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Federal Court of Australia - Full Court Decisions |
Last Updated: 19 December 2006
FEDERAL COURT OF AUSTRALIA
Christodoulou v Disney Enterprises Inc [2006] FCAFC 183
PROCEDURE – discontinuance
– where applicant appealed decision of single judge – where
applicant filed documents purporting
to discontinue appeal and seeking return of
moneys paid as security for costs – where applicant seeks to withdraw or
set aside
discontinuance – whether discontinuance effective –
whether Court has power to set aside notice of discontinuance –
whether
Court should exercise power to set aside notice of discontinuance in the
circumstances.
Held: applicant has
discontinued appeal – merits of appeal an important factor in exercise of
discretion to set aside notice of
discontinuance – appeal without merit
– not an appropriate case to exercise power to set aside a notice of
discontinuance
– unnecessary to determine nature and scope of power to set
aside discontinuance.
Federal Court Act
1976 (Cth)
Trade Marks Act 1955 (Cth)
Applicant A26 of 2002 v Minister for
Immigration and Multicultural and Indigenous Affairs [2003] FCA 1050
referred to
Applicant NACT of 2001 v Minister for Immigration and
Multicultural and Indigenous Affairs [2004] FCA 316 referred
to
Christodoulou v Disney Enterprises Inc [2005] FCA 1401; (2005) 66 IPR 595 referred
to
Christodoulou v Disney Enterprises Inc [2006] FCA 38 referred
to
Christodoulou v Disney Enterprises Inc [2006] FCA 902 referred
to
El Masri v Minister for Immigration and Multicultural and Indigenous
Affairs [2004] FCA 742; (2004) 138 FCR 338 referred to
Johnson & Johnson Australia
Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 referred to
Mark Foy’s Ltd v Davies Coop and Co Ltd [1956] HCA 41; (1956) 95 CLR 190
referred to
Musidor B V v Tansing (1994) 52 FCR 363 referred
to
NACU of 2001 v Minister for Immigration and Multicultural and
Indigenous Affairs [2004] FCA 1444 referred to
R v Essex Quarter
Sessions Appeals Committee; Ex parte Larkin [1961] 3 All ER 930 referred
to
R v Medway [1976] 1 All ER 527 referred to
R v Moore
[1957] 2 All ER 703 referred to
Shell Co of Australia Ltd v Esso Standard
Oil (Australia) Ltd [1961] HCA 75; (1963) 109 CLR 407 referred to
SAVVAS CHRISTODOULOU v DISNEY ENTERPRISES
INC, BUENA VISTA (AUSTRALIA) PTY LIMITED AND BMG AUSTRALIA PTY
LIMITED
VID 1323 OF 2005
NORTH, MANSFIELD AND BESANKO
JJ
18 DECEMBER 2006
MELBOURNE
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AND:
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THE COURT ORDERS THAT:
1. The applicant’s notice of motion dated 6 July 2006 be dismissed.
2. The applicant pay the respondents’ costs of the said notice of motion.
Note: Settlement and entry of orders is dealt with in Order 36 of the
Federal Court Rules.
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BETWEEN:
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SAVVAS CHRISTODOULOU
Applicant |
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AND:
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DISNEY ENTERPRISES INC
First Respondent BUENA VISTA (AUSTRALIA) PTY LIMITED Second Respondent BMG AUSTRALIA PTY LIMITED Third Respondent |
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JUDGES:
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NORTH, MANSFIELD AND BESANKO JJ
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DATE:
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18 DECEMBER 2006
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PLACE:
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MELBOURNE
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REASONS FOR JUDGMENT
THE COURT
1 Mr Savvas Christodoulou (‘the applicant’) brought proceedings in this Court claiming an infringement of a trade mark by Disney Enterprises Inc, Buena Vista (Australia) Pty Limited and BMG Australia Pty Limited (‘the respondents’). After a trial before a single Judge of this Court (Crennan J), orders were made dismissing the proceedings and ordering the applicant to pay the respondents’ costs: Christodoulou v Disney Enterprises Inc (2005) IPR 595.
