Christian v Société Des Produits Nestlé SA

Proposed ground (i) 44 Proposed ground (i) seeks to challenge orders 3A and 3B set out above at [36]. 45 Leave was refused because the ground had no prospects of success. 46 Mr Christian contended that the orders were not within the power of the Federal Circuit Court to make because the facebook.com domain is administered outside Australia and outside the Federal Circuit Court's jurisdiction. In support, Mr Christian filed an affidavit in which he deposed that the A-SASHI Vitamins Facebook fan page is hosted on the Facebook website which uses a dot com, a top level domain under the ultimate jurisdiction of US law and administered at server locations in the US and Sweden. 47 The contention misunderstands what the orders require of Mr Christian. The fact that the facebook.com domain is administered outside Australia is irrelevant as the orders that were made are orders against Mr Christian personally, and it was within the Court's power to make such orders against Mr Christian, albeit that they may involve him doing an act outside the jurisdiction: see Australian Competition & Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487; 196 ALR 576 at [41]-[45]. Accordingly, there would be no utility in advancing this proposed ground of appeal.

Proposed ground (ii) 48 Proposed ground (ii) asserts that the proceedings below were brought "without merit and wholly commenced for a collateral purpose such that the proceeding constitutes an abuse of process". 49 The relevant parts of the affidavit supporting this proposed ground were not in admissible form but were accepted by the Court as submissions. Mr Christian contended that the Nestlé parties had "wrongly proposed false material facts which caused the Court to err in judgment such that the Court incorrectly accepted as fact that two logos were used on A-SASHI vitamins packaging". Mr Christian submitted that the first A-SASHI logo has never appeared on any A-SASHI goods sold or marketed in Australia and that it was unfairly prejudicial for the court below to consider the first A-SASHI logo as evidence in determining the issue of deceptive similarity. 50 Mr Christian sought, and was refused, leave to re-open his case before judgment in the Federal Circuit Court to seek "a vexatious proceedings order" (see Société Des Produits Nestlé SA v Christian (No 2) [2014] FCCA 1867). After judgment was delivered, Mr Christian applied for leave to file a cross-claim for unconscionable conduct based on the same allegation. In response to that application, the primary judge ordered that, in support of any application to file such a cross-claim, Mr Christian must accompany any draft cross-claim with a statement signed by a person holding a current practising certificate, certifying that there are reasonable grounds for believing on the basis of provable facts and a reasonably arguable view of the law that the claims pleaded in the draft cross-claim have reasonable prospects of success: see Société Des Produits Nestlé SA v Christian (No 3) [2014] FCCA 2024 (Christian (No 3)) at [61] and orders 5(a) and 5(d). Though Mr Christian had sought and been granted several extensions of time, the most recent being until 27 February 2015, no such application was filed: see Société Des Produits Nestlé SA v Christian (No 10) [2014] FCCA 2524 at [3] and [22]. 51 During the hearing of the appeal, Mr Christian was asked to clarify the "collateral purpose" that he was alleging. Mr Christian's response was: Well, I've been put out of business. It has recently come to my attention that my supplier, Inflighter, is very unique. 40 years of experience - and they're using my supplier. 52 Nothing in the material to which the Court was taken supports Mr Christian's claim of collateral purpose, which we found tendentious. Furthermore, it is not open to Mr Christian to seek to agitate a contention of collateral purpose in this appeal, when such a claim was not made in the proceedings below and the foreshadowed cross-claim was never brought.

The proposed interlocutory application 53 By the proposed interlocutory application, Mr Christian sought leave to appeal the following orders of the primary judge: (a) order 5(a) made 3 September 2014 and later extended twice, placing a time limit by which Mr Christian could raise a cross-claim in the proceedings; (b) order 1 made 19 December 2014 refusing Mr Christian leave to administer interrogatories; and (c) orders 2 and 3 made 19 December 2014 setting aside subpoenas filed by Mr Christian and ordering that Mr Christian must not file with the registry of the court any subpoena without the prior leave of a judge of the Court. 54 Mr Christian also sought leave to add the following grounds to his notice of appeal: (a) by the Federal Circuit Court making orders 1, 2 and 3 on 19 December 2014 and not allowing [him] to administer interrogatories or file subpoenas, the Court denied [him] the right to evidentiary and procedural rules of the Court, and in doing so denied the right to natural justice, which is implied in the Australian Constitution through procedural due process standards and which is implied to include, through expressions of justice, a right to a fair hearing and the lack of bias, and (b) by the Federal Circuit Court making orders 1, 2, and 3 on 19 December 2014 and not allowing [him] to administer interrogatories or file subpoenas, the Court denied [him] the ability to meet order 5(d), made on 3 September 2014, ordering the merit of the cross-claim by [him] to be properly determined and certified by a person who holds a current practising certificate. 55 As we noted above, the Court refused leave to file the interlocutory application, stating that we would give our reasons in the judgment. 56 To understand Mr Christian's proposed grounds, it is necessary to set out some background. The orders made by the Federal Circuit Court on 4 September 2014 required that any application for a cross-claim by Mr Christian be filed by a certain date and that the merits of the application to file a cross-claim must be certified by a person holding a current practising certificate: see Christian (No 3) and orders 5(a) and 5(d). The Federal Circuit Court reasoned as follows at [54]-[62]: 54 Part 28 of the Federal Circuit Court Rules 2001 (Cth) deals with cross-claims. Rule 28.04 provides that a cross-claim must be included in the respondent's response. Mr Christian has not done this. The question that Mr Christian's application raises, therefore, is whether the Court, in the exercise of its discretion, should at this late stage permit Mr Christian to file a cross-claim. 55 There are sound reasons why I should not exercise my discretion. First, although Mr Christian in his affidavit makes serious claims of wrongdoing against the applicants and their advisors, Mr Christian does not particularise the claims. Instead, Mr Christian claims that evidence of wrongdoing will be uncovered through the making of the other orders he seeks, and in particular, orders for "discovery through subpoenas, production of documents and interrogatories". That is made clear in the following paragraph of Mr Christian's affidavit: The application seeks the Court to issue orders for discovery through subpoenas, production of documents and interrogatories in order to access evidence which unequivocally shows deponents made false statements during cross-examination at the 6 June 2014 hearing, and to also show that evidence which was both annexed and stated in affidavits in the proceedings was deliberately falsified & intentionally misrepresented by the deponents. 56 In other words, Mr Christian has not articulated any reasonably viable cross-claim that would withstand summary dismissal. Most of the orders for "discovery through subpoenas, production of documents and interrogatories" are sought for the purpose of enabling Mr Christian to formulate a case, rather than to aid a case he has articulated. 57 Second, assuming Mr Christian has a reasonably viable cross-claim, he has not given any adequate explanation for his not having sought to file a cross-claim before or during the hearing. Even if I accept, as Mr Christian claims, that he first became aware of s.20 of the ACL on 22 July 2014 during a meeting at the Melbourne office of the Australian Competition and Consumer Commission, Mr Christian was aware of the matters on which he appears to rely for claiming or wishing to claim that the applicants have engaged in unconscionable conduct. Mr Christian refers to a number of paragraphs of two of his affidavits which he filed in these proceedings. Mr Christian, therefore, had an opportunity before the hearing to apply for leave to raise a defence or cross-claim based on unconscionable conduct. 58 There is, however, a factor that weighs in favour of permitting Mr Christian to file a cross-claim; if I do not grant Mr Christian leave to file a cross-claim in these proceedings, and Mr Christian commences fresh proceedings against the applicants in which he claims they have contravened s. 20 of the ACL, he may be met with an Anshun plea. That is, the applicants in those proceedings may claim that Mr Christian ought to have raised the claims under s. 20 of the ACL in these proceedings and, because he did not, he is estopped from raising them in other proceedings. 59 During the hearing on 29 August 2014, I raised with counsel for the applicants that one factor that may be relevant to whether I should grant leave to Mr Christian to file a cross-claim is whether my refusal to do so may expose Mr Christian to an Anshun plea. Counsel for the applicants submitted that this factor, if relevant at all, should be given no weight. Mr Christian has been aware of the matters on which he appears to rely for claiming wrongdoing against the applicants and their advisers, and yet did nothing to file a cross-claim. 