171 However, the overall effect of her evidence was that she failed to distinguish between the two separate corporate entities, Shin-Sun and Nature's Hive. I cannot be satisfied, and I find that she did not pay attention to which corporation she was representing when she took the steps that she relies upon to support the assertion that Shin-Sun intended to use the mark. 223 Section 101(3) confers a broad discretion on the Court: Henschke at [72]. The discretion is conferred so as to give the Court a sufficient degree of flexibility to give effect to public interest considerations: Ritz Hotel at 221-225.


case_title: Saville Perfumery Limited v June Perfect Limited (1941) 58 RPC 147


case_title: Toddler Kindy Gymbaroo Pty Ltd v Gymbaree Pty Ltd [2000] FCA 618 ; (2000) 100 FCR 166


case_title: Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137


case_text: The relevant date for determining the reputation of the Inner Health Plus mark in the claims under ss 52 and 53 of the Trade Practices Act , and for passing off, is the date on which Shin-Sun (or Nature's Hive) commenced the use of the Health Plus mark: see Thai World Imports v Shuey Sing (1989) 17 IPR 289 at 302. 77 Shin-Sun contends that the relevant date for the purpose is September 2001 when it claims to have sold goods under the Health Plus mark in an export transaction to Taiwan. 78 Health World contends that the relevant date for the purposes of the claims under the Trade Practices Act and for passing-off is August 2004 when the Health Plus range was launched in the Australian market.


case_text: First, it is contrary to established authority on the construction and operation of s 88(2)(a). In Unilever Australia Limited v Karounos [2001] FCA 1132 ; (2001) 52 IPR 361 at [13] , Hill J said that under this sub-section: The court is required to consider the question as at the time of registration and determine whether as at that time it was proper for the registrar to admit the mark to the register. Facts subsequent to the date of registration will be irrelevant. 109 Other authorities to the same effect are referred to in Davison M, Johnston K, Kennedy P , Shanahan's Australian Law of Trade Marks and Passing Off , (3 rd ed , Thomson Lawbook Co, 2003) at [14.175] n 127.