2 The applicant instituted an appeal against those orders. On or about 30 May 2006, he purported to discontinue the appeal. The respondents allege that he did discontinue the appeal whereas the applicant alleges that the notice he filed was not effective to discontinue the appeal. If he is wrong about that submission the applicant seeks leave to withdraw the notice and to have the appeal reinstated. The respondents oppose the application to withdraw the notice and have the appeal reinstated.
3 The applicant’s notice of motion dated 6 July 2006 seeks the following orders:
1. The applicant be permitted to withdraw the ‘Notice of Discontinuance’ and Notice of Return of Security of Costs, lodged and dated 30 May 2006.
2. The applicant be permitted to continue the appeal proceedings being Case Number V1323 of 2005.
3. Any other order(s) the Court may deem fit.
4 This notice of motion came on for hearing before Heerey J. His Honour considered that if this Court had the power to make the order sought in paragraph 1 it would involve an exercise of the appellate jurisdiction of the Court. Accordingly, he referred the applicant’s notice of motion to the Full Court: Christodoulou v Disney Enterprises Inc [2006] FCA 902. That is the application before this Court.
5 The notice of motion raises three questions. First, has the applicant discontinued the appeal? If the answer to that question is yes, the second question is whether this Court has the power to make an order setting aside the notice of discontinuance and reinstating the appeal. It should be noted at this point that both parties submitted that there was power to set aside a notice of discontinuance and reinstate an appeal, but were at issue as to the scope of the power. The respondents submitted that the power could only be exercised if it was appropriate in law to conclude that the notice of discontinuance was a nullity, whereas the applicant submitted that the power could be exercised whenever the interests of justice required it. The third question is whether, having regard to the facts of the case, the Court should exercise the power to set aside the notice of discontinuance and reinstate the appeal.
6 We have reached the conclusion that the applicant has discontinued the appeal. Furthermore, even on the assumption most favourable to the appellant, namely, that there is power to set aside the notice of discontinuance and reinstate the appeal whenever the interests of justice require it, we have reached the conclusion that this is not an appropriate case in which to exercise such a power. We have reached that conclusion because an important consideration in the exercise of the discretion is the merits of the appeal and in our opinion the appeal is not arguable. In those circumstances, it is not necessary for us to determine the nature and scope of any power to set aside a notice of discontinuance and reinstate an appeal.
The notice of discontinuance
7 The Rules of Court provide for the discontinuance of a proceeding (O 22) and for the discontinuance of an appeal (O 52 r 19). Of course, we are here concerned with the discontinuance of an appeal, but the discontinuance of a proceeding is relevant because of the form of the notice used by the applicant.
8 Order 22 relevantly provides:
‘2(1) Subject to subrules 2 and 3 a party making a claim for relief may discontinue a proceeding so far as concerns the whole or any part of any claim for relief, by notice in accordance with Form 29:
(a) at any time before the directions hearing appointed in the application -- without the leave of the Court or the consent of any other party;
(b) where after the directions hearing the proceeding continues on pleadings but the pleadings are not closed -- without the leave of the Court or the consent of any other party;
(c) where judgment has not been entered -- with the consent of all the parties; and
(d) at any time -- with the leave of the Court.
(2) A party who represents any other person in the proceeding shall not discontinue his claim for relief under subrule (1) without the leave of the Court.
(3) An application for a winding up order under section 459P or paragraph 461 (1) (a) of the Corporations Act 2001 may not be discontinued without leave of the Court.
3(1) A party who discontinues pursuant to paragraph 2 (1) (a) or (b) shall be liable to pay the costs of the other party or parties occasioned by the whole or the relevant part of the proceeding.
(2) A party who discontinues under paragraph 2 (1) (c) is liable to pay the costs of the other party or parties occasioned by the whole or the relevant part of the proceeding, unless the terms of the consent provide otherwise.
...
5(1) A discontinuance or withdrawal under rule 2, 3 or 4 shall be made by filing a notice stating the extent of the discontinuance or withdrawal.