60 There is weight in counsel's submission. I cannot ignore, however, the fact that Mr Christian is an unrepresented litigant and that, so I infer, Mr Christian has been ignorant of the necessity for him to file a cross-claim in the proceedings, and was ignorant of the potentially adverse consequence to him of not filing a cross-claim. I am therefore minded to dismiss the cross-claim application, but provide Mr Christian with a final opportunity to obtain legal advice about whether he does have a viable claim against the applicants and, if so, to apply for the leave of the Court to file a cross-claim. 61 Accordingly, I propose to permit Mr Christian to file an application in a case to seek leave to file a cross-claim. I propose, however, to impose the following conditions on his doing so: a) He must apply for such leave by no later than 15 October 2014 by filing an application in a case. b) The application in a case must be accompanied by a draft proposed cross-claim. c) The draft cross-claim must be in the form of the cross-claim provided for in form 31 of the Federal Court Rules 2011 (Cth) (FCR), and it must be accompanied by a statement of cross-claim which complies with r. 16.02 of the FCR. d) The application to file a cross-claim must be accompanied by a statement, signed by a person who holds a current legal practising certificate, to the effect that there are reasonable grounds for believing on the basis of provable facts and a reasonably arguable view of the law that the claims pleaded in the statement of cross claim have reasonable prospects of success. e) If the application to file a cross-claim does not substantially comply with any one of these requirements, the application will be dismissed. 62 I should say something about the considerations that have led me to decide to impose these conditions. If Mr Christian were to be permitted to again apply to file a cross-claim, and he were permitted to do so without the conditions I propose to impose, it is more than likely that he would file an application along the same lines he has already filed on two occasions and which I have dismissed. In these circumstances, and because Mr Christian has now realised he needs legal assistance, and has applied for an adjournment for the purpose of being given an opportunity to obtain legal advice, I am of the view that it would be just in the interests of both Mr Christian and the applicants that Mr Christian be permitted to again apply to file a cross-claim but only after he has had an opportunity to seek and obtain legal advice, and only if the legal advice he receives is that he has a reasonably arguable cause of action against the applicants based on provable facts and a reasonably arguable view of the law, and some legal practitioner certifies to the Court that Mr Christian has such reasonable cause of action. (Footnotes omitted.) 57 Mr Christian's stated purpose for the interrogatories and the subpoenas was to obtain the material facts to give to a lawyer in order to obtain the certification. However, the primary judge held that the proposed subpoenas and interrogatories were a "fishing" exercise: Société Des Produits Nestlé SA v Christian (No 14) [2014] FCCA 2968. His Honour stated at [12]-[15]: 12 The purpose for which Mr Christian seeks the documents described in the subpoenas is not a legitimate forensic purpose. First, there is no issue before the Court to which the documents described in the proposed subpoenas is apparently relevant. The cross-claim which Mr Christian says in his affidavit he wishes to assert is not before the Court. A cross-claim by Mr Christian will only be before the Court if leave is given, after an application for such leave is made pursuant to the orders I made on 3 September 2014, and such application is supported by a draft cross-claim that has been certified by a legal practitioner to have reasonable prospects of success. 13 Second, it is apparent that Mr Christian seeks the documents described in the subpoenas for the purpose of enabling a lawyer to determine whether there may be facts on the basis of which the lawyer is able to frame a cross-claim which the lawyer will be able to certify has reasonable prospects of success. That is fishing. 14 Interrogatories are a species of discovery. Their purpose is to require the party to whom they are addressed to provide answers that are relevant to an issue in a case. This Court has power to permit a party to administer interrogatories, but only if the Court makes a declaration under s. 45(1) of the Federal Circuit Court of Australia Act 1999 (Cth) (FCCA Act) that it is appropriate, in the interests of the administration of justice, to allow the interrogatories. 15 As I have already noted, the cross-claim Mr Christian says he wishes to assert is not before the Court. There is no issue before the Court, therefore, in relation to which the answers sought by the interrogatories Mr Christian seeks to administer are or can be relevant. Given there is no cross-claim before the Court, there is no proceeding in relation to which a declaration can be made under s. 45(1) of the FCCA Act. Even if there were such a proceeding, given there is no cross-claim before the Court, I am not satisfied that it is appropriate, in the interests of the administration of justice, to allow Mr Christian to administer interrogatories. 58 The further orders that Mr Christian sought to appeal by the proposed interlocutory application dealt with matters of practice and procedure and involved the exercise of discretion. The High Court observed in Adam P Brown Male Fashions Pty Ltd v Philip Morris Inc (1981) 148 CLR 170 at 177 that appellate courts exercise "particular caution" in reviewing decisions of this nature and, whilst declining to lay down any rigid or exhaustive criteria, it cited with approval the following remarks of Sir Frederick Jordan in In re the Will of FB Gilbert (dec) (1946) 46 SR (NSW) 318 at 323: [T]here is a material difference between an exercise of discretion on a point of practice or procedure and an exercise of discretion which determines substantive rights. In the former class of case, if a tight rein were not kept upon interference with the orders of Judges of first instance, the result would be disastrous to the proper administration of justice. The disposal of cases could be delayed interminably, and costs heaped up indefinitely, if a litigant with a long purse or a litigious disposition could, at will, in effect transfer all exercises of discretion in interlocutory applications from a Judge in Chambers to a Court of Appeal. 59 In any case a discretionary decision of any kind can only be disturbed for error of the kind described in House v The King (1936) 55 CLR 499. 60 Mr Christian did not make out a case that there was any appealable error in relation to the making of the orders in question and no error of law was apparent on the face of the reasons. Nor was it shown that the Federal Circuit Court acted on a wrong principle or that its discretion miscarried in some other respect. Accordingly, there was no warrant for granting leave to file the interlocutory application.

The application for an adjournment 61 Following the Court's refusal to grant leave to file the proposed interlocutory application, Mr Christian applied for an adjournment. The request for an adjournment was put on the basis that he was suffering depression due to the overwhelming requirements of the appeal and that he required, and had a right, to legal representation. He said that he had only recently been in a financial position to obtain that legal representation and sought an adjournment to do so. 62 Mr Christian relied on a letter from his mother dated 5 January 2015. In that letter Ms Christian stated: I would be confident to assist with funding legal representation but would require until 31 May 2015 in order to save a further $15,000. If you are able to adjourn your appeal I would be able to commit to funding representation. 63 The Court was not bound to grant an adjournment in order for Mr Christian to obtain representation as there is no requirement that he be legally assisted in this appeal. His request for an adjournment to obtain legal representation is a matter that the Court was required to consider but it is in the Court's discretion as to whether there should be an adjournment. The letter provided an insufficient basis for the Court to be assured that funding would become available by 31 May 2015, or at any time. The Court was not persuaded that there would be any utility in adjourning the appeal to enable Mr Christian to obtain legal representation. There appeared to be no real likelihood that Mr Christian would, or would be able to, obtain legal representation if the appeal were adjourned. 64 For these reasons, Mr Christian's application for an adjournment was also rejected.

THE APPEAL 65 There are three grounds of appeal. Mr Christian alleges that the primary judge erred: (1) by taking into account the first A-SASHI logo when determining the question of trade mark infringement; (2) by incorrectly applying the proviso in s 120(2) of the Act; and (3) in finding that the name "A-SASHI" (A-SASHI word mark), the first A-SASHI logo and the second A-SASHI logo were each deceptively similar to, and thereby infringed, each of the class 5 MUSASHI word mark, class 41 MUSASHI word mark and MUSASHI device mark.

