FEDERAL COURT OF AUSTRALIA

Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd [2003] FCA 1048

WELLNESS PTY LTD v PRO BIO LIVING WATERS PTY LTD

N 152 OF 2003

BENNETT J

14 AUGUST 2003

SYDNEY

THE COURT ORDERS THAT:

1.                  Leave be granted to the applicant to join as respondents in the proceedings Rodney Robert Robinson and Pro-Bio Tech Waters Pty Limited.

2.                  Leave be granted to the applicant to file an amended application and amended statement of claim in terms of the documents annexed to the affidavit of Peter Whitehead sworn on 4 august 2003 and filed in the proceedings.

3.                  The costs of this motion be reserved.

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

EX TEMPORE REASONS FOR JUDGMENT

1                     By notice of motion filed on 6 August 2003, the applicant, Wellness Pty Limited, seeks to join as respondents in the proceedings a Mr Rodney Robert Robinson and a company, Pro-Bio Tech Waters Pty Limited (‘proposed corporate respondent’).  Ms Champion who appears for the applicant relies upon that affidavits of Peter Whitehead sworn 4 August 2003, Peter Conlon sworn 1 August and Kenneth James Taylor sworn 4 August 2003.  The annexures to Mr Whitehead's affidavit include a proposed amended application and amended statement of claim showing the amendments which would be made to make out the causes of action against the proposed respondents.

2                     Broadly speaking, the case as presently drafted against the existing respondent, Pro Bio Living Waters Pty Limited, alleges breaches of the Trade Marks Act 1995 (Cth) and makes allegations of passing off and breaches of the Trade Practices Act 1974 (Cth) (‘Trade Practices Act’) in particular sections 52 and 53(c) and (d).  Again, broadly speaking, the allegations revolve around the use of the words ‘living waters’ and, in particular, in the context of Pro Bio Living Waters Pty Ltd.  The words ‘living waters’ are part of the name of the existing respondent but are not part of the name of the proposed corporate respondent. 

3                     The evidence establishes that Mr Robinson is a director of Pro Bio Living Waters Pty Limited and also of Pro-Bio Tech Waters Pty Limited.  The evidence also establishes that both companies presently operate out of the same premises in Gaffney Street, Coburg, Victoria.  From the evidence that is relied upon, it is clear that the expression ‘pro bio living waters’ appears on bottles that also bear the name of the existing respondent, however a price list including products that bear the name ‘living waters’ bears the name of the proposed corporate respondent, Pro-Bio Tech Waters Pty Limited.

4                     There is evidence of a conversation with Mr Robinson where he was asked if he has a product called ‘living water’ and in his response Mr Robinson does not dissociate himself from a business involving a product with that name.  The conversation is not clear, I should say, about whether he was talking about ‘living water’ or ‘living waters’, in that the question referred to ‘living water’ and the response referred to both.  It would appear however that he did associate himself with a product called ‘living water’.  In fact, he said:

            ‘Yeah, you can use the business name Living Waters, anyone can use it, we've just changed ours.  If you use it then someone might come along and say that you can't you know what I mean?  Are you with the Wellness group?’

5                     The proposed amended statement of claim seeks to add claims as against Mr Robinson of acting in a common design with the respondent and proposed corporate respondent and a claim under section 75B of the Trade Practices Act.

application for adjournment

6                     Before looking at the question of whether it is appropriate to join the proposed respondents, I will deal with a document filed with the Court this morning, headed ‘Application for Adjournment’.  It seems to be in the form of a notice and, under a heading, ‘The Grounds for this Application is [sic] as follows’, a series of grounds are set out.  There is no affidavit filed in support of this application.

7                     The ‘Application for Adjournment’ was filed by the solicitors for the existing respondent and also purports to be filed on behalf of Mr Robinson.  It confirms that the notice of motion was served on those solicitors on Friday, 8 August 2003 and also confirms service at the Gaffney St, Coburg address.  The document states that the existing respondent and Mr Robinson do not consent to the orders sought in the notice of motion and that Mr Robinson objects to the fact that another former director of the respondent is not proposed to be joined.  An adjournment is sought. 