(2) Where the discontinuance or withdrawal is by consent, the notice under subrule (1) must bear the consent of each consenting party.
...
7 A discontinuance under this Order as to any cause of action shall not, subject to the terms of any leave to discontinue, be a defence to a proceeding for the same, or substantially the same, cause of action.’
9 O 52 r 19 is in the following terms:
‘19(1) An appellant may file and serve a notice of discontinuance:
(a) at any time before the hearing of the appeal, without the leave of the Court; or
(b) at the hearing, or after the hearing and before judgment is pronounced or made, with the leave of the Court.
(1A) If a notice of discontinuance is filed and served under subrule (1), the appeal is abandoned.
(2) The notice of discontinuance filed by an appellant under subrule (1) does not affect any other appellant in the appeal.
(3) A party filing a notice of discontinuance under subrule (1) shall be liable to pay the costs of the other party or parties occasioned by the appeal.
(4) A party whose costs are payable under subrule (3) may tax the costs and if the taxed costs are not paid within 14 days after service of the certificate of taxation may enter judgment for the taxed costs.’
10 There is no separate Form in the Rules for the discontinuance of an appeal.
11 On 30 May 2006 the applicant filed and served a number of documents. The first was a notice of discontinuance which was signed by him and was in the following form:
‘IN THE FEDERAL COURT OF AUSTRALIA Form 29
VICTORIA REGISTRY
No V1323 of 2005
[File Names]
NOTICE OF DISCONTINUANCE
(Order 22 rule 2)
The applicant pursuant to the leave of the Court granted on 31st May 2006, (if leave is obtained) discontinues the proceedings (in respect of claim number of the Appeal Application No V1323 of 2005).
Date: 30th May 2006
Signed (S Christodolou)
Savvas Christodoulou (The Applicant)
[Filing addresses of Solicitors]’
12 He also filed a notice of motion dated 30 May 2006 and an affidavit sworn on 30 May 2006. The notice of motion sought the following orders:
‘1. The applicant be permitted to discontinue the appeal proceedings being Case Number V 1323 of 2005.
2. The applicant be returned the security of costs in the amount of $10,000.
3. Any other order(s) the Court may deem fit.’
13 The reference in paragraph 2 to ‘security of costs’ is a reference to an amount paid into Court by the applicant pursuant to orders made by Merkel J on 3 February 2006. The matter arose in the following way.
14 On 25 October 2005 the applicant filed his appeal which was a thirty-six page document. On 23 November 2005 the respondents applied for orders requiring that the notice of appeal be amended because it did not comply with O 52 r 13(2)(b) of the Rules of Court. That rule provides that the notice of appeal state, ‘briefly, but specifically, the grounds relied upon in support of the appeal’. The respondents contended that the notice of appeal did not do that. The respondents also sought an order that the applicant provide security for costs in the amount of $70,000. The respondents’ application came on for hearing before Merkel J. On 20 December 2005 his Honour ordered that the appeal be struck out because it failed to comply with O 52 r 13(2)(b). He gave leave to the applicant to file an amended notice of appeal and that was subsequently done. The amended notice of appeal limited the grounds of appeal. The application for security for costs was adjourned.
15 On the application for security for costs coming on for argument, Merkel J noted that the applicant was self-represented and appeared unable to meet any order for security for costs. Any order for security was likely to stultify the appeal. However, it did not follow that security for costs should not be ordered. Merkel J referred to O 52 r 20 which provides that no security for costs of an appeal shall be required ‘unless the Court or a Judge otherwise directs’. His Honour noted that the cases establish that the respondent bears the onus of satisfying the Court that the appeal is without merit or substance and that the prospect of the respondent being left without remedy in respect of a costs order is significant. His Honour considered that both criteria had been established and that security for costs should be ordered. As the applicant had narrowed and limited his grounds of appeal, which essentially raised a question of law, the amount of security that was appropriate was $10,000. The orders made by Merkel J were as follows:
‘1. Unless the appellant provides security for costs in the sum of $10 000 within one month of today’s date, either by payment of that amount or by way of security acceptable to the Registrar, the appeal be stayed.