Was the primary judge entitled to take into account on the question of trade mark infringement the first A-SASHI logo? 66 This question relates to the first issue at trial: whether Mr Christian had used A-SASHI as a trade mark. This ground of appeal challenges the primary judge's findings at [23]-[25], but only to the extent that they concern the first A-SASHI logo. His Honour said at [23]-[25]: 23 The A-SASHI business has used the A-SASHI name and the first and second logos in a number of ways. First, the name and logos have appeared on the A-SASHI website. As at 18 December 2012, 13 March 2013, and 23 October 2013, the A-SASHI website had a page with the words "CONTACT US" which provided two addresses, one in New York, and one in Melbourne. Each of the pages also contained a contact telephone number for each address. 24. A second way in which the A-SASHI business has used the A-SASHI name and logos is on a Facebook page it maintains at www.facebook.com.a.sashivitamins (A-SASHI Facebook page). There is evidence that at various times there was posted on the A-SASHI Facebook page a photograph of an Australian Rugby League team, an AFL team, and the Melbourne Cup. On 6 June 2013 the A-SASHI Facebook page recorded "AUSTRALIA & NEW ZEALAND - Next Day Shipping". 25 A third way in which the A-SASHI business has used the A-SASHI name and logos is by selling products which bear the A-SASHI mark. On 5 June 2013 a solicitor for Nestlé Australia and Nestlé visited the A-SASHI website and placed an online order for one container of A-SASHI "Women's Multi-Vitamins". On 11 June 2013, the solicitor received in the mail the product she ordered. On 21 November 2013, an employee of a private investigation firm placed an order via the A-SASHI website for nine items within the A-SASHI products range. On 22 November 2013, Mr Christian sent an email to the person who ordered the items confirming that "your order has been dispatched today", but noting that one of the items ordered was out of stock. (Footnotes omitted, emphasis added to [25], otherwise original emphasis.) 67 On the basis of these findings and the evidence set out at [26]-[28], the primary judge held (at [72]) that Mr Christian has offered and continues to offer for sale in Australia products under the business name "A-SASHI" and under or by reference to the two A-SASHI logos. His Honour stated that Mr Christian did this by applying to the A-SASHI goods the first and then the second A-SASHI logos. He also held that Mr Christian used the A-SASHI name and the first and second A-SASHI logos to distinguish his goods from others and hence as a trade mark. 68 Mr Christian's evidence was that A-SASHI goods were shipped to Australia on 5 April 2013, although they did not arrive until the first week of May. He submitted that the primary judge wrongly found that he had used both A-SASHI logos after May 2013 when DHL delivered into Australia the first and only shipment of A-SASHI vitamin products for purchase in Australia. We interpolate that thereafter Mr Christian's evidence is that they were manufactured locally. Mr Christian contended that on 20 December 2013 the lawyers acting for Nestlé and Nestlé Australia, Banki Haddock Fiora, had "deliberately introduced incorrect evidence" to the proceedings and that this conduct had caused the primary judge to wrongly find that the two logos were used by the A-SASHI business to sell products in Australia. Mr Christian submitted that on 11 June 2013 Ms Shearer, a partner of Banki Haddock Fiora, received one container of A-SASHI Vitamins Women's Multi-vitamins, which displayed only the second A-SASHI logo on the container's label. Yet, 10 days later she sent Mr Christian a letter of demand which incorporated the first A-SASHI logo. Mr Christian insisted that the evidence before the primary judge was that A-SASHI Vitamins products have only ever been produced with the inclusion of the second A-SASHI logo on the container label. 69 The Nestlé parties concede that his Honour was wrong to include the first A-SASHI logo at [25] of his reasons. The Nestlé parties accept that there was no evidence to support such a finding. 70 All the evidence of importation into, and sale in, Australia related to goods bearing the second A-SASHI logo. Indeed, the case put against Mr Christian concerning importation related only to the second A-SASHI logo and the A-SASHI word mark. The allegations about the first A-SASHI logo were based on the way in which it was displayed on "the early iterations" of the A-SASHI website. 71 Mr Christian deposed that the first A-SASHI logo has never appeared on any A-SASHI goods marked or, for that matter, sold in Australia or any other part of the world. 72 Ultimately, however, nothing turns on the primary judge's error. That is because, regardless of whether the first A-SASHI logo was applied to the A-SASHI goods, there was sufficient evidence to support the finding that Mr Christian used the logo as a trade mark. Mr Christian's argument to the contrary erroneously assumes that trade mark infringement involving the use of the first A-SASHI logo could only have occurred if that logo were applied to an A-SASHI product sold in Australia. 73 To understand why the assumption is erroneous, it is necessary to return to the Act. 74 Section 7(4) of the Act states: 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). 75 Whether a sign is used as a trade mark is to be determined objectively. It does not depend upon what the alleged user believes or intends. As Prof Davison and Mr Horak put it in Shanahan's Australian Law of Trade Marks and Passing Off (5th ed, Thomson Reuters, 2012) at [5.2010]: [I]f a sign does function as a trade mark, indicating the origin of goods or services, registration (or infringement) is not precluded because the sign was actually intended as an advertising slogan or to indicate a particular make or model of the product[.] It is no defence that the alleged infringer did not intend to use the sign as a trade mark. (Footnotes omitted.) 76 While the evidence did not prove that the first A-SASHI logo had been used upon the A-SASHI goods, it did prove that it had been used "in physical or other relation to" them. 77 The expression "in physical or other relation to" is a very broad one. Thus, as the learned authors of Shanahan's point out at [5.1430]: use of a trade mark in advertisements, invoices or other documents relating to goods … can be trade mark use for the purposes of the Act. For use in advertising to be trade mark use, the goods or services must be available to be ordered or traded, for otherwise the use could not be in the course of trade. (Emphasis in original, footnotes omitted.) 78 It was, of course, necessary for Nestlé and Nestlé Australia to prove that the first A-SASHI logo had been used in relation to the goods in Australia but they discharged their burden in this regard. In Ward Group Pty Ltd v Brodie & Stone plc (2005) 143 FCR 479 (Ward Group) at [43] Merkel J explained: [T]he use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, … if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded. See also International Hair Cosmetics Group Pty Ltd v International Hair Cosmetics Ltd (2011) 218 FCR 398 where Logan J held that trade marks on a British website constituted use in Australia by marketing to Australians through a drop-down link to a page containing certain products marketed and sold in Australia. 79 Here, the evidence disclosed the use of the first A-SASHI logo in relation to the A-SASHI goods. There was evidence that the use was specifically intended to be made in Australia, or directed or targeted at, Australians. Furthermore, the website intended to make, and made, specific use of the mark in relation to Ms Shearer in Australia, although she did not actually make any purchases. In other words, there was trade mark use in Australia. For these reasons, the primary judge was entitled to take into account the first A-SASHI logo in determining whether or not Mr Christian had infringed the MUSASHI trade marks. 80 It follows that the contention that the lawyers for Nestlé and Nestlé Australia deliberately misled the Court should be emphatically rejected. 81 Most of the evidence showed that only the second A-SASHI logo was employed on the A-SASHI website, the Facebook page, and the products. Contrary to Mr Christian's position, however, there was evidence to support the primary judge's finding in [23] that both the first and the second A-SASHI logos were used by the A-SASHI business to market and sell its products in Australia. 82 As the primary judge observed, on 18 December 2012 the "contact us" page on the www.a-sashi.com website, which prominently displayed the first A-SASHI logo, advertised "free shipping worldwide on all orders over $100" and provided two points of contact, one in New York, the other in Melbourne. Different telephone numbers were provided for each point of contact. After the Melbourne address there appeared a 1300 number. 83 On 15 April 2013, Ms Shearer stated: I commenced the process for purchasing two packets of A-Sashi "Magnesium + Calcium + Zinc" tablets and two packets of A-Sashi "Women's Multi-Vitamins" tablets on the Website. 84 Ms Shearer took a screen shot of the checkout page on the website. That clearly depicts the first A-SASHI logo being used in connection with the prospective sale of the two products to Ms Shearer in Australia: 85 Had Ms Shearer proceeded with the purchase, presumably she would have received the items some short time after the first week in May 2013 when they arrived in Melbourne. It does not matter that there was in fact no purchase. It is enough that the products were advertised or offered for sale in Australia: Ward Group at [36]. 86 Secondly, there is no evidence of when the first A-SASHI logo was abandoned. The primary judge was required to evaluate the evidence "according to the proof which it was in the power of one side to have produced, and in the power of the other to have contradicted": Blatch v Archer (1774) 1 Cowp 63 at 65; 98 ER 969 at 970 (Lord Mansfield). This Court was not taken to any evidence from Mr Christian to show when the first A-SASHI logo was removed from the website. 87 It follows that we accept the submission that the primary judge's error is of minimal effect. The solution, as the Nestlé parties proposed, is to vary the declaration in order 1 so as to confine the reference to the first A-SASHI logo to infringement by offering for sale in Australia.

