CATCHWORDS
PRACTICE AND PROCEDURE - transfer of proceeding - claim by French statutory bodies concerning use of name "La Provence" by small Tasmanian vineyard - no place of business of applicants in Australia - previous retainer of Melbourne solicitors in similar proceedings - respondents resident in Tasmania - 90 per cent of product sold in Tasmania - whether litigation has more connection with Tasmania - comparative inconvenience to parties of grant or refusal of order for transfer - convenience of Court - lack of resident judge in Tasmania
Federal Court of Australia Act 1976 (Cth) s 48
Federal Court Rules O 1, r4, O 10, r1(2)(f), O 30, r6
Andrew and Frewin Pty Ltd v Arrow Ltd (Full Court 6 June 1990, unreported)
Church v Barnett (1871) LR 6 CP 116
National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155
Comite Interprofessionnel des Vins des Cotes de Provence & Anor v Stuart Alexander Bryce and Kay Mary Bryce
(No. VG 452 of 1994)
Judge: Heerey J
Date: 17 March 1995
Place: Melbourne
IN THE FEDERAL COURT OF AUSTRALIA)
)
VICTORIA DISTRICT REGISTRY ) No. VG 452 of 1994
)
GENERAL DIVISION )
B E T W E E N:
COMITE INTERPROFESSIONNEL DES VINS DES COTES DE PROVENCE
First Applicant
- and -
INSTITUT NATIONAL DES APPELLATIONS D'ORIGINE
Second Applicant
- and -
STUART ALEXANDER BRYCE and KAY MARY BRYCE
Respondents
JUDGE: Heerey J
DATE: 17 March 1995
PLACE: Melbourne
MINUTE OF ORDERS
The Court orders:
1. The proceeding be transferred to the Tasmania District Registry.
2. The directions hearing be adjourned to a date to be fixed by the Tasmania District Registrar.
3. Stay of one month on orders 1 and 2.
4. The applicants pay the respondents' costs of the application for transfer forthwith.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules
IN THE FEDERAL COURT OF AUSTRALIA)
)
VICTORIA DISTRICT REGISTRY ) No. VG 452 of 1994
)
GENERAL DIVISION )
B E T W E E N:
COMITE INTERPROFESSIONNEL DES VINS DES COTES DE PROVENCE
First Applicant
- and -
INSTITUT NATIONAL DES APPELLATIONS D'ORIGINE
Second Applicant
- and -
STUART ALEXANDER BRYCE and KAY MARY BRYCE
Respondents
JUDGE: Heerey J
DATE: 17 March 1995
PLACE: Melbourne
REASONS FOR JUDGMENT
The respondents Stuart Alexander Bryce and Kay Mary Bryce seek an order for the transfer of this proceeding to the Tasmania District Registry of the Court.
The Respondents and their Business
The respondents own a vineyard known as "La Provence" situated at Lalla, some 27 kilometres north east of Launceston. It was established in 1956 by Jean Miguet, a fifth generation wine maker from Provence who came to Tasmania to work on a hydro-electric scheme. It is said to be the oldest vineyard in Tasmania. M. Miguet returned to France in 1975. The vineyard had a number of other owners until it was purchased by the respondents in 1980. Mr Bryce has been a Wing Commander in the RAAF. In 1984 he retired and he and his wife moved to Tasmania as permanent residents. In 1986 they commenced living in a house adjoining the vineyard. Initially grapes were sold to the Heemskerk vineyard, but from 1986 wine has been made by Heemskerk for the respondents and marketed by them under a label which bears the words "La Provence" and also the word "Vignoble" (French for vineyard) and a drawing of a Tasmanian tiger.
Following additional plantings to the old site in 1987 the total area under vines is about eight acres. Mr Bryce deposes that the vineyard "is very small and its average annual production is only 350 dozen cases". There was some debate at the hearing as to whether that meant 350 cases, each of 12 bottles, or 350 x 12 cases. Senior Counsel for the applicants asserted from the Bar table that the latter was the true meaning and that in the trade cases were sold in dozen lots. However James Halliday's Australian Wine Guide (1990 edition), included in the applicants' material, and apparently directed at the general public, refers to the vineyard's 1989 production as 400 cases without qualification. Mr and Mrs Bryce were not present at the hearing to clarify the position. This incident, relatively unimportant in itself, is perhaps illustrative of the practical difficulties involved in running litigation at a distant locality.