case_text: On 3 February 2006, I delivered reasons for judgment concerning the applicant's motion for default judgment and made the orders that Mr Armitage now seeks to have set aside: see Wu v Avin Operations Pty Ltd [2006] FCA 36 (" Wu "). 6 In Wu , I considered (at [6]-[25]) the extensive history of delay and non-compliance with the Court's orders by the first and second respondents. I found (at [52]-[53]) that the first and second respondents had failed to defend the proceeding with due diligence and were in default for the purposes of O 35A r 2(2)(h) of the Rules. My reasons for judgment record that: • The applicant (hereafter referred to as Ms Wu) was required to bring an application to the Court for an order for substituted service as regards Mr Armitage ([7]-[8]). • Ms Wu applied twice by motion for orders that the respondents, including Mr Armitage, provide their lists of documents and the respondents, including Mr Armitage, breached orders of 8 October 2003 and 16 December 2003 for the provision of these lists ([10]-[13]). From September 2003 until 14 April 2004, Mr Armitage and the other respondents retained a solicitor (Mr Joseph Guss) ([8] and [15]). • Mr Armitage failed to make documents available for inspection, despite orders by the Court on 8 October 2003, 16 December 2003 and 9 June 2004 ([10]-[17]). Following an order for further discovery on 4 March 2004, Mr Armitage filed an affidavit stating that the first respondent's accounts and statutory records were "mistakenly removed by a waste paper removalist with various other papers and records" and that he was unable to locate his file in respect of Ms Wu's application for an Australian visa and her alleged investment in the first respondent ([14]). • After 14 April 2004, Ms Wu's solicitor's attempted to contact the respondents, including Mr Armitage directly. By a letter dated 21 April 2004, Mr Armitage informed Ms Wu's solicitors that he was "unable to facilitate" the inspection of the discovered documents because they were "located at the office of Joseph Guss" ([15]). • On the first occasion when Ms Wu's motion for default judgment came on for hearing, counsel appeared for Mr Armitage. Counsel advised that she was instructed by solicitors who expected to act in the matter. This expectation was not fulfilled ([17]). • On the second occasion when Ms Wu's motion for default judgment came on for hearing, different counsel appeared for Mr Armitage. Counsel advised that he was instructed by solicitors, who subsequently advised the Court that they were no longer retained to act for Mr Armitage (or any other respondent) in the proceeding ([19]). • Although it was made clear in court on 13 October 2004 that it was open to the respondents to serve a subpoena on their previous solicitor (Mr Guss) to produce the discovered documents to the Court the respondents did not take steps to do this until 3 December 2004 ([19] and [21]). • On 3 December 2004, George Liberogiannis and Associates went on record as solicitor for the Armitages, including Barry Armitage. Mr Liberogiannis did not, however, appear on the return of the subpoena. The subpoena was not discharged against Mr Guss until 16 February 2005 ([21]-[22]). • At the adjourned hearing of the motion for default judgment on 27 April 2005, Mr Liberogiannis sought leave to withdraw as the solicitor on the record. His evidence was that Barry Armitage and his son had failed to keep appointments with counsel and to provide him with instructions for the conduct of the matter, notwithstanding his numerous calls to their cell phones and place of residence. His firm filed a notice of ceasing to act for Barry Armitage and his son on 28 April 2005 ([24]). 7 Notwithstanding this, for the reasons stated in Wu at [54] and following, I declined to make orders in terms of the motion for default judgment. At [54]-[55], I said: "I would not order that judgment be entered without more because, following the return of the subpoena directed to Mr Guss, there remains no continuing and unexplained default on the respondents' part. If Barry Armitage's evidence is accepted, there is nothing more the respondents can do to facilitate inspection of documents. Although Mr Guss did not produce all of the documents the subject of the subpoena, Barry Armitage has affirmed that the remaining documents remain in Mr Guss' custody. Ultimately, the credibility (or lack thereof) of Barry Armitage's claims regarding these and like matters will be an issue for trial: see Australian Finance Group Ltd v Accent Financial Group Pty Ltd [2005] FCA 66 at [33] per Nicholson J. Whether he is believed or not is likely to have other consequences for this litigation. I note too that there may be circumstances that partly explain the delays. These circumstances include the ill health of Barry Armitage and of a family member and the disturbance caused by changes in legal representation. Moreover, although the respondents have needed repeated prompting by Ms Wu's solicitor, they have filed their defence, various affidavits responding to Ms Wu's claims and lists of discoverable documents. They have mostly participated in court hearings and they were represented at the mediation by their solicitor. Barry Armitage ultimately took steps to have a subpoena issued to Mr Guss, in order that Ms Wu have access to the first and second respondents' discovered documents." 10 Mr Armitage's earlier affidavits, the affidavits of the third and fourth respondents and Ms Saldaneri are mentioned in Wu at [27] and [31]. Mr Armitage's lengthy affidavit of 16 May 2006 deposes to matters of fact. It also contains what are in truth submissions on his motion. For present purposes, it is sufficient to note that Mr Armitage claimed (amongst other things): • Mr Armitage was unable to collect his documents relating to this matter from previously retained counsel (Mr Dennis Baker) until 4 May 2006. He had not previously seen some of these documents. • Prior to the hearing on 27 April 2005, Mr Armitage had no knowledge of the affidavit of Anna Maria Krycer of 12 April 2005; that Mr Lieberogiannis intended to seek leave to withdraw from the proceeding; and that he would be unrepresented at that hearing. He claimed that he was denied an opportunity to respond to Ms Krycer's affidavit and Mr Lieberogiannis' evidence. • After receiving a copy of the 27 April 2005 order (granting leave to Mr Lieberogiannis to cease to act) Mr Armitage asked Registry "what was happening with the proceedings" and was told that "no other date had been appointed, and that it appeared that there was no further action or procedure contemplated". He returned to the Registry on two further occasions. He assumed the action was not proceeding. • When the respondents retained Mr Guss, they gave Mr Guss all relevant documents and did not retain any copies. In early April 2004, there was a dispute between Mr Guss and Mr Armitage (and other respondents), as a consequence of which Mr Guss ceased to act for them. Mr Guss claimed a lien over the respondents' documents. Mr Armitage photocopied the documents on the Court file. • After Mr Guss ceased to act, the respondents decided to draft instructions, affidavits and other documents needed in the proceeding and to engage counsel "to finalise documents and make any necessary Court appearances". Ultimately, a barrister's clerk "agreed to arrange for solicitors (not then known to the Respondents) to provide the 'Back Sheets' required to brief counsel". Mr Armitage added: "In practice, the arrangement ... did not provide a proper level of legal services and ... Mr Baker agreed to provide a 'budget-type' representation for the Respondents." • Mr Liberogiannis agreed to act as solicitor on the record, "with the Respondents providing all secretarial-type support, full written instructions, and the like". Mr Baker agreed to supervise the work and retain the documents relevant to the proceeding. Mr Baker therefore held all relevant documents and the respondents retained no copies. • Mr Armitage and his son (the third respondent) attended Mr Baker's chambers frequently, "often on two occasions a week". Mr Armitage deposed: "In the period leading up to 27 April 2005 I was aware that the matter was to come back before the Court fairly soon, but I was not aware of the nature of the anticipated proceedings." • Mr Armitage and his son were unable to keep an arrangement to meet Mr Baker on 22 April 2005 and left a message that they would attend on 26 April 2005. They did not attend Mr Baker's chambers on 26 April 2005 because their car "broke down in the countryside" and they did not contact Mr Baker because "we were in an area of poor mobile telephone reception". • Mr Armitage did not find out about the 27 April hearing until after the scheduled time of the hearing. He added that "[w]e immediately tried to contact Mr Baker and he told us we should speak to Mr Liberogiannis". • Mr Armitage and his son made unsuccessful attempts to contact Mr Liberogiannis, whom he ultimately met "by chance" early this year. • Hereafter, the respondents intended to act on their own behalf and "to retain full control and ensure that all matters requiring attention are dealt with promptly". • Mr Armitage had severe health problems and associated difficulties, including inability to give "sustained personal attention to ... this litigation". • Mr Armitage resigned as director of the first respondent because it could be insolvent. • Mr Armitage did not intentionally avoid service of the documents initiating this proceeding. • Mr Armitage did not attend court because of his health, the fact he had legal representation, and because Ms Wu, through her solicitors, had threatened him. • Mr Armitage did not become aware of Ms Wu's desire to inspect the discovered documents until he received a letter dated 20 April 2004 from her solicitors. He responded the next day. • Mr Armitage did not become aware until late November or early December 2004 that the Court had indicated that it would give leave to issue a subpoena to Mr Guss to obtain the documents for Ms Wu's inspection. He claimed that Mr Guss still held relevant documents. • Mr Armitage did not know that Mr Liberogiannis had failed to attend on the return of the subpoena. He did not knowingly breach any order of the Court. He "should not be held responsible for ... delays ... during the time" when Mr Guss and Mr Liberogiannis acted for him. 11 In addition, Mr Armitage challenged the reliability of the evidence of Ms Xia but it is unnecessary to provide the details of that challenge here. He also expanded on his claim that the initiating application and statement of claim in the proceeding were "based on a serious fraud and constitutes an abuse of the processes of this ... Court". He asserted that Ms Wu had made fraudulent claims in relation to her migration objective and investment claims. He responded to Ms Wu's claims against him at some length and alleged that her former and present solicitors had acted improperly in various ways. It is unnecessary to set out the details of these various allegations here. 12 In his affidavit of 16 May 2006, Mr Armitage further contended that the costs order of 3 February 2006 was unjust. This was because the primary matter in dispute had been the production of documents, over which he had no control. Also, so he said, Ms Wu's claims were fraudulent and, if he were required to meet the costs order before the determination of the proceeding, he would be prevented from defending himself. Mr Armitage specifically noted that paragraphs 36 and 38 of the statement of claim alleged that he acted dishonesty.