Did the primary judge incorrectly apply the proviso to s 120(2)? 88 This is the question raised by the second ground of appeal. 89 We have already referred to s 120(2) but it is convenient at this point to extract the subsection in full: A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or (b) services that are closely related to registered goods; or (c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. (Emphasis added.) 90 The reference to the proviso is to the qualification contained in the last sentence of the subsection. 91 We will come to Mr Christian's submissions shortly, but first it is necessary to turn to the primary judge's findings on the s 120(2) infringement allegation. That allegation, it will be recalled, related only to the use of the A-SASHI products in relation to goods closely related to the services in respect of which the class 41 MUSASHI word mark is registered (class 41 services). Since the primary judge found (at [82]) that Mr Christian had infringed the class 41 MUSASHI word mark within s 120(1) of the Act (by using the A-SASHI name and logos in respect of class 41 services), even if his Honour erred in the respects alleged, the error has no practical consequence. 92 The primary judge's findings concerning the alleged infringement of s 120(2) appear at [80]. They were confined to the class 41 MUSASHI word mark. There, his Honour held that the A-SASHI products are goods which are closely related to the provision of services in respect of which the class 41 MUSASHI word mark was registered because: [t]he A-SASHI products relate to human health and nutrition. And their consumption is intended to be guided by a variety of information about how they relate to health and nutrition, and how they may be used to enhance health and nutrition. (Emphasis added.) 93 It will be recalled that the class 41 MUSASHI word mark was registered in respect of services which included "instruction, education and information services in relation to human health, nutrition … and dietary supplements … " (emphasis added). 94 This conclusion is unremarkable. It was reached after a consideration of the analysis of the expression "closely related goods" by French J (as his Honour then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365. There, at [38], his Honour said that, in most cases, whether goods and services are "closely related" for the purposes of the predecessor to s 120(2) of the Act depends on the function of the service with respect to the goods. Here, one of the functions for which the services are registered is the recommendation of the type of goods (supplements) to be used by the consumer, a service likely to be provided at the same time as the goods are supplied, or combination with the supply. 95 The challenge to this finding only relates, however, to the proviso, the effect of which is that there will have been no infringement for the purposes of s 120(2) if Mr Christian established that actual use of the A-SASHI marks is not likely to deceive or cause confusion. 96 Mr Christian's first argument was that evidence and "material facts" before the court below showed that A-SASHI vitamins and MUSASHI goods are "not substitutable", that they are offered for sale to consumers through different distribution channels according to different pricing models and in different "market segments" and that there was no evidence which showed that it was likely that a person would be deceived or confused. 97 Mr Christian argued that consumers cannot buy MUSASHI products "direct online". Rather, he submitted, they buy them through retail outlets. By contrast, he said, consumers can only buy A-SASHI vitamins direct online, at price points which do not incorporate a retail margin. 98 Mr Christian also argued that "Musashi" did not market products in a tablet format or "any Specific Purpose products" until March 2014 (and then only powders, not tablets), and that they did not market any multi-vitamin products. 99 Furthermore, Mr Christian argued, when a google search is conducted for "musashi" the subject heading is "Trusted Performance Nutrition", not vitamins, and the company is said to "[specialise] in protein powder & amino acids". 100 Mr Christian also drew attention to the places at certain supermarkets where the different products were offered for sale. In Woolworths and Chemist Warehouse, for example, MUSASHI products are displayed in the "Sports Nutrition" aisle. Coles and Priceline sell MUSASHI products as "Sports Supplements", not vitamins. Mr Christian submitted that, since all major Australian retailers clearly distinguished between a "sports/performance nutrition" brand and a "vitamins" brand, "it follows consumers also make the same clear distinction". For emphasis, Mr Christian also referred to the website profile of a solicitor who had acted on the sale of MUSASHI to Post Holdings, Inc. (the holding company for Post Foods Australia Pty Ltd, the fourth respondent) in which the sale was described as a sale of the "Musashi performance nutrition business". 101 The primary judge summarised Mr Christian's submissions on this question at [62]: Mr Christian submits the MUSASHI products and the A-SASHI products are offered for sale to consumers in different market segments and, for that reason, consumers of the A-SASHI products are not likely to be deceived when exposed to the A-SASHI name or logo. He also submits that the A-SASHI products are supplied through a supply channel, for prices that are different from the channels through which and the prices for which the MUSASHI products are supplied and, for those reasons, consumers of the A-SASHI products are not likely to be deceived. 102 The arguments were referred to in greater detail in his Honour's reasons at [94]ff. They were substantially revived on the appeal. 103 His Honour dealt with Mr Christian's submissions at some length ([94]-[103]), concluding at [102]-[103]: 102. In my opinion, this evidence shows, and I find, that Mr Christian and his father regarded, and continue to regard the actual or potential customers of the A-SASHI range of products to be the same, or substantially the same persons who are the actual or potential customers of the MUSASHI range of products. That is made clear by Mr Mark Christian in his email to Mr Guise that I have set out above. By saying that he did not "believe any brand has ownership of the performance nutrition space" Mr Christian's father implicitly considered that A-SASHI was a brand that belonged in the "performance nutrition space". It is also made clear by Mr Christian's posts on the MUSASHI Facebook page. Of particular significance is tagging the A-SASHI Facebook page on the MUSASHI Facebook page. That indicates that Mr Christian must have regarded persons who viewed the MUSASHI Facebook page as persons who were potential purchasers of the A-SASHI products. 103. I find, therefore, that the A-SASHI range of products are supplied, and are intended to be supplied into a market in which at least a substantial proportion of the MUSASHI range of products is and has been supplied. 104 These findings were open on the evidence for the reasons his Honour gave. 105 The email to Mr Guise to which his Honour referred at [102] was an annexure to Mr Christian's affidavit of 12 March 2014 (annexure J4). It appears that MUSASHI had a sponsorship arrangement described as a "partnership" with the Brisbane Roar Football Club with whom Mr Guise was associated. Mark Christian wanted a similar arrangement for A-SASHI. His Honour observed at [99]: [T]here is a chain of emails between Mr Christian's father, Mr Mark Christian, and Mr Guise on behalf of the Brisbane Roar Football Club concerning the possible sponsorship of the club by A-SASHI. On 14 November 2013 Mr Mark Christian stated that he was interested in a "partnership program", and requested information about member numbers, match crowd numbers, television coverage numbers, costs and availability of other items, and costs of digital advertising on Facebook and Twitter. By further email sent, Mr Guise provides the information requested by Mr Mark Christian. Later in the email, Mr Guise stated that the "current brand partners include well known performance brands such as Puma, 2XU and Musashi". Also on the same day, Mr Mark Christian responded by email asking, among other things, whether A-SASHI could "supply free vitamins & dietary supplements for players (viz. any issues with Musashi sponsorship)". Mr Guise responded that he "would seek pre-approval from Musashi but don't foresee any issues here". In his response, Mr Mark Christian said: We would be pleased to supply vitamins to BRFC at the same time Musashi are supplying powders. We don't require an exclusive agreement as we don't believe any brand has ownership of the performance nutrition space … (Footnotes omitted.) 106 The primary judge also referred to the A-SASHI webpage and its Facebook page. His Honour described the theme as "overwhelmingly one of fitness" (at [100]), noting images of fit men and women, including a number showing a man and a woman lifting weights. He noted, too, the evidence of blog posts taken from the A-SASHI website mentioning the "A-SASHI promo bike fleet", the racing driver, Daniel Ricciardo, being signed to Red Bull, and Andy Murray's success at Wimbledon in 2013. He said there were many posts relating to sport on the A-SASHI Facebook page. 107 The observation in [102] to "tagging" of the A-SASHI Facebook page on the MUSASHI Facebook page is a reference to a link embedded within a comment Mr Christian posted on a photograph appearing on the MUSASHI Facebook page. The comment read: "Winner beverages A-Sashi Vitamins!". The words "A-Sashi Vitamins" carried the link. Anyone who clicked on those words would be taken to the A-SASHI Facebook page. His Honour referred to several other posts by Mr Christian on the MUSASHI Facebook page. 108 Mr Christian also argued that the evidence and "material facts" showed that the A-SASHI Vitamins specific purpose dietary supplement product range was made in America using manufacturing capabilities which Nestlé does not possess and which makes the A-SASHI products "distinctly unlike" MUSASHI products. It is difficult to know what to make of this argument. No further detail was given in the written submissions. In oral argument Mr Christian claimed that specific equipment was required to manufacture tablets and that Nestlé did not have the necessary equipment to do that, but he did not take the Court to any evidence to support the claim. 109 Regardless, we fail to see how the need for specific equipment to manufacture tablets has any bearing on the question of infringement. 110 Mr Christian further submitted that the primary judge erred in his application of s 120(2) of the Act by "not taking into proper account" evidence showing that the A-SASHI marks were conceived and developed in a way which was not intended to deceive or cause confusion with the MUSASHI registered marks. 111 The question of intention was also irrelevant to the operation of the proviso. The proviso looks to the likely effect of the use, not to the intention of the user. For this reason Mr Christian's additional submission must be rejected.