According to Mr Bryce's affidavit more than 90 per cent of wine produced by the vineyard is sold in Tasmania. Some is sold at the vineyard, but the bulk of the production is sold to Tasmanian restaurants and hotels and four other outlets in the State. The Australian Wine Guide refers to distribution as being "almost exclusively through mailing lists". I do not read that as being necessarily inconsistent with Mr Bryce's affidavit since the Tasmanian outlets referred to by Mr Bryce may well buy through mailing lists. In any event, the applicants did not seek to cross-examine Mr Bryce and to the extent that there is any inconsistency I accept the evidence in his affidavit.
According to Mr Bryce, the only stocks of the wine held on the Mainland are at one restaurant in Melbourne (which has not purchased any stock recently) two restaurants in Sydney (owned by the same proprietor) one restaurant in Canberra and one hotel in Brisbane. The respondents do not sell wine to any wholesale or retail outlet on the Mainland. The respondents have never sold, or offered for sale, wine from the vineyard outside Australia, either directly or through an agent.
The Applicants' Claim
The first applicant Comite Interprofessionnel des Vins des Cotes de Provence (CIVCP), and the second applicant Institut National des Appellations d'Origine (INAO), were incorporated under French legislation in 1956 and 1935 respectively. The CIVCP has statutory powers under French law to represent producers and negociants of wines produced from grapes grown in the Provence District under a particular technique of vinification and sold or supplied under the name "Côtes des Provence" and to bring proceedings to protect the name and reputation of those wines.
The INAO was incorporated to administer and enforce the French Appellation d'Origine Contrôlée (AOC) system - initially established in 1905 - and to bring proceedings to protect names the subject of that system, including "Côtes de Provence" and other AOC names from the Provence District such as "Bandol", "Bellet", "Cassis" and "Coteaux d'Aix-en-Provence".
Although elaborately pleaded in their statement of claim, the essence of the applicants' claim is that the name and mark "Provence" can only lawfully refer to wines from the Provence District of France produced and named in accordance with the AOC system and that the word in Australia is well known in the trade and by the public as meaning exclusively such wines. The statement of claim alleges wrongful use by the respondents of the name "Provence" in connection with their wine. It is alleged that the respondents have produced and sold wine under the name "Provence" which was not genuine Provence wine produced in Provence and does not have the characteristics of Provence wine. It is alleged that the use by the respondents of the name "Provence" in relation to their wines is "false, misleading and deceptive and calculated to and likely to deceive and cause confusion amongst the public in Australia", and likely to mislead and deceive members of the public in Australia into the belief that the respondents' wines are genuine Provence wines produced in Provence, that their business is connected with those of Provence producers and that their wines have the particular characteristics of Provence wines. These acts of therespondents are alleged to have injured the reputation and goodwill of the Provence producers in respect of Provence wines and the Provence name, appellation and mark.
This conduct is alleged to have contravened various provisions of the Fair Trading Act 1990 (Tas) and the Trade Practices Act 1974 (Cth). No trade mark infringement is alleged.
There is a further claim in passing off and allegation of breaches of s 40C(1) and 40C(2) of the Australian Wine and Brandy Corporation Act 1980 (Cth) (as amended). These provisions are contained in Part VIB which was inserted in the principal Act in 1993. The object of Part VIB was stated by s 40A to be to
"... regulate the sale, export and import of wine:
(a) for the purpose of enabling Australia to fulfil its obligations under prescribed wine-trading agreements
(b) ..."
Under s 40C(1) it is an offence "in trade or commerce (to)
knowingly sell wine with a false description and presentation" Section
40C(2) makes a similar provision with respect to the export of wine. Under s40D(2)(a) and (b) a description and
presentation is false if it includes the name of a country or "registered
geographical indication" and the wine did not originate in that country or
the appropriate region or locality. The
statement of claim alleges that "Côtes de Provence" is a registered
geographical indication. No such
allegation is made as to "Provence" or "La Provence". However a description and presentation is not
false merely because it includes the address of the winery at which the wine
was manufactured: s40D(6)(b).