case_text: Notwithstanding this, for the reasons stated in Wu at [54] and following, I declined to make orders in terms of the motion for default judgment. At [54]-[55], I said: "I would not order that judgment be entered without more because, following the return of the subpoena directed to Mr Guss, there remains no continuing and unexplained default on the respondents' part. If Barry Armitage's evidence is accepted, there is nothing more the respondents can do to facilitate inspection of documents. Although Mr Guss did not produce all of the documents the subject of the subpoena, Barry Armitage has affirmed that the remaining documents remain in Mr Guss' custody. Ultimately, the credibility (or lack thereof) of Barry Armitage's claims regarding these and like matters will be an issue for trial: see Australian Finance Group Ltd v Accent Financial Group Pty Ltd [2005] FCA 66 at [33] per Nicholson J. Whether he is believed or not is likely to have other consequences for this litigation. I note too that there may be circumstances that partly explain the delays. These circumstances include the ill health of Barry Armitage and of a family member and the disturbance caused by changes in legal representation. Moreover, although the respondents have needed repeated prompting by Ms Wu's solicitor, they have filed their defence, various affidavits responding to Ms Wu's claims and lists of discoverable documents. They have mostly participated in court hearings and they were represented at the mediation by their solicitor. Barry Armitage ultimately took steps to have a subpoena issued to Mr Guss, in order that Ms Wu have access to the first and second respondents' discovered documents."