Was the primary judge wrong to conclude that the marks were deceptively similar? 112 The final ground of appeal challenges the finding that the A-SASHI marks were deceptively similar to the class 5 MUSASHI word mark, class 41 MUSASHI word mark and the MUSASHI device mark. 113 Mr Christian submitted that there was no evidence before the Court to show that it was likely that a person would be deceived or confused. The submission was not developed in writing in the appeal but was the subject of written submissions below. In those submissions Mr Christian identified "important matters to consider when assessing if consumers could potentially confuse [the MUSASHI marks] with his marks". Those matters were the differences in market, distribution channels and pricing models to which we have already referred. Later in his submissions, Mr Christian also referred to: the evidence that Mr Christian created the A-SASHI Vitamins brand and logo by "readapting & combining elements from the Japanese Asahi beer brand, the Japanese Sakata snack brand and the Australian Mattel toy brand" and had no intention of creating a mark similar to the MUSASHI mark; and visual and aural differences between the marks. 114 We have already dealt with the first point. On the question of difference, Mr Christian said that aurally the two word marks were "nothing alike". The emphasis, he submitted, in each case was on the first syllable. One problem with this submission is that during oral argument before us he put the emphasis in each case on the second syllable. In any case, there is no reason to think that many consumers would not do the same. As Bennett J explained in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 132 FCR 326 at [78]: When the sounds of two words are being compared, it is generally a matter of first impression … It is not a question of meticulous comparison and allowance must be made for imperfect recollection and bad or careless pronunciation. 115 Furthermore, as the primary judge observed (at [90]), "SASHI" is a distinctive feature of both names, aurally as well as visually. 116 Mr Christian also drew attention, however, to the visual differences between the two device marks, submitting that the MUSASHI device mark uses a full red circle device containing two letters "SA" with "MU" separating to the left and "SHI" separating to the right and a black rectangular solid graphic device whereas the "A-SASHI device mark" (referring only to the second A-SASHI logo) uses a red cropped circle device containing the entire A-SASHI word. 117 In reaching the conclusion that the trade marks were deceptively similar, his Honour adopted an orthodox approach of considering the points of similarity and the points of distinction in both the word and the device marks and their impact on a consumer. 118 Dealing first with the word mark, his Honour noted that the names were similar in that they shared "a substantial and significant component" - SASHI - which was "aurally indistinct" (at [86]). Further, his Honour observed that in each case SASHI formed the second and third syllables of the names; the two syllables look the same and they are composed of the same letters. 119 Then his Honour proceeded to examine the differences between the two names. He noted the different letters, the different first syllables, and the differences in appearance and sound. He also noted the use of the hyphen in one but not the other. Against these differences, however, his Honour observed that the dominant sound was formed by the common syllables which appear and are uttered together. 120 Taking all these matters into consideration, his Honour concluded (at [90]) that there was a real tangible danger that a number of consumers, upon being exposed to the A-SASHI word mark, would be confused about whether the A-SASHI products have the same source as the MUSASHI products. He reasoned as follows: That which is common to both names - "SASHI" - is a distinctive feature of both names; and the features that are not common to both names - the "A-" in "A-SASHI" and the "MU" in "MUSASHI" - are relatively minor features, whether considered aurally or visually. That means there is a real, tangible danger that a number of consumers, when exposed to the A-SASHI word mark in the context in which it is currently used, will direct their attention to the distinctive aspect of the A-SASHI mark, "SASHI"; that would cause them to recall the distinctive aspect of the MUSASHI word mark, also "SASHI"; they are unlikely to have their attention specifically drawn to the subsidiary feature of "A-SASHI", namely the "A-" or, if their attention were to be drawn to that feature, they are unlikely to have any memory or any sufficient memory of the MUSASHI mark as would enable them with confidence to remember the different first syllable of MUSASHI, namely "MU". It is likely, therefore, that a number of consumers would either be left with the impression that the A-SASHI word mark is the same as their memory of the MUSASHI marks or, to the extent they may notice the "A-" in A-SASHI, they would be uncertain whether their memory of "MUSASHI" also contained the "A-" in "A-SASHI". The end result would be that a number of consumers would either be deceived or confused about whether the marketing and sale of goods in relation to which the A-SASHI marks are used have the same source as goods in relation to which the MUSASHI marks is used. 121 In relation to the device marks, his Honour noted the common use of the names and the logo and the dominant feature of the name in the logos used by the respective businesses. On the other hand, his Honour also noted substantial differences in the shapes of the respective logos, the additional feature of the circle inside the rectangle in the MUSASHI device mark, the use of three colours in the MUSASHI device mark as opposed to two in the A-SASHI logos and the Roman font in the MUSASHI device mark in contrast to the italics used in the second A-SASHI logo. Despite these differences, his Honour concluded (at [92]) that the marks were deceptively similar because there was a real and tangible danger that a number of consumers, when exposed to the A-SASHI logos, would direct their attention to the SASHI component in the name. 122 The appeal is in the nature of a rehearing. A rehearing is not a new hearing, that is to say it is not "a second go" at the trial. Error must be shown. See Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 (Branir) at [22] (Allsop J, Drummond and Mansfield JJ agreeing). What will constitute error in any given case will depend, not only on the evidence, but also on the nature of the findings or conclusions of the primary judge: Branir at [24]-[25]. Even where no question of credibility arises, the trial judge has advantages not enjoyed by an appeal bench. Moreover, as Allsop J went on to point out in Branir at [25]: [T]he nature of the issue [may be] one such that (though not a discretion) there cannot be said to be truly one correct answer. In such cases the availability of a different view, indeed even perhaps the preference of the appeal court for a different view, may not be alone sufficient … 123 This is such a case. The determination of whether a sign used as a trade mark is deceptively similar to a registered trade mark involves an evaluative exercise upon which reasonable minds might differ. An appellate court can only intervene "if it is first shown that [the] assessment was affected by error of law or fact": Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 at [92]. Questions of judgment, nuance and degree are involved. Moreover, in a case of this kind, absent an error of principle, and unless the appeal court comes to an affirmative conclusion that the decision of the primary judge is wrong, weight should be given to the primary judge's opinion: S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361. 124 Mr Christian claimed that the matters he raises on appeal had not been taken into account below. As we have demonstrated, that submission is without foundation. We are unable to discern any error in the primary judge's approach. Nor are we satisfied that he was wrong. The conclusion on deceptive similarity was clearly open. Overall, this was a careful and well-reasoned judgment. It follows that ground 3 of the notice of appeal should be dismissed.

Conclusion 125 Mr Christian has succeeded only in relation to the first issue. As the error has minimal effect, however, his success is a pyrrhic one. In all the circumstances and bearing in mind the numerous other issues, including the various interlocutory applications, upon which he was unsuccessful, Mr Christian should pay 85% of the costs of the Nestlé parties.

THE CROSS-APPEAL 126 The cross-appeal is concerned with three matters: the refusal to make an order requiring the cancellation of the business name "A-SASHI VITAMINS"; the refusal to make an order requiring the cancellation of the domain name and, instead, permitting Mr Christian to vary the registration of the domain name www.a-sashi.com.au to the extent necessary to prevent its use from resolving to the website to which the domain name www.a-sashi.com resolves; and the form of the injunction. 127 The primary judge's decisions about these matters involved the exercise of a discretion. This means that it could only be set aside if there was an error of the kind described in House v The King. The Nestlé parties must demonstrate, then, that his Honour applied a wrong principle, took into account an extraneous consideration, failed to take into account a material consideration, or mistook the facts. Alternatively, the Nestlé parties must persuade the Court that, upon the facts, the decision is unreasonable or plainly unjust so as to enable the Court to infer that the discretion miscarried, even if the nature of the error is not apparent. 128 The Nestlé parties filed submissions in support of the cross-appeal upon which they expanded in oral argument. We refer to those submissions below. Mr Christian purported to respond by filing submissions of his own. But Mr Christian chose not to address any of the Nestlé parties' arguments in those submissions. Nor did he do so at the hearing when invited to do so. In the result, the resolution of these questions falls to be determined without any assistance Mr Christian might have offered.