According to their defence, the respondents' bottles bear a second label
including the words "La Provence Vineyards Lalla Tas 7268".
In contrast to the statutory prohibition of various forms of misleading and deceptive conduct under Part V of the Trade Practices Act, and equivalent State and Territory legislation, where the only sanction is a fine, s 40C(1) of the Australian Wine and Brandy Corporation Act provides for a penalty of imprisonment for two years. Injunctive relief may be granted by the Federal Court under s 40L.
The proceeding was commenced in the Victoria District Registry of the Court on 16 December 1994. The respondents' notice of motion seeking transfer was filed on 14 February 1995.
Transfer of Proceedings
The statutory power to make the order sought comes from s 48 of the Federal Court of Australia Act 1976 (Cth) which provides:
The Court or a judge may, at any stage of a proceeding in the Court, direct that the proceeding or a part of the proceeding be conducted or continued at a place specified in the order, subject to such conditions (if any) as the Court or judge imposes.
Consistently with that source of power O 10, r 1(2)(f) of the Federal Court Rules confers power on a judge to
... direct that the proceeding be transferred to a place at which there is a registry other than the proper place. Where the proceeding is so transferred, the registrar at the proper place from which the proceeding is transferred shall transmit all documents in his charge relating to the proceeding to the registrar at the proper place to which the proceeding is transferred.
"Proper place" means, where there has been no transfer, the place at which the proceeding was commenced or, where there has been a transfer, the place to which the proceeding was transferred: O 1, r 4. Order 30, r 6 makes provision for directions as to the place of trial of the proceeding. Reference was made in the respondents' notice of motion to this rule but at the hearing it was accepted that any directions relating to the trial would be premature.
The principles to be applied in applications of this nature have now been authoritatively established by the decision of the Full Court in National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155. The Court said (at 162):
The power conferred by s 48 recognises the national character of this Court. The factors which the Court is entitled to take into account in considering whether one city is more appropriate than another for interlocutory hearings or for the trial itself are numerous. The Court must weigh those factors in each case. Residence of parties and of witnesses, expense to parties, the place where the cause of action arose and the convenience of the Court itself are some of the factors that may be relevant in particular circumstances.
The balance of convenience will generally
be a relevant consideration, but not necessarily determinative of each
case. A party commences a proceeding by
filing an application in a particular registry of the Court. If that party or another party wishes to have
the proceeding conducted or continued in another place he may apply to the Court
for an order under s 48 or O 10, r 1(2)(f) or O 30, r 6 as the case may
be. There is no onus of proof in the
strict sense to be discharged by the party seeking to conduct or continue the
proceedings elsewhere. It should be
noted that the Court may exercise its powers under O 30, r 6 either on the
application of a party or of its own motion.
The Court must, however, be satisfied, after considering all relevant
matters, that there is sound reason to direct that the proceeding be conducted
or continued elsewhere. Its starting
point is that the proceeding has been commenced at a particular place. Why should it be changed? On the one hand, if the party who commenced
the proceeding chose that place capriciously the Court would be justified in
giving no weight to the choice of place.
At the other end of the scale, a proceeding may have continued for some
time at the place of commencement with many steps having
been taken there, for example, filing of pleadings and affidavits, discovery
and inspection. Due weight would be
given by the Court to such matters before directing that the proceeding should
continue at a different place.
The balance of convenience is important, but its weight must vary from case to case. Ultimately the test is: where can the case be conducted or continued most suitably bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the Court. It cannot and should not, in our opinion, be defined more closely or precisely.
The Full Court explicitly rejected a test which would require a party seeking a transfer to establish a "manifest preponderance of convenience". That expression comes from Church v Barnett (1871) LR 6 CP 116 at 117-118 and had been applied by a number of judges at first instance in the Federal Court prior to Sentry. A subsequent Full Court stressed that the decision to change the "proper place" involves "the exercise of a wide and unfettered discretion": Andrew and Frewin Pty Ltd v Arrow Ltd (Full Court 6 June 1990, unreported) at 18.