2. The appellant pay the respondents’ costs of the motion dated 23 November 2005.’
His Honour delivered written reasons for his decision: Christodoulou v Disney Enterprises Inc [2006] FCA 38.
16 The applicant paid the sum of $10,000 into Court.
17 With his notice of motion dated 30 May 2006 the applicant filed and served an affidavit sworn on 30 May 2006. The key points in his affidavit were as follows:
1. The applicant borrowed the sum of $10,000 which he paid into Court.
2. The applicant’s wife was seriously ill and that was placing a significant emotional and financial strain on him and his family.
3. The applicant was in a precarious financial position.
4. The applicant had tried to settle the proceedings.
5. The applicant believed that the respondents had not provided an accurate estimate of their costs associated with the appeal.
6. The applicant sought a full refund of the security of costs of $10,000.
7. The applicant stated the following in the final paragraph of his affidavit:
‘Alternatively, if the Court finds that I am to forfeit a refund of any of the said Security of Costs, I submit that the fair and just amount should be a pro-rata 1/3 of the $10,000-00, namely $3,300-00 taking into account the re-assessment by Ms King. That is, I should be ordered to forfeit no more than a third of the Security of Costs.’
18 Before this Court the applicant sought to rely on an affidavit he swore on 2 August 2006. The affidavit contained, among other things, evidence as to why the applicant acted as he did in filing the notice of discontinuance and other documents on 30 May 2006. The respondents objected to the admission of the affidavit. We received the affidavit after we gave the respondents leave to cross examine the applicant (which subsequently occurred) and indicated that assertions in the affidavit which were plainly in the nature of submissions would be received and treated as such.
19 The affidavit of the applicant sworn on 2 August 2006 is not relevant on the first question, namely, whether the notice of discontinuance dated 30 May 2006 was effective to discontinue the appeal.
20 The respondents were content to argue the first question on the basis that the Court could consider not only the notice of discontinuance but also the notice of motion dated 30 May 2006 and the applicant’s affidavit sworn on 30 May 2006. We will proceed on that basis noting that it will not necessarily be appropriate in every case to look beyond the notice of discontinuance itself. In this case it does not matter because taking the notice of motion and affidavit into account supports rather than alters our conclusion that the notice of discontinuance was effective to discontinue the appeal.
21 The notice of discontinuance refers to the Rule of Court which is relevant to the discontinuance of a proceeding prior to judgment (O 22 r 2), rather than the discontinuance of an appeal. In our view while that might explain why the applicant considered that he needed leave in that he had regard to the incorrect rule, the reference to the incorrect rule in the notice itself does not affect the validity of the notice. The notice of discontinuance referred to the obtaining of leave to discontinue the appeal but leave to discontinue the appeal was not necessary. However, we do not think the fact that the applicant thought he needed leave when in fact he did not, affected the validity of the notice or made it contingent in some way on the Court advising the applicant that he did not need leave. The notice evinced a clear intention to discontinue the appeal and leave to do so was not required.
22 As we have said, on the assumption that reference to the notice of motion dated 30 May 2006 and affidavit sworn on 30 May 2006 is appropriate, then those documents support the conclusion that the notice of discontinuance was effective. It is plain that the applicant sought to discontinue his appeal and to do so in a way which maximised his chances of recovering the sum of $10,000 paid into Court, or such part of it as may be considered appropriate.
23 In our opinion, the notice of discontinuance was effective to discontinue the appeal and, by reason of O 52 r 19, the appeal was abandoned.
24 The applicant argued against this conclusion but, submitted in the alternative, that the Court should make orders setting aside the notice of discontinuance and reinstating the appeal. The respondents submitted that in the particular circumstances of this case the Court did not have the power to set aside the notice of discontinuance and reinstate the appeal, but submitted that in any event it was not an appropriate case to exercise the power.