Did the primary judge err in failing to require the cancellation the registration of the A-SASHI VITAMINS business name? 129 The order that Nestlé and Nestlé Australia asked the primary judge to make was that Mr Christian take all reasonable steps to cancel the Australian Business Name "A-SASHI VITAMINS" (ABN). 130 The Nestlé parties contended that the reason the primary judge refused to make such an order was that "the continued registration of the business name "[A-SASHI VITAMINS]" does not by itself constitute the use of the name A-SASHI as a trade mark", referring to [41] of his Honour's reasons (with the emphasis added). They argued that as a matter of law it was not necessary to find that the continued registration of the ABN itself constitutes a completed act of infringement (and therefore must itself constitute use as a trade mark) in order for an order for cancellation of the ABN to be available "as an indicium" of injunctive relief. It was enough, they argued, that the relief sought was suitable to prevent and discourage further infringements. In substance, their contention was that the primary judge misdirected himself. His Honour should have asked himself whether continuing registration of the ABN equipped Mr Christian with a tool, or provided temptation for, committing further infringements. Had his Honour done so, he should have found that in all the circumstances the continued registration of the ABN "intrinsically would connote a connection in the course of trade between the registrant of the business name and vitamins" because: (1) the name "A-SASHI VITAMINS" has been used to sell and offer for sale goods that fell within the trade mark registrations; (2) the ABN itself contains a reference to goods (vitamins) prefaced by reference to a badge of origin (A-SASHI ); (3) the reference to "vitamins" in the ABN would be taken as a reference to the goods previously sold by the registrant of the ABN (Mr Christian), under the ABN; and (4) in the light of the evidence no reasonable use of the business name is likely to have been a use that did not infringe the MUSASHI trade marks. 131 A good part of the Nestlé parties' submissions was directed to persuading the Court that it had power to grant an order of this kind. Their argument, which we accept, is that, in an appropriate case, injunctive relief may extend beyond restraining acts that, by themselves, constitute acts of infringement to include relief directed at removing from a proved infringer the instrument or temptation to commit further acts of infringement. 132 An order of this kind was made by Emmett J in H-D Michigan, Inc v MC World Ltd [2003] FCA 925. That was a case brought by the registered owners and authorised users of the Harley Davidson trade marks against an Australian company carrying on business in the Northern Territory (and its controller) under the name "Strictly Harley", selling paraphernalia incorporating the Harley Davidson registered trade marks and displaying in the shop several of those trade marks. 133 Emmett J held that the conduct of the respondents infringed the applicant's trade marks, contravened s 52 of the Trade Practices Act 1974 (Cth) (TPA) and s 42 of the Consumer Affairs and Fair Trading Act 1990 (NT) because it was conduct in trade or commerce which was misleading and deceptive, and also involved passing off their products as products of the applicant. While not commenting on the source of the power, his Honour had no hesitation in making both a restraining order and an order that would see the registered business name removed. Those orders were in the following form: 2 the respondents by themselves, their servants, agents or otherwise within 7 days of the making of the order take all necessary steps to deregister the Northern Territory registered business name BN00910259 'Strictly Harley', or to change that name to a name which does not incorporate any of the Registered Trade Marks listed or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks; 3. the respondents and each of them by themselves, their servants, agents or otherwise, be restrained from registering or using any business or corporate name which incorporates any of the Registered Trade Marks or any mark which is substantially identical with or deceptively similar to any of the Registered Trade Marks, including the name Strictly Harley; 134 In British Telecommunications Plc v One in a Million Ltd (1998) 42 IPR 289 at 302, Aldous LJ, with whom the other members of the court agreed, held that there was jurisdiction in passing off cases, at least, to grant injunctive relief where a defendant is "equipped with or is intending to equip another with an instrument of fraud". His Lordship described an injunction of this nature as "probably mere quia timet action", that is to say, an action to restrain a threatened or apprehended wrong. 135 Whether a name is an instrument of fraud, his Lordship explained, will depend on the circumstances. He went on to say that "[a] name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument". If not, however, he was quick to add, it does not follow that the use of the name would not be an instrument of fraud. That will depend on the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. 136 As the Nestlé parties submitted, there is no reason in principle to confine such a remedy to passing off cases. The order they propose is in the nature of a mandatory injunction. As such, it falls squarely within the terms of s 126 of the Act, which gives a court the power to grant an injunction in an action for infringement of a registered trade mark. Nothing in the text or context would suggest that the section should be read so narrowly as to exclude relief of this kind. 137 In any event, the Court has the power to order that the registration of a business name be cancelled. Section 51 of the Business Names Registration Act 2011 (Cth), to which the primary judge does not appear to have been taken (and to which we were not referred in argument), relevantly states: (1) To avoid doubt, the relief that a court may grant in an action for an infringement of a registered trade mark includes an order that the registration of a business name to an entity must be cancelled. (2) … (3) Nothing in this section limits any orders that a court may make (in an action for an infringement of trade mark or otherwise) in relation to the registration of a business name, or ASIC's obligations under such orders. 138 "Entity" is defined in s 5 of the Act very broadly and includes an individual. Section 51(2) imposes an obligation on ASIC to cancel the registration of the business name of an entity if a copy of the Court's order is lodged with ASIC and ASIC is satisfied, within a reasonable period thereafter, that the order has not been overturned on appeal, there is no stay or pending application for a stay of the order, and no pending appeal. 139 The primary judge did not address the question of power. His Honour apparently accepted that he had the power. The issue here is the decision not to exercise it. 140 We do not accept the Nestlé parties' submission that the primary judge misdirected himself. The submission takes the primary judge's remarks out of context. To understand the context it is necessary to read [41] of his Honour's reasons with [42]: 41 In my opinion, the continued registration of the business name "A-SASHI VTAMINS" does not of itself constitute the use of the name "A-SASHI" as a trade mark. For that reason, I do not propose to grant an order requiring Mr Christian to cancel the business name. 42 The applicants further submit that an order should be made compelling Mr Christian to cancel the business name "A-SASHI VITAMINS" as an aid to injunctive relief. They submit that not to grant such an order would equip Mr Christian with an instrument of fraud, and create a temptation to breach the injunction I have granted against infringement. I disagree. There is already in place an injunction that prevents Mr Christian from using the "A-SASHI" name and logos in connection with the supply of supplements and therapeutic products. That injunction should remove any incentive Mr Christian may otherwise have to use the "A-SASHI" name in Australia in connection with any classes of goods for which the MUSASHI mark is registered. 141 When the primary judge's reasons are read as a whole, it is clear that he did not misdirect himself as alleged. The question of whether the continued registration of the business name constituted the use of the A-SASHI name as a trade mark was undoubtedly relevant, although it was not the end of the inquiry. At [42] his Honour expressly considered whether the registration should be cancelled to prevent and discourage further infringements. He concluded, in effect, that the order was unnecessary in view of the injunction he had granted earlier which prevents Mr Christian from using the A-SASHI name and logos in connection with the supply of supplements and therapeutic products. 142 Nevertheless, we consider that the primary judge did fall into error. 143 First, the Nestlé parties sought the order to remove a source of temptation to breach the injunction. It is, with respect, illogical to conclude that the presence of the injunction removes the temptation to breach it. Yet, this is the effect of his Honour's conclusion in [42]. 144 The primary judge's refusal to make the order is also at odds with his decision to order delivery up of the A-SASHI goods, which operates in aid of the injunction: see Heydon JD, Leeming MJ, Turner JD, Meagher, Gummow and Lehane's Equity Doctrines & Remedies (5th ed, LexisNexis Butterworths Australia, 2015) at [28-045]. If the presence of the injunction was sufficient incentive not to continue to infringe, why make the delivery-up order? 145 Secondly, in considering whether the continued registration of the business name constitutes a use of the name as a trade mark, the Nestlé parties submitted that his Honour did not apply the correct test: whether continued registration of the business name continues to connote a connection in the course of trade between the person using the sign (Mr Christian) and goods falling within the scope of the MUSASHI registration. 146 This submission appears to be founded on the basis that, to come to the conclusion that the continued registration of the business name "A-SASHI VITAMINS" does not by itself constitute a use of the name "A-SASHI" as a trade mark, his Honour could not have asked himself the right question. It will be recalled that to use a sign (which may simply be a name) to indicate a connection in the course of trade between goods or services and the person who applies the sign to those services is to use the sign as a trade mark: see [10] above. 147 We accept the Nestlé parties' submission in this regard. It is true that mere registration of a business name does not necessarily denote use as a trade mark. The name must be used in the course of trade and in relation to goods or services. Here, however, the name "A-SASHI" was used in the course of trade to sell vitamins. 148 Thirdly, the Nestlé parties also submitted that his Honour failed to consider how the business name could be used otherwise than in an infringing way. His Honour did refer to this submission (at [34]) but did not address it. 149 We are therefore satisfied that the primary judge erred in the exercise of his discretion on this question and it now falls to us to exercise the discretion for ourselves. 150 The objects of the Business Names Registration Act include: (1) providing a means of contacting an entity which carries on business under a business name: s 16(1)(a); (2) avoiding confusion by ensuring that business names that are identical or nearly identical are not registered: s 16(3)(a); and (3) ensuring that business names that should be restricted for any other reason (for example, because they might mislead consumers) are not registered: s 16(3)(c). 151 The effect of the primary judge's finding that the A-SASHI name is deceptively similar to MUSASHI, not only aurally, but also visually, is that leaving the ABN on the Business Names Register could mislead consumers. In combination, his Honour's orders bring an end to the Australian operation of the A-SASHI Vitamins business. If the applicant wishes to continue selling vitamins in this country, he will need to do so under a different sign. To that end he will need a new logo and a new business name. As Nestlé parties submitted it is difficult to conceive of a legitimate use of the deceptively similar name "A-SASHI" in relation to vitamins. 152 In all the circumstances, then, there is no useful purpose in retaining the ABN on the Register and its continued registration can only serve as a temptation to Mr Christian to continue to infringe. Having made an order for the delivery up of the goods, the primary judge should have made an order for the cancellation of the registration of the business name. While it was open to him to make the order the Nestlé parties proposed, it would have been preferable to order that the registration of the business name be cancelled. An order in these terms or to this effect would have obviated the need for Mr Christian to do anything. 153 It follows that we will make an order that the registration of the business name "A-SASHI VITAMINS" be cancelled. We will also direct the Nestlé parties to lodge a copy of the Court's order with ASIC.