The Applicants' Case against Transfer
An affidavit was sworn by Mr Stephen Stern, a partner in the applicants' solicitors Freehill Hollingdale & Page. Mr Stern deposes that he and his firm have acted for the INAO for approximately eight years in the course of which he has received
... detailed and lengthy instruction as to the complex legal, historical, technical and factual material surrounding the protection existing initially in France and, more recently, in Australia by a treaty between Australia and the EEC in relation to the protection of controlled appellations of origin and geographical indications of both French and Australian wine.
Mr Stern has visited France on several occasions and attended "detailed briefing and instruction sessions". He has received "very substantial volumes of documents" filling some six cupboards "many of which relate to matters which will need to be established before the Court in these proceedings".
He says that were the applicants required to conduct this matter out of the Tasmania District Registry in Hobart, substantial additional expense would be incurred because no practitioner in Tasmania has been previously involved in the receipt of such instructions or has access to or familiarity with the substantial volume of documents in his possession and neither his firm nor any of the other "national firms" have offices in Hobart. He deposes that were the matter to be transferred at this stage to Hobart either a Tasmanian firm of solicitors would in all likelihood have to be briefed in Australia and in France or alternatively attempts made to run the litigation entirely out of Melbourne, "at considerable additional expense to the applicants and potential inconvenience to the conduct of the litigation".
He says that although the full scope of the witnesses to be called
cannot be determined at this early stage, similar cases have involved
substantial numbers of witnesses including wine producers, importers,
wholesalers, distributors and retailers, wine writers and journalists located
particularly in Victoria, New South Wales, Queensland, South Australia and
Western Australia
with a predominance of witnesses in New South Wales and Victoria. Witnesses at trial would be called from each
of the Australian States and Territories relating to both thereputation of wines from
Provence, France and to the use throughout
Australia of the name "La Provence" and the labels of the
respondents' wines. In the
circumstances, if the trial of the proceedings were conducted in Hobart
substantial additional expense would be incurred by the parties and witnesses
in comparison to a hearing conducted either in Melbourne or partially in
Melbourne and partially elsewhere. Mr
Stern contends that the respondents "will have to travel in any
event". There are, he says, direct
air links from Launceston to both Hobart and Melbourne.
Conclusion
I accept that the applicants had a legitimate reason for commencing this proceeding in Victoria and did not do so capriciously. They had previously retained Melbourne solicitors experienced in handling litigation of this type. Nevertheless the applicants do not otherwise have any particular connection with Melbourne or Victoria as opposed to any other part of Australia. They do not carry on business in Australia and, insofar as corporations may be residents, are not resident in Australia. The residence of the respondents in Tasmania is not in itself determinative in favour of transfer, although insofar as it bears on the question of balance of convenience it is a relevant factor.
The respondents have brought this application at the earliest possible stage. This is not a case where a substantial history of interlocutory steps taken in one registry makes it disruptive and unreasonable to transfer to another.
On the material presently available, this litigation has much more connection with Tasmania than any other State or Territory or the Mainland considered as a whole. The amount of the respondents' product sold outside Tasmania is small when compared with the respondents' own total production and infinitesimal in the context of the Australian wine market as a whole. It is in my respectful opinion a considerable overstatement to assert, as did Senior Counsel for the applicants, that the respondents "have engaged in conduct that has an impact throughout the country".
Looking at that part of the case which concerns the respondents' conduct, I am not satisfied that many witnesses from all over Australia would be called at trial, or at any rate should reasonably need to be called. The identity of the handful of Mainland outlets to which the respondents sell, the quantities sold and the extent of advertising could readily be established, one would think, by agreed documentary material. There is perhaps an implicit recognition of the Tasmanian character of this litigation in the applicants' statement of claim (pars 35 and 36) where breaches are alleged of the Tasmanian Fair Trading Act but none of the identical legislation in other States and Territories.
Conversely it would seem that evidence from the applicants as to the reputation in fact of Provence wines, mistaken belief of persons as to the origin of the respondents' product and like issues would mainly come from persons in Tasmania.