case_text: Counsel for Ms Wu opposed Mr Armitage's motion, noting that Mr Armitage was represented by counsel on the hearing of Ms Wu's motion on two occasions when the motion was part heard. It was only on the third and final occasion, when the hearing of the motion was completed, that Mr Armitage's solicitor obtained leave to withdraw. Counsel submitted that the relevant principles were contained in Australian Competition and Consumer Commission v Black on White Pty Ltd [2004] FCA 363 (" Black on White ") and Microsoft Corporation v Crosslink Marketing Group [2005] FCA 1817 at [21] . He argued that there were no exceptional circumstances in this case that would justify setting aside the orders in question. In this regard, he pointed out that Mr Armitage was heard, through his counsel, on the motion on two occasions and the affidavit material on which he relied was before the Court. The fact that his solicitor "went off the record" on 27 April 2005 "did not make any difference to the Orders". Further, counsel submitted that, having regard to the contents of Mr Armitage's affidavit of 16 May 2006, it is not reasonably probable that he would have obtained orders other than the orders made on 3 February 2006 had that affidavit been before the Court. Finally, Mr Armitage's affidavit did not, so counsel submitted, establish fraudulent conduct and satisfy the requisite tests for setting aside on the ground of fraud. 25 Some care must be taken in dealing with the authorities that concern the setting aside of judgment or orders. The force of judicial observations in this area depends on the circumstances in which application to set aside is made, including whether the judgment or order has been entered or is final or interlocutory. For present purposes, it suffices to refer to the observations of the Full Court in Wati v Minister for Immigration and Multicultural Affairs (1997) 78 FCR 543 at 552 that the jurisdiction to set aside orders made after they have been entered is "exceptional": see also Black on White at [14]-[16].


case_text: Counsel for Ms Wu opposed Mr Armitage's motion, noting that Mr Armitage was represented by counsel on the hearing of Ms Wu's motion on two occasions when the motion was part heard. It was only on the third and final occasion, when the hearing of the motion was completed, that Mr Armitage's solicitor obtained leave to withdraw. Counsel submitted that the relevant principles were contained in Australian Competition and Consumer Commission v Black on White Pty Ltd [2004] FCA 363 (" Black on White ") and Microsoft Corporation v Crosslink Marketing Group [2005] FCA 1817 at [21] . He argued that there were no exceptional circumstances in this case that would justify setting aside the orders in question. In this regard, he pointed out that Mr Armitage was heard, through his counsel, on the motion on two occasions and the affidavit material on which he relied was before the Court. The fact that his solicitor "went off the record" on 27 April 2005 "did not make any difference to the Orders". Further, counsel submitted that, having regard to the contents of Mr Armitage's affidavit of 16 May 2006, it is not reasonably probable that he would have obtained orders other than the orders made on 3 February 2006 had that affidavit been before the Court. Finally, Mr Armitage's affidavit did not, so counsel submitted, establish fraudulent conduct and satisfy the requisite tests for setting aside on the ground of fraud.


case_text: First, I accept that the orders made on 3 February 2006 were interlocutory in nature. "[A]n order made in the course of an action or suit which does not conclude the rights of the parties inter se, although it may, of course conclude the fate of the particular application in which it is made, is interlocutory only": Hall v Nominal Defendant [1966] HCA 36 ; (1966) 117 CLR 423 at 440 per Taylor J. It is open to Mr Armitage to call in aid O 35 r 7(2)(c). 23 Secondly, I accept that Mr Armitage was not in court when the relevant orders were made on 3 February 2006 and that he was absent from a part of the hearing of Ms Wu's motion. That is, Mr Armitage was represented by his counsel at the hearing of the motion on 23 August and 13 October 2004, but was effectively unrepresented at the hearing on 27 April 2005, when his solicitor successfully obtained leave to withdraw. Accordingly, it is open to Mr Armitage to call in aid O 35 r 7(2)(a).


