FEDERAL COURT OF AUSTRALIA

Unilever Aust Ltd v George Karounos & Anor [2001] FCA 238

UNILEVER AUSTRALIA LIMITED (ACN 004 050 828) v

GEORGE KAROUNOS AND ANOTHER

NG 732 of 1998

HILL J

8 MARCH 2001

SYDNEY

THE COURT ORDERS THAT:

1.         The application for an adjournment be refused.

2.         The application for leave to appeal against the order that Mr Karounos pay into court within 8 days the sum of $8,000 as security for the costs thrown away by the adjournment on 21 February 2001 be refused.

3.         The application for leave to appeal against the decision that there was a case to answer be refused.

4.         The applicant on the motion, Mr Karounos, pay the costs of Unilever Australia Limited of each application for leave to appeal.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     The present application by Unilever Australia Limited (“Unilever”) was last before me on 20 and 21 February 2001.  At that time, and I have to say for the second time, the applicant went into evidence.  At the request of Mr Karounos, the second respondent to the proceedings, the application was adjourned on 20 February 2001 until the next morning at which time Mr Karounos, not for the first time, sought an adjournment of the proceedings as well as submitting that there was no case for him to answer.  I gave him an adjournment, although ordering that he pay an amount of $8,000 into court as security for the costs of Unilever thrown away by yet another adjournment.  I also rejected the submission which he made that there was no case to answer.  Although requested to by Unilever, I did not as such seek an undertaking from Mr Karounos that he not apply for any further adjournment, but I indicated to him in quite explicit terms that an adjournment would not be granted on the next occasion, except in the most exceptional circumstances.  The ex tempore judgment I gave at the time, as revised, has been distributed to the parties.

2                     When the matter was called this morning, Mr Karounos was represented by Mr Royle of Donaldson Walsh.  Mr Royle indicated that he had accepted instructions to act for Mr Karounos late on the afternoon of 5 March, twelve days after the matter had last been adjourned and three days before this morning’s resumed hearing.  Mr Royle submits that he has insufficient information to enable him properly to advise Mr Karounos or proceed to conduct his case.  He said from the bar table that he wished to instruct counsel.  He says in that submission that the party which was to advance to Mr Karounos the amount of $30,000 had not done so, but had merely advanced the amount of $10,000.

3                     The order that I made on the last occasion that an amount be paid into court as security has not been complied with by Mr Karounos.  It is said that the reason for this is that additional funds have been sought but have not been forthcoming.  It is submitted that it is unjust and unfair to require this payment to be made, particularly as there are other outstanding cost issues to be argued.  In addition to applying for an adjournment, Mr Royle on behalf of his client has applied to me for leave to appeal, both against the order for security for costs and against the ruling that Mr Karounos did have a case to answer.

4                     I do not propose to grant yet another adjournment to Mr Karounos.  There comes a point of time when matters must proceed for trial.  Mr Karounos has been aware for some considerable time that the case must proceed for trial.  It is true, as previous judgments record, that Mr Karounos has not been at all times a party to the proceedings, but it is also true that he has been intimately involved with the company now known as Revelinu Pty Limited which initially was the respondent in the proceedings and which indeed, either in respect of the application itself or the cross-claim, filed considerable amounts of evidence, which have not been read.

5                     The question of security for costs thrown away is a matter of practice and procedure.  It is for an applicant for leave to appeal to show that there is some error of principle which has been committed in making the order as the price of an adjournment.  With all respect to Mr Royle, nothing in his submission suggests any error of principle, other than a general statement that in the circumstances of the case it was unjust to require the payment of the $8,000 particularly when there were outstanding cost matters.  There being no error of principle that I can see, nor has any submission suggested any such error, I would refuse leave to appeal at this stage against that order.  It then becomes unnecessary to consider other matters such as prejudice which could be relevant to the issue of the grant of leave to appeal: Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397.

6                     The second matter in respect of which leave to appeal is sought is the issue of no case to answer.  It is accepted by Mr Royle, on behalf of Mr Karounos, that the onus of proof of using the mark lies with him.  It is said, however, that Unilever bears an evidential burden of raising non-use as an issue.  The ground that is said to be relevant to leave to appeal is that there was no evidence, or not sufficient evidence, adduced by Unilever to discharge that evidential burden. 

7                     First, it must be said that the issue of use was clearly flagged, not merely in the pleadings but in written submissions that senior counsel for Unilever had handed to Mr Karounos before the no case to answer submission was made by him.  It is not as if Mr Karounos was unaware of the fact that this was an issue, although, of course, I accept he is not a lawyer and would not necessarily be familiar with provisions in the Trade Marks Act 1995 (Cth) which cast the onus of proof upon him.

8                     Whether or not it be right to say that there is an evidential burden upon Unilever is far from clear to me but, if it were, the evidence of Unilever actually showed nothing at all in the way of use by the respondents of either mark, notwithstanding that included in that evidence was advertising material from Adelaide which one assumes would have indicated some form, had there been such use, of use.  In any event, in considering whether leave should be granted, a consequence of which would be the splitting of the case should the matter go to a full court, it is again relevant to see whether any real matter of principle is raised at this stage by the submission.  I am in the unenviable position of having to decide the question of leave to appeal against an interlocutory judgment of my own but I do not see any matter of principle that has been put by Mr Royle that would found an application for leave, and accordingly I would refuse the application.

9                     I order that the applicant on the motion, that is to say Mr Karounos, pay the costs of Unilever Australia Limited of the application for leave to appeal in respect of both the security for costs and the no case to answer issue.

Associate:

Dated:                          20 March 2001