It is appreciated that I am not concerned with fixing a venue for trial, but nevertheless the interlocutory work of pleading, particulars, discovery and the like is not an abstract exercise. Such work requires the acquisition of information in oral and documentary form concerning the same subject matter as the evidence to be called at the trial, which is after all the event towards which all interlocutory steps are directed.
I accept that there may be some disruption to the applicants' preferred choice of legal representation, although this is perhaps more likely to take the form of retaining Tasmanian practitioners and "running the case out of Melbourne" rather than the present solicitors withdrawing completely. Even if such withdrawal did occur, I am not persuaded that there are not practitioners in Tasmania capable of conducting this litigation efficiently on the applicants' behalf. The applicants' claim alleges the common law tort of passing off and breaches of various statutory prohibitions of misleading and deceptive conduct. As such, it is a well-established genre of commercial litigation. (A recent application of the relevant principles is the decision of the Full Court in Apand Pty Ltd v Kettle Chip Co Pty Ltd (1994) ATPR §41-353.)
The knowledge acquired by the applicants' present solicitors of the history of the French AOC system, while useful, would be of less importance to the present case than evidence of the actual reputation of the Provence name in Australia and, much more particularly, Tasmania. The applicants are thus going to be committed to substantial legal work in Tasmania in any event.
As to the respondents, I think it would be a substantial inconvenience for them to undergo the cost and disruption of flying to Melbourne every time a consultation with solicitors or counsel was needed. This certainly does not equate, as a matter of cost or practicality, with a drive of a little over two hours to Hobart where the respondents' present solicitor practises. The cost of a return trip from Launceston to Melbourne for Mr and Mrs Bryce would be
Air fares (economy) $748
Taxis 60
$808
If constraints imposed by their solicitors' availability and airline schedules meant an overnight stay in Melbourne with attendant meals and accommodation there would be little change out of a thousand dollars. By contrast, a return journey to Hobart by car might take a tankfull of petrol costing about $40. Persons paying for their own transportation would not normally fly from Launceston to Hobart rather than drive.
There was reference by Senior Counsel for the applicants to the convenience of the Court itself, which in Sentry was mentioned as a relevant factor. However, the mere fact that there is no resident Federal Court judge in Tasmania (this being the only aspect of the Court's convenience to which Senior Counsel adverted) is not in my opinion a factor which ought to deny transfer when on balance other considerations point to such an order being made. Since this Court is a national Court, residents of Tasmania ought not to be disadvantaged in litigating in this Court merely by reason of their residence in a State without a resident judge. (Note in this regard s 34(1) of the Federal Court of Australia Act which provides that at least one Registry shall be established in each State and in the Australian Capital Territory and the Northern Territory.)
For those reasons I shall direct that the proceeding be transferred to the Tasmania District Registry at Hobart. The directions hearing will be adjourned to a date to be fixed by the Tasmania District Registrar.
At the first directions hearing of this matter I raised the possibility of mediation under O 72. Nothing so far has been done about this. It seems desirable that an attempt be made to resolve this dispute by mediation if possible. To facilitate that purpose I will grant a stay of one month on the order for transfer that I have made. If mediation is agreed upon, a consent order directing mediation can be filed under O 35, r 10.
As to costs, the respondents have succeeded in what is a discrete issue and they should get their costs. Those costs having been incurred, I do not think the respondents should await the outcome of the whole proceeding before being reimbursed. I will order pursuant to O 62 r 3(2) that those costs be paid forthwith.
I certify that this and the preceding 14 (fourteen) pages are a true copy of the reasons for judgment of his Honour Mr Justice Heerey.
Dated: 17 March 1995
Associate
Appearances
Counsel for the applicants D Shavin QC and A Ryan
(respondents in the notice of
motion):
Solicitor for the applicants Freehill Hollingdale & Page
(respondents in the notice of
motion):
Counsel for the respondents: I Martindale
(applicants in the notice of
motion)
Solicitors for the respondents: Clayton Utz
(applicants in the notice of
motion):
Date of hearing: 3 March 1995
