FEDERAL COURT OF AUSTRALIA

Starr Partners Pty Ltd v Dev Prem Pty Ltd (No 1) [2005] FCA 1743

PRACTICE & PROCEDURE – transfer of proceedings – where trademark infringement and related actions filed in New South Wales district registry – where impugned conduct occurred in Queensland – where parties’ businesses carried on in New South Wales and Queensland respectively – where parties engaged legal representatives in their respective states – whether transfer to Queensland district registry appropriate

Federal Court of Australia Act 1976 (Cth) s 48

Federal Court Rules O 10 r 1, O 30 r 6(2)(f)

Arrowcrest Group Limited v DJM Racing Wheels Limited [2003] FCA 564, referred to

Esco Corp v Wundowie Foundry Pty Ltd [2003] FCA 587, referred to

National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155, applied

STARR PARTNERS PTY LIMITED v DEV PREM PTY LIMITED, LALIT KUMAR DEVPAL BHALLA and ANIL PRAKASH CHANDRA

NSD 422 OF 2005

EDMONDS J

5 DECEMBER 2005

SYDNEY

THE COURT ORDERS THAT:

1