case_text: Thirdly, although Mr Armitage sought also to rely on O 35 r 7(2)(b), he has not adduced sufficient evidence to make out a case that the order was obtained by fraud. Plainly, any allegation of fraud is extremely serious. Before an order can be set aside on the ground of fraud, there must be sufficient evidence of the facts that establish the alleged fraudulent conduct and the part played by the party having the benefit the order. The fraudulent conduct must be "directly material" to the order and the evidence of the fraud must be evidence that was not available and could not have been discovered with reasonable and proper diligence before the order under challenge was made: see Monroe Schneider Associates (Inc) v No 1 Raberem Pty Ltd (No 2) (1992) 37 FCR 234 at 242. Mr Armitage's affidavit of 16 May 2006 did not satisfy these requirements. Accordingly, it is not open to him to rely on O 35 r 7(2)(b).


case_text: Some care must be taken in dealing with the authorities that concern the setting aside of judgment or orders. The force of judicial observations in this area depends on the circumstances in which application to set aside is made, including whether the judgment or order has been entered or is final or interlocutory. For present purposes, it suffices to refer to the observations of the Full Court in Wati v Minister for Immigration and Multicultural Affairs (1997) 78 FCR 543 at 552 that the jurisdiction to set aside orders made after they have been entered is "exceptional": see also Black on White at [14]-[16].


case_title: KM & A Chadwick Pty Ltd v Yeung (" KM & A Chadwick ") [1995] FCA 354

case_text: Mr Armitage stated on oath that the respondents made the arrangements that led to the retainer of legal representatives, who knew little or nothing of their case and took little or no responsibility for its ongoing conduct. This impeded the proper conduct of the litigation, as Mr Armitage apparently concedes. Parties to litigation such as Mr Armitage are obliged to take steps to keep themselves informed of the conduct of the litigation by their appointed legal representatives. They cannot escape their responsibility as parties with respect to the conduct of the litigation by hiding behind a poorly instructed lawyer retained briefly or at the last minute. Nor can they excuse themselves by relying on a series of "unfortunate events", as Mr Armitage sought to do. If it were otherwise, case management would prove virtually impossible: compare KM & A Chadwick Pty Ltd v Yeung [1995] FCA 354 (" KM & A Chadwick ") at [15] per Tamberlin J. 35 Ms Wu has, moreover, proceeded to the taxation contemplated by the orders in question, as indeed she was entitled to do. In so doing she has incurred further costs. In this regard, I note, however, that Mr Armitage has been most assiduous in contesting the taxation. His notice of appeal, which was filed on 24 February 2006, preceded the taxation hearings. 36 I am satisfied, however, that, taken as a whole, the circumstances are such as to justify me setting aside pars [2] and [3] the orders made on 3 February 2006: compare KM & A Chadwick . 37 I would set aside par [3] of my orders principally because it was made in Mr Armitage's absence from the final stages of the hearing of Ms Wu's motion and costs application and will apparently operate to prevent Mr Armitage, who swears that he is impecunious, from advancing his defence. Having regard to the serious nature of some of the claims made against him and to the fact that he has apparently an arguable defence, it would not be in the interests of justice to make an order with such a result. That Ms Wu will suffer some inconvenience or hardship as a result is unavoidable. It is impossible to reconcile Ms Wu's interest in having the benefit of the orders previously with Mr Armitage's interest in having an opportunity to advance his defence. 38 For essentially the same reasons, I would also set aside par [2] of the 3 February orders. For the reasons set out below, I would order instead that, after judgment in this proceeding, Mr Armitage pay, on an indemnity basis, costs in the amount of $26,666.02 in respect of Ms Wu's motion. Further, I would order that Mr Armitage pay Ms Wu's costs of his motion. As will be seen below, although Mr Armitage has been partially successful in his motion, the need for such a motion arose from his failure to keep himself informed of the conduct of the proceeding on his behalf.


case_text: The power of the Court to make an order for costs derives from s 43 of the Federal Court of Australia Act 1976 (Cth). Costs ordinarily follow the event and are awarded on a party-party basis, unless there are particular or special circumstances which warrant the Court departing from this practice and making some other order: see Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 (" Colgate-Palmolive ") at 232-233 per Sheppard J and Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at 234 per Black CJ and French J. Since Ms Wu was in substance successful, she was and remains entitled to an order for costs. She continues to submit that an indemnity costs order is appropriate. 42 Whilst the Court has power to make an order for costs on an indemnity basis, the question is whether the Court should so exercise its discretion in the particular case. A court may award indemnity costs in respect of misconduct which causes loss of time to the Court and to other parties: Tetijo Holdings Ltd v Keeprite Australia Pty Ltd (Fed C of A, French J, WAG 55 of 1988, 3 May 1991, unreported) referred to with approval in Colgate-Palmolive at 233; Ugly Tribe Co Pty Ltd v Sikola [2001] VSC 189 at [7] per Harper J. As Mason P, with whom Meagher and Clarke JJA agreed, said in Rosniak v Government Insurance Office (1997) 41 NSWLR 608 at 616, "the court requires some evidence of unreasonable conduct, albeit that it need not rise as high as vexation" before departing from the usual party and party costs order. The procedural history provides sufficient evidence of unreasonable conduct on the part of Mr Armitage, through his legal representatives or personally, to continue to justify an indemnity costs order on Ms Wu's motion.