Did the primary judge err in failing to order the cancellation of the registration of the www.a-sashi.com.au domain name? 154 This issue is a challenge to the order made on 17 October 2014 (order 4) that: By 31 October 2014, [Mr Christian] take all necessary and reasonable steps either to: (a) cancel the registration of the domain name www.a-sashi.com.au; or (b) vary the registration of the domain name www.a-sashi.com.au to the extent necessary to prevent its use from resolving to the website to which the domain name www.a-sashi.com resolves. 155 This order is complemented by the fourth order made on 9 December 2014 that: [Mr Christian] by himself, or by his employees or agents, is restrained from operating or using the website to which the domain name www.a-sashi.com resolves (Website) to promote, supply, sell, or otherwise deal with supplements and therapeutic products under or by reference to the A-SASHI Word Mark or the First A-SASHI Device Mark or the Second A-SASHI Device Mark (as these terms are defined in the orders made on 3 September 2014) (A-SASHI marks) unless: (a) the Website is set to block the sale or supply into Australia of goods or services in relation to which any one of the A-SASHI marks is used; and (b) the Website is set to cause the checkout page on the Website to state that goods in relation to which any one of the A-SASHI marks is used are shipped only within the United States of America or some other place other than Australia; and (c) the Website contains no reference to Australia including any address in Australia. 156 The overall effect of these orders is that Mr Christian may maintain: the registration for the domain name www.a-sashi.com.au (the .au domain name) provided that it does not resolve to the A-SASHI website to which the www.a-sashi.com website resolves (the .com domain name); and the .com domain name and the A-SASHI website, provided that the website is set to block the sale or supply into Australia of goods or services to which any of the A-SASHI marks is used, consumers are informed on the checkout page that the goods will not be shipped to Australia, and the website contains no reference of any kind to Australia. 157 The Nestlé parties' complaint relates to the inclusion in the 17 October order of the option of varying the registration of the .au domain name instead of requiring cancellation of the registration. 158 The primary judge's reasons are to be found in Nestlé No 6 at [24]-[33], principally at [28]-[33] where his Honour said: 28. The ability to register a domain name with a registry operator or sponsor that is uniquely associated with a computer provides an obvious opportunity to a business that wishes to promote or sell its goods or services over the Internet to choose a domain name that distinguishes its goods or services from those of other businesses. And it is this potential that gives rise to the possibility of a person infringing a registered trademark by registering a domain name. For that person may choose as a domain name a name that is substantially identical with, or deceptively similar to, a registered trademark. 29. A person's registering as a domain name a name that is substantially identical with, or deceptively similar to, a registered trade mark, will not constitute an infringement of that trade mark unless the person uses the domain name as a sign to distinguish that person's goods or services from those of another trader. A person will use a domain name for that purpose if the domain name is used as a sign of that person's online sales service. In "the context of online services, the public is likely to understand a domain name consisting of the trade mark (or something very like it) as a sign for the online services identified by the trade mark as available at the webpage to which it carries the internet user". 30. The findings at paragraphs 23 and 24 of my substantive reasons [Nestlé No 2] satisfy me that Mr Christian did intend to, and did use the domain name www.a-sashi.com.au as a sign of his online sales service. But is that, now, a sufficient ground for ordering that Mr Christian cancel the registration of the domain name, given that, as I understand it, Mr Christian has complied with order 3 and has removed from his website all reference to "A-SASHI"? 31. If order 3 were to remain as I had originally framed it, the domain name www.a-sashi.com.au could not be used "as a sign for the online services identified by" the A-SASHI name. That is so because order 3 required Mr Christian to remove from the website to which the domain name www.a-sashi.com.au resolved (A-SASHI website) all references to A-SASHI and, by necessary implication, would prevent him from reinstating on the website any reference to the A-SASHI name or logo. Because, however, the proposed amendment to order 3 will enable Mr Christian to use the A-SASHI name and logo in relation to persons outside Australia who visit the website, and if Mr Christian uses the A-SASHI name and logo on the website, the continued availability of the domain name www.a-sashi.com.au as currently registered would constitute the use in Australia of the name "A-SASHI". 32. The next question is whether, in order to prevent the use of the domain name www.a-sashi.com.au to resolve to the A-SASHI website, it is necessary to require Mr Christian to cancel the registration of the domain name www.a-sashi.com.au. In my opinion, it is not. Although no evidence has been led on the matter, I assume that it would be open to Mr Christian to associate the domain name www.a-sashi.com.au to a website that is different from the A-SASHI website. If that is the case, it should remain open to Mr Christian to keep that domain name. 33. Accordingly, I propose to frame an order which requires Mr Christian either to cancel the domain name www.a-sashi.com.au or to vary the registration in a way that its use cannot resolve to the A-SASHI website. (Emphasis added, footnotes omitted.) 159 We presume that the word "not" is missing from the penultimate line of [31]. 160 The Nestlé parties submitted that in failing to order the cancellation of the .au domain name the primary judge made a number of errors. 161 First, they argued, his Honour erroneously regarded it to be a precondition to making such an order that continuing registration of the .au domain name would, itself, constitute trade mark infringement. 162 In this instance, the complaint is well-founded. His Honour did not consider whether the .au domain name should be cancelled as an aid to the injunction in order to remove an instrument which could be used to infringe. 163 Once again, the Nestlé parties submitted that, subject to the Court being satisfied that the .au domain name represents an instrument of, or temptation to, infringement in relation to goods in respect of which the MUSASHI marks are registered, there is no reason why a different approach should be taken here than in the areas of misleading or deceptive conduct and passing off. They pointed, amongst other things, to the relief granted in Kailash Center for Personal Development Inc v Yoga Magik Pty Limited [2003] FCA 536 (Kailash). 164 Kailash was a case of misleading or deceptive conduct in contravention of s 52 of the TPA and s 42 of the Fair Trading Act 1987 (NSW). Representations were found to have been made on the Yoga Magik website about the relationship between Yoga Magik and a yoga guru, Dr Jonn Mumford, who had authorised Kailish, but not Yoga Magik, to teach his ideas. The Court was satisfied that the representations were misleading or deceptive. 165 Amongst the orders sought in that case were orders that the respondents take all necessary steps to cancel the domain name "www.jonnmumford.com" and a sub-domain name containing the words "jonnmumford" and "mumford" and not re-register any such name. Orders were made to that effect, along with a number of other orders, including the publication of a corrective notice disassociating the respondents from Dr Mumford and a restraining order preventing the respondents from representing that they had the authority or permission or had been empowered by Dr Mumford to teach various courses of the kind referred to on the Yoga Magik website in 2002. Allsop J (as his Honour then was) explained the orders in the following way at [112]. The respondents in the present case emphasised the passages highlighted below in bold: The above is commensurate with, and conducive to remedying the misleading character of what has occurred. Orders 5 and 6 [the orders relating to the domain name and the sub-domain name] are legitimately founded in the fact that Mumford's name and reputation have been appropriated by the respondents in the manner that I have described. For a time (prior to mid 2001) they were entitled to do so. Since then they were and are not. No legitimate purpose can be served by their retention of the names. In circumstances where there has been a misleading of the public it is appropriate to ensure that this misleading not continue by allowing the respondents to retain what now could only be, if used, instruments of deception, the retention or use of which would involve a representation of entitlement and affiliation which would be false: see generally Wadlow The Law of Passing Off (2nd Ed) pp 233 ff; CSR Limited v Resource Capital Australia Pty Ltd [2003] FCA 279 at [38] ff; Glaxo Plc v Glaxowellcome Ltd [1996] FSR 388; Direct Line Group Ltd v Direct Line Estate Agency [1997] FSR 374; and Marks and Spencer v One in a Million (1999) 42 IPR 309. Further, the use of these domain names is not in the realm of hypothesis … Thus, it is within the legitimate scope of s 87 of the [TPA] and s 79 of the [Fair Trading Act] to prevent these sites remaining in the respondents' hands as instruments of deception. 166 Section 87 of the TPA gave the Court much wider powers than those listed in s 126 of the Trade Marks Act. Section 87 of the TPA included, for example, the power to make such order or orders as the Court thinks appropriate against the person who engaged in the conduct or who was involved in the contravention if the Court considers that the order or orders concerned will prevent or reduce the loss or damage suffered or likely to be suffered by the applicant: TPA s 87(1A)(d). A similar power appeared at the time of the judgment in Kailash in s 72(1) of the Fair Trading Act. The reference in the passage cited above to s 79 appears to be a mistake. 167 A power of this kind is not expressly included in the Trade Marks Act. Yet, like the order the Nestlé parties proposed with respect to the business name, it may be characterised either as a quia timet injunction or an aid to the principal injunction. Either way, we are satisfied that it was within the powers of the Federal Circuit Court and is within the powers of this Court to grant it. 168 Moreover, in our opinion it is a power which ought to have been exercised. The primary judge held at [30] of his reasons in Nestlé No 6 that Mr Christian intended to, and did use, the .au domain name "as a sign of his online sales service". Like the word mark and the logos, the domain name includes the A-SASHI name, which the primary judge held by reason of the visual as well as aural similarities, infringed the Trade Marks Act. Mr Christian previously sold infringing goods to Australian customers using the .au domain name. The website to which the .au domain name resolved displayed the infringing logos and word mark. These circumstances are sufficient to demonstrate that the continuing registration of that domain name provides Mr Christian with an instrument to continue to infringe the registered trade marks in Australia. 169 We also accept the submission by the Nestlé parties that his Honour appears to have approached this question on the basis that an order requiring the disassociation of the .au domain name from the A-SASHI website was as effective as an order cancelling the registration of the .au domain name. If so, we would respectfully disagree with his Honour. As the Nestlé parties argued: [T]he entire rationale of ancillary relief is to provide greater certainty of compliance with the ongoing primary injunctive relief by putting it outside the power of the infringer to breach the injunction, so far as it is reasonable to do so. 170 In our view, too, the option in order 4(b) of the 17 October orders is unsatisfactory. It would create practical difficulties for the trade mark owner in policing compliance. 171 The order that the Nestlé parties sought on the cross-appeal was an order varying the order made below so as to delete from order 4 the words "either" and "or" and paragraph (b). The Court has very broad powers on appeal, including the power to make such order as, in all the circumstances, it thinks fit: Federal Court of Australia Act 1976 (Cth), s 28(1)(b). The preferable course is to set aside order 4 in its entirety and make the order that we consider the primary judge should have made.