The existence of the power
25 There is a line of authority to the effect that the Court has inherent jurisdiction to set aside a discontinuance or abandonment of proceedings if the act constituting the discontinuance or abandonment was a nullity in the eyes of the law by reason of fraud or mistake: R v Moore [1957] 2 All ER 703; R v Essex Quarter Sessions Appeals Committee, Ex parte Larkin [1961] 3 All ER 930; R v Medway [1976] 1 All ER 527.
26 The respondents contend the power goes no further than that and does not arise in this case because there is no evidence of any conduct which would render the notice of discontinuance a nullity.
27 There is some authority to suggest that the power extends beyond cases of fraud or mistake and that the Court has the power to set aside a discontinuance or abandonment whenever the interests of justice dictate that that is the appropriate course: Applicant NACT of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 316; NACU of 2001 v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1444; Applicant A26 of 2002 v Minister for Immigration and Multicultural and Indigenous Affairs [2003] FCA 1050.
28 We think that the Court does have power to set aside a discontinuance or abandonment although we do not need to decide if it goes beyond those cases where the notice of discontinuance is a nullity because even if the relevant test is the interests of justice the exercise of the power is not warranted in the circumstances of this case.
The exercise of the power
29 We need to set out something of the background of the proceedings and the circumstances surrounding the filing of the notice of discontinuance.
30 The applicant was described by the trial Judge as a Melbourne-based writer and composer who is also involved in a business for providing, among other things, live entertainment booking services. His registered trade mark is for the words THE HUNCHBACK OF NOTRE DAME in class 41 for ‘Entertainment services in class 41’. This is the registered mark and it is in capital letters. The trial Judge noted that it was originally accepted for registration under the Trade Marks Act 1955 (Cth) in Part A from 10 June 1994. An endorsement was included on the Trade Marks Register (prior to the commencement of the 1995 Act) that ‘Registration gives no right to the exclusive use of the words "NOTRE DAME"’.
31 The first respondent is a member of the Disney group of companies who have a reputation for the production and sale of films, being animated cartoons, including animated cartoons of well-known narratives. The first respondent is incorporated in the State of Delaware in the United States of America. The second respondent, Buena Vista (Australia) Pty Limited is involved in the Australian release and distribution of films, and third respondent, BMG Australia Pty Limited, is involved in the release and distribution of sound recordings in Australia.
32 The applicant sought (among other claims for relief) declarations that various uses of the words THE HUNCHBACK OF NOTRE DAME by the respondents constituted infringements of the applicant’s registered mark.
33 Orders were made that three questions were to be answered before other issues in the proceedings were dealt with and those questions were as follows:
‘(a) What is the sign or signs that the respondents have used (or procured the use of) in each of the examples in suit?
(b) In each case, was the sign used (or procured to be used) as a trade mark?
(c) If the answer to (b) is in the affirmative, in each case was the sign used (or procured to be used) substantially identical with or deceptively similar to the applicant’s registered mark?’
The trial Judge answered the questions in the following way:
‘(a) The parties consented to the answer to be given to this question (see para 22 and Annexure A).
(b) No.
(c) Not necessary to answer.’
Those answers were sufficient to dispose of the proceedings and her Honour made an order under the provisions of O 29 r 4 dismissing the proceedings.
34 The essence of her Honour’s reasoning is contained in the following passage from her reasons for judgment:
‘Like the appellant in Rolling Stones, the appellant’s case appears to be ‘an attempt to obtain a monopoly over words used to describe a lawful product’ (per Gummow and Heerey JJ at 377). The words used by the respondents in the promotion of the Disney films are use of an established title of the story portrayed. A recognised title of an adaptation or cartoon version of a well-known story is descriptive. The descriptive meaning of these words was established well before the applicant applied for registration of his trade mark. The purpose and nature of each use is to describe the respondents’ products accurately. The uses are not for the purposes of indicating a relevant connection in the course of trade or to distinguish the respondents’ goods from those of other traders. The uses do not amount to ‘use(s) as a trade mark’ within the meaning of s 120 of the Act. Therefore, in each case the use complained about was not use as a trade mark. These findings do not necessarily preclude the inclusion of the words THE HUNCHBACK OF NOTRE DAME in a registrable trade mark, particularly a composite trade mark. It remains a matter for the Registrar to determine the registrability of any trade mark containing descriptive material.’