case_text: The power of the Court to make an order for costs derives from s 43 of the Federal Court of Australia Act 1976 (Cth). Costs ordinarily follow the event and are awarded on a party-party basis, unless there are particular or special circumstances which warrant the Court departing from this practice and making some other order: see Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 (" Colgate-Palmolive ") at 232-233 per Sheppard J and Ruddock v Vadarlis [2001] FCA 1865 ; (2001) 115 FCR 229 at 234 per Black CJ and French J. Since Ms Wu was in substance successful, she was and remains entitled to an order for costs. She continues to submit that an indemnity costs order is appropriate.


case_text: Whilst the Court has power to make an order for costs on an indemnity basis, the question is whether the Court should so exercise its discretion in the particular case. A court may award indemnity costs in respect of misconduct which causes loss of time to the Court and to other parties: Tetijo Holdings Ltd v Keeprite Australia Pty Ltd (Fed C of A, French J, WAG 55 of 1988, 3 May 1991, unreported) referred to with approval in Colgate-Palmolive at 233; Ugly Tribe Co Pty Ltd v Sikola [2001] VSC 189 at [7] per Harper J. As Mason P, with whom Meagher and Clarke JJA agreed, said in Rosniak v Government Insurance Office (1997) 41 NSWLR 608 at 616, "the court requires some evidence of unreasonable conduct, albeit that it need not rise as high as vexation" before departing from the usual party and party costs order. The procedural history provides sufficient evidence of unreasonable conduct on the part of Mr Armitage, through his legal representatives or personally, to continue to justify an indemnity costs order on Ms Wu's motion.


case_title: Ugly Tribe Co Pty Ltd v Sikola [2001] VSC 189


case_title: Rosniak v Government Insurance Office (1997) 41 NSWLR 608


case_text: Mr Armitage is now an unrepresented litigant and has been so since Mr Liberoginnias ceased to represent him on 27 April 2005. Prior to that date, he had legal representation. Like many unrepresented litigants, he is impecunious. Generally speaking, courts are more reluctant to make orders for indemnity costs against litigants in person than against legally represented litigants, although, in an appropriate case, they will make such an order: see Bhagat v Global Custodians Ltd [2002] FCA 223 at [57] and [60] per O'Loughlin, Whitlam and Marshall JJ. Further, impecuniosity is generally not a sufficient reason to deprive a party otherwise entitled to a costs order of the benefit of such an order: compare Selliah v Minister for Immigration and Multicultural and Indigenous Affairs [1998] FCA 469 per Nicholson J.


case_title: Selliah v Minister for Immigration and Multicultural and Indigenous Affairs [1998] FCA 469


case_text: Order 62 rule 3(2) permits the Court to order that costs be paid forthwith notwithstanding that the proceeding has not concluded. Weinberg J reviewed the authorities in McKellar v Container Terminal Management Services Ltd [1999] FCA 1639 , concluding at [38] that "[t]he discretion which is vested in the Court to order that a party's costs be taxed and paid forthwith should be exercised only where the interests of justice in the particular case require that there be a departure from the general practice". See also Life Airbag Company of Australia Pty Ltd v Life Airbag Company (New Zealand) Ltd [1998] FCA 545 per Branson J. In Courtney v Medtel Pty Ltd (No 3) [2004] FCA 347 at [21] , Sackville J said that that "[i]t appears to be broadly accepted that some reason must be shown to depart from what Lehane J in Vasyli described as the 'clear practice of the Court'". At [22] his Honour referred to the variety of circumstances that had thus far been regarded as justifying departure from the general rule.


case_title: Life Airbag Company of Australia Pty Ltd v Life Airbag Company (New Zealand) Ltd [1998] FCA 545


case_title: Courtney v Medtel Pty Ltd (No 3) [2004] FCA 347