Was the form of the injunction too narrow? 172 At the trial Nestlé and Nestlé Australia argued for what the primary judge described as "general injunction", which his Honour refused. His reasons for doing so appear at [43]-[44] of Nestlé No 6: 43. The applicants also seek an injunction restraining Mr Christian from using the MUSASHI Registered Marks or any mark or sign that is substantially identical to or deceptively similar to the MUSASHI Registered Marks. The applicants submit that I should grant such an injunction because there is some basis for thinking that sometime in the future Mr Christian will use a mark that is identical or deceptively similar to the MUSASHI Registered Marks. 44. In my opinion, there is no basis in the evidence before me that would lead me to think Mr Christian will use such a mark. The only name and mark Mr Christian used is the A-SASHI name and mark; and I made no finding to the effect that Mr Christian intentionally fashioned the A-SASHI name and logos for them to be deceptively similar to the MUSASHI name and logo. Accordingly, I do not propose to grant the "general injunction" sought by the claimants. 173 These reasons disclosed a number of errors. 174 First, his Honour misstated the submission made by Nestlé and Nestlé Australia. In the result, he applied the wrong test. The question was not whether there is a basis for thinking that Mr Christian will use a mark that is identical or deceptively similar to the MUSASHI registered marks. The correct question, as the Nestlé parties put it in their written submissions, was whether there is a basis for thinking that he may do so (Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780; 282 ALR 43; 92 IPR 197 (Perram J) at [7]). The primary judge failed to ask himself this question. The concern here is with risk. As Finklestein J explained in Louis Vuitton Malletier SA v Knierum [2004] FCA 1584 at [15]: The basis for the grant of an injunction in an intellectual property case is in every respect the same as in any other case. The plaintiff must show that there is a risk that the defendant will engage in infringing conduct in the future. 175 Another way of putting the question is to ask whether there is "a reasonable apprehension" of a future infringement (Microsoft Corporation v Plato Technology Limited [1999] FSR 834, cited with apparent approval by Branson J in Microsoft Corporation v Blanch [2002] FCA 895; AIPC ¶91-813 at [39] and followed by Stone J in Microsoft Corporation v Ezy Lyons Pty Ltd [2004] FCA 1135 at [84]-[87]). 176 For this reason alone the discretion miscarried. 177 The Nestlé parties also submitted that the primary judge failed to consider the need for finality in litigation. They contended that the outcome of a lengthy contested court proceeding could be thwarted by what they called "an immaterial variation in the trade mark" militates strongly in favour of an injunction in wider terms than the injunction the primary judge ordered. They referred to several cases in which such a broader order had been made. 178 To the extent that this submission relies on the principle of finality of litigation, it is misguided. The principle of finality of litigation "reinforces the respect that should be shown to orders, final on their face, addressed to the world at large and upon which conduct may be ordered reliant upon their binding authority": De L v Director-General, New South Wales Department of Community Services (No 2) (1997) 190 CLR 207 at 215 (Toohey, Gaudron, McHugh, Gummow and Kirby JJ). This is not the point the Nestlé parties make. In any event, assuming the primary judge did err in this respect, it is debatable whether this is a House v The King error. In view of our conclusion in [176], however, it is unnecessary to come down on either side of the debate. One error in the exercise of the discretion is sufficient to vitiate the order. It is now necessary for this Court to determine whether the form of order the primary judge made was too narrow and the order the Nestlé parties sought should be made. The order the Nestlé parties sought (the proposed order) is in the following terms: [Mr Christian] be restrained from using in Australia any mark or sign which is substantially identical with or deceptively similar to the MUSASHI Registered Marks. 179 In the draft amended notice of cross-appeal handed up in court at the hearing, the Nestlé parties sought in the alternative an order that Mr Christian be restrained from using in Australia any mark or sign substantially identical to the A-SASHI marks (the alternative order). No objection was taken to the proposed amendment but no formal order was made granting leave to the Nestlé parties to file an amended notice of cross-appeal. In the absence of any objection, there is no reason why leave should not be granted and we will make an order to this effect. 180 The fact that Mr Christian has infringed in the past does not necessarily mean that he will do so in future. But, absent any indication to the contrary, it may provide a basis from which a court can infer that there is a risk of future infringement. Throughout the proceeding in this Court and in the court below, Mr Christian maintained that he was in the right to use the A-SASHI name and logos and, notwithstanding his failure to make any submissions on the merits of the cross-claim, it is abundantly clear that he wishes to continue to use the A-SASHI marks to the fullest extent possible. Moreover, he was belligerent, even defiant, in his attitude throughout the appeal, and he was disrespectful of both his opponents and the Court. The Nestlé parties also point to his conduct in frustrating their attempts to serve him with process, which persuaded the primary judge to order substituted service: Société des Produits Nestlé SA v Christian [2014] FCCA 367. For these reasons, we are satisfied that there is a risk that Mr Christian could again infringe. 181 Nevertheless, we are of the view that the proposed order, which merely repeats the prohibition in the Act, is not appropriate. 182 The Act already prohibits the use of a mark that is substantially identical, or deceptively similar, to a registered trade mark. Litigation ensues because parties do not agree on whether those conditions are met. To that extent, an injunction in the form requested by the Nestlé parties is uncertain and susceptible to subjective determination as to whether the order is complied with. For this reason we are not persuaded that making an order in these terms would ensure finality of litigation. Furthermore, it would add nothing to the existing legal position but would expose Mr Christian to the risk of being in contempt of court. While an injunction in the form of the proposed order can be made, the "practice of granting injunctions in a form which reproduces, with the risk of sanctions for contempt, that which an Act forbids is to be discouraged": Universal Music Australia Pty Ltd v Sharman Networks Ltd (2006) 150 FCR 110 at [40]-[42] (Branson J, Lindgren and Finkelstein JJ agreeing at [53] and [57] respectively). If Mr Christian were again to use a mark that was substantially identical or deceptively similar to the MUSASHI registered marks in contravention of the Act, it would of course be open to the Nestlé parties to seek appropriate orders under s 126 of the Act and, in particular, s 126(2), and indemnity costs of any such proceedings. 183 We take a different view, however, of the alternative order sought. For the reasons given above at [180] we accept that the alternative order is appropriate. It does not import the level of uncertainty or subjectivity inherent in an order directed to deceptive similarity. It is directed to Mr Christian's marks and would extend to immaterial variations to those marks.

Conclusion 184 It follows that the cross-appeal should be allowed with costs. Orders will be made reflecting these reasons. I certify that the preceding one hundred and eighty-four (184) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Bennett, Katzmann and Davies.