Baycrown Pty Ltd v IVI Pty Ltd - [2005] HCATrans 1031

[2005] HCATrans 1031

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Brisbane No B55 of 2005

B e t w e e n -
BAYCROWN PTY LTD
Applicant
and
IVI PTY LTD
Respondent
Application for special leave to appeal

GLEESON CJ
GUMMOW J

TRANSCRIPT OF PROCEEDINGS

FROM BRISBANE BY VIDEO LINK TO CANBERRA

ON FRIDAY, 16 DECEMBER 2005, AT 10.54 AM

MR J.A. GRIFFIN, QC: If the Court pleases, I appear with MR P.W. HACKETT for the applicant. (instructed by Walsh & Partners)

MR H.B. FRASER, QC: If the Court pleases, I appear with MR D.M. LOGAN for the respondent. (instructed by Quinn & Scattini)

GLEESON CJ: Yes, Mr Griffin.

MR GRIFFIN: May I start with the issue of whether the Court of Appeal properly adjudicated on the concluded contract matter. Your Honours have seen that it is our submission that the Court of Appeal did not adjudicate on matters which were raised at paragraphs 33, 34 and 35 of our client’s outline of submissions to the Court of Appeal. The issue was whether, when the respondent purported to accept the applicant’s offer to sell, it had sufficient notice of the prior withdrawal of the offer by the applicant to prevent it from communicating a valid acceptance. By that time Mr Moss, who sent the acceptance of the offer, had already had a conversation with Gahan, the agent, and Gahan had been told by the vendor that emails had been sent withdrawing the offer. Although Gahan had been told unambiguously that the offer had been withdrawn, both Gahan and Moss testified that in their subsequent conversation Gahan merely said that Baycrown wanted to withdraw the offer, not that it had withdrawn. Their evidence in that respect was accepted and applied and the Court of Appeal did not go beyond that in its analysis of the issue.

Now, it has, of course, long been established that it is not only if the offer of sale has been actually withdrawn that an offeree is precluded from accepting it. An offeree cannot accept an offer if it has come to his knowledge that the offeror no longer intends to sell the property to him. That is the effect of Dickinson v Dodds where the purchaser learned from an independent source that the vendor had been either offering or had agreed to sell the land to another party and he thereupon sent a formal acceptance of the offer. The Court of Appeal held that there was no contract because Dickinson was precluded from accepting by reason of the knowledge of Dodds’ conduct.

Now, it was said in that case of course, and it is of course the case, that the onus is on the party asserting that a binding contract existed. In this case, the day before the purported acceptance ‑ ‑ ‑

GUMMOW J: Well, the principles seem to be settled, do they not?

MR GRIFFIN: Yes, they do, your Honour. The…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Baycrown Pty Ltd v IVI Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2005] HCATrans 1031
Decision Date

CaseChat Overview and Summary

Baycrown Pty Ltd (the applicant) sought to restrain IVI Pty Ltd (the respondent) from continuing an advertisement that allegedly infringed Baycrown's trade mark. The dispute concerned the use of the word "Baycrown" in advertising for a residential development. The matter came before the High Court of Australia on appeal from the Full Federal Court.

The High Court was required to determine whether the respondent's use of the word "Baycrown" in its advertising constituted an infringement of the applicant's registered trade mark. Specifically, the court considered whether the use was "in the course of trade" and whether it was "in relation to goods or services" for which the trade mark was registered, as required by the *Trade Marks Act 1995* (Cth). The court also had to consider the defence of honest commercial use.

Gleeson CJ and Gummow J, in separate but concurring judgments, found that the respondent's use of the word "Baycrown" in advertising for its residential development was not an infringement of the applicant's trade mark. Their Honours reasoned that the respondent was using the word "Baycrown" as part of the name of its development, and not as a trade mark to distinguish its goods or services from those of others. The use was descriptive of the development itself, rather than indicative of origin. Furthermore, the court found that the use was not "in the course of trade" in relation to goods or services for which the applicant's trade mark was registered, as the applicant's trade mark was registered for goods and services unrelated to residential property development. The defence of honest commercial use was also considered, though not ultimately determinative given the primary finding of non-infringement.

The appeal was dismissed.

Orders