35 The reference by her Honour to Rolling Stones is a reference to the decision of the Full Court of this Court in Musidor B V v Tansing (1994) 52 FCR 363.
36 In our opinion, the decisive consideration for the purposes of the exercise of the (assumed) power to set aside the notice of discontinuance and reinstate the appeal is the lack of any merit in the appeal. Nevertheless, we will first say something about the evidence the applicant gave for acting as he did.
37 About one week before the applicant filed his notice of discontinuance the appeal was set down for hearing on 2 August 2006. The notice of discontinuance was filed the day before the parties were due to appear before a Registrar in Melbourne to settle the appeal papers. There is no doubt the applicant’s wife was seriously ill in May 2006 and that that would have placed emotional and financial strain on the applicant and his family. He wished to discontinue the appeal and to recover as much as he could of the moneys in Court. We reject his suggestion that he was under so much pressure that he did not know what he was doing. That is simply not supported by reference to the objective facts and is inconsistent with alternative explanations the applicant proffers for his conduct. We also reject his evidence that he only wished to discontinue the appeal if he received back the sum of $10,000. That is inconsistent with the last paragraph of the affidavit which he swore at the time (see [17]). In our opinion, the applicant was under the mistaken belief that he needed leave to discontinue his appeal. He wished to discontinue the appeal and he hoped that by doing so he would recover as much as he could of the moneys in Court. We also reject the applicant’s suggestion that he inserted the requirement of leave because he thought he could ‘buy’ some time before the matter was heard and in the interim he might raise the funds to continue the appeal. It may be that he did raise the funds and that has led to his application to withdraw the notice of discontinuance, but we do not think that this rather disingenuous motive was his motive on 30 May 2006. There is no evidence that it was and the objective facts strongly suggest that he wished to discontinue the appeal and mistakenly considered that leave was necessary.
38 We turn now to consider the merits of the appeal. The amended notice of appeal contains eleven grounds of appeal which are in the following terms:
‘1. The learned trial judge erred in finding that –
a) in each case, the sign used (or procured to be used) was not used as a Trade Mark; and
b) that each sign used (or procured to be used) was not substantially identical with or deceptively similar to the Appellant’s registered Trade Mark.
2. The learned judge erred in her findings due to the incorrect manner in which the "Rolling Stones" Test was applied to the facts, in relation to the Respondents use of the mark.
3. In the alternative, the majority decision in "Rolling Stones" was wrong. (Musidor BV v Tansing (1994) 52 FCR 363) "Rolling Stones")
4. The learned judge erred in finding that the Respondents had not used the sign or signs (or procured them to be used) as a Trade Mark, in respect to:
(a) movie reviews;
(b) packaging of CDs, DVDs and AUDIO-CASSETTES;
(c) advertisements on the Disney Website;
(d) use on the Ezy-DVD Webpage;
(e) advertisements for screening of the film;
(f) books; and
(g) Disney adventure comics.
5. The learned judge erred in failing to examine the alleged infringing uses of the Title (and variations of Title) on any of the various VIDEO RECORDINGS.
6. The learned judge should have found that:
a. Use of a Title for a "Series" of products (where each item of the series comes from the same source as the others) is able to function as, and be registered as a Trade Mark; and
b. The Respondent’s use of the Title for a "Series" of books, comics, movies and audio-visual recordings, in the context of the facts and circumstances of this case, was use as a Trade Mark.
c. The Respondent’s use of the Title for a "Series" of books, comics, movies and audio-visual recordings, in the context of their existing Australian Registered Trade Marks, and their accepted Application for Registration under Class 9, shows an "intention to use" as a Trade Mark, and use as a Trade Mark.
7. The learned trial judge erred in finding that the Appellant was attempting to obtain a monopoly over words used to describe a lawful product.
8. The learned trial judge erred in finding that a recognised title of an adaptation or cartoon version of a well-known story, in the particular circumstances of this case, was only descriptive, and could not function both as a descriptive title and as a Trade Mark.
9. The learned trial judge should have found that the Respondents’ uses of the sign or signs, regarding the full context, nature and purpose of all the facts and circumstances, were uses for the purposes of indicating a relevant connection in the course of trade, or to distinguish the Respondents’ goods from those of other traders, and, that the Title had acquired a secondary meaning.
10. The learned trial judge should have found that the use of the sign or signs (or their procurement to be used) was use as a Trade Mark.
11. The learned trial judge should have found that in each case the sign or signs used (or procured to be used) by the Respondents was substantially identical with and deceptively similar to the Appellant’s registered Trade Mark.’
39 In essence, the grounds of appeal involve a challenge to three aspects of the trial Judge’s reasoning. First, her Honour concluded that the respondents did not use their signs as a trade mark and the test for use as a trade mark on which she relied was that referred to in Musidor BV v Tansing (supra). One of the grounds of appeal challenges the correctness of that decision (ground 3). Secondly, her Honour applied that test to the facts of the case before her and for various reasons the applicant submits that she erred in her application of the test to the facts. Thirdly, it is said that her Honour erred in not concluding that the signs used by the respondents were substantially identical or deceptively similar to the applicant’s trade mark.
40 The applicant no longer presses the first challenge. In other words, he no longer submits that the decision in Musidor BV v Tansing (supra) is wrong. It must be said that in any event, such a challenge was very unlikely to succeed. The distinction between a mark being used to describe goods and not as a badge of origin is a well-established distinction. In that regard, it is sufficient for us to refer to Mark Foy’s Ltd v Davies Coop and Co Ltd [1956] HCA 41; (1956) 95 CLR 190; Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1961] HCA 75; (1963) 109 CLR 407 and Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326.
41 The third challenge does not become an issue if the second challenge is unsuccessful. In our opinion, the second challenge is not arguable and therefore it is not necessary to consider if the third challenge is arguable. We would make the observation that contrary to what is asserted in the grounds of appeal, her Honour, although suggesting there were difficulties for the applicant, did not finally determine if the sign used (or procured to be used) was substantially identical with or deceptively similar to the applicant’s registered mark.
42 The majority of the grounds of appeal which relate to the second challenge are in essence a complaint expressed in a variety of ways about the ultimate conclusion reached by the trial Judge. We have carefully considered the trial Judge’s reasons and we do not think that any of the grounds of appeal are arguable.
43 In those circumstances even if in the circumstances of this case we have the power to set aside the notice of discontinuance and reinstate the appeal we would not exercise it.
44 One matter which was dealt with in the respondents’ written submissions was the possibility of the applicant lodging another appeal and seeking an extension of time within which to appeal. We agree with the respondent that the applicant could not lodge another appeal. In El Masri v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 742; (2004) 138 FCR 338 at 343 [23] Branson J said, correctly in our view, that ‘a statutory right of appeal is not a right to appeal from time to time subject only to the requirement that any necessary extension of time be obtained. Once a right of appeal under s 24(1) of the Federal Court Act 1976 (Cth) has been exercised, no further right of appeal may be invoked’. Although in view of this conclusion it is not necessary to consider the point, the applicant would in any event fail on the discretion to extend time because of the lack of any merit in the appeal.
Conclusion
45 The applicant’s notice of motion dated 6 July 2006 should be dismissed with costs.
46 Heerey J also referred to this Court the applicant’s notice of motion dated 30 May 2006 (see [12]). As the applicant did not press for the orders sought therein we made an order at the outset of the hearing striking out the notice of motion and an order that the applicant pay the respondents’ costs of the motion.
47
The fate of the moneys paid into Court can be determined by a single
Judge.
Associate:
Dated: 18
December 2006
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Counsel for the Respondent:
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Solicitor for the Respondent:
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Date of Hearing:
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2 August 2006
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Date of Judgment:
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