8                     Ms Champion points out that, the combined effect of Order 6 rule 4(2) and Order 6 rule 2 is that it is not necessary to serve a notice of a motion seeking to join parties upon any person who has not be served with the application.  In any event, I note that the history of this matter is a failure on the part of the respondent to appear or, indeed, to answer correspondence directed to him by the applicant's solicitors.  I adjourned the matter shortly this morning to enable attempts to be made to contact the solicitors for the respondent and Mr Robinson.  After numerous attempts, no contact was made and, in the circumstances, I decided to proceed with the hearing of the motion.

notice of motion

9                     Ms Champion seeks orders that Mr Robinson and Pro-Bio Tech Waters Pty Limited be joined and relies upon Order 6 rule 2(a) and, if necessary, rule 2(b).

10                  In order to come within Order 6 rule 2(a), it is necessary to establish that common questions of law and fact would arise in the proceedings and also that the rights to relief are in respect of or arise out of the same transaction or series of transactions.  The concept of what constitutes a transaction or series of transactions in those circumstances is not necessarily a limited concept, as was said by Vaughan Williams LJ in Stroud v Lawson [1898] 2 QB 44 at 54-55.

            ‘I do not think that the rule means that the whole of the transaction must be involved in each of the causes of action joined.  I think that, if there was a transaction or series of transactions in respect of which one plaintiff was interested up to a certain point, and other plaintiffs were interested, not only up to that point, but in respect of the entire transaction or series of transactions from beginning to end, under this rule they might joint their separate causes of action in one action, because there would be one transaction or series of transactions in respect of which the various plaintiffs all claimed a right to relief.  Their remedies or damages might be different, but they would be claiming relief in respect of the same transaction or series of transactions.’

11                  This passage was cited with approval by Mason J, as he then was, in Payne v Young (1981) 145 CLR 609 at 618.  Ms Champion submits that, if for any reason she does not fall within rule 2(a), then this is an appropriate case in which the Court should exercise the discretion under rule 2(b).  She relies on Bishop v Bridgelands Securities Limited (1990) 25 FCR 311 (‘Bishop’), in particular what was said by Wilcox J at 314-315 as to the basic principles that should apply in applications under this rule where the Court is not satisfied that the same transaction of series of transactions are involved.

12                  I am satisfied that Order 6 rule 2(a) does apply and that, in dealing with products involving the use of the words ‘living waters’, both the existing respondent and the proposed corporate respondent are involved.  If the use of ‘living waters’ is seen to be the transaction or series of transactions, it is clear from the evidence I have referred to that the claims to relief sought against the parties arise out of the same transaction or series of transactions.  It is also appropriate, in my opinion, to join Mr Robinson personally as, at the very least, it is said that he aided and abetted the same transaction or series of transactions involving the respondent and the proposed corporate respondent.

13                  Even if that were not the case, I am satisfied that it will be appropriate to exercise the discretion in Order 6 rule 2(b), as the alternative would be to commence two separate proceedings and seek to have them consolidated (see Sheppard J in Trade Practices Commission v Westco Motors (Distributors) Pty Ltd (1981) 58 FLR 384 (‘Westco’).  Following the reasoning of Sheppard J in Westco and Wilcox J in Bishop, it is clear to me that it would be conducive to a just resolution of the disputes between the parties and would certainly limit costs and delay if all matters arising were brought in a single proceeding as against the respondent, Pro-Bio Tech Waters Pty Ltd and Mr Robinson.

14                  I do note that it would seem from the Bishop case that I need to be affirmatively satisfied that joinder is unlikely to result in unfairness to any party.  Certainly, in circumstances where the respondent and the proposed respondents do not appear, there is no evidence as to any unfairness, but that is not sufficient.  It does, however, seem to me from the evidence that has been filed that, in circumstances where a single series of products is involved and the parties are operating out of the same premises and in circumstances where at least the existing respondent and Mr Robinson are represented by the same solicitor, it is unlikely that unfairness would result to the respondent or the proposed respondents in this case.

orders

15                  Accordingly, I make the following orders: 

1.         Leave be granted to the applicant to join as respondents in the proceedings Rodney Robert Robinson and Pro-Bio Tech Waters Pty Limited.

2.         Leave be granted to the applicant to file an amended application and amended statement of claim in terms of the documents annexed to the affidavit of Peter Whitehead sworn on 4 august 2003 and filed in the proceedings.

3.         The costs of this motion be reserved.

Associate:

Dated:              2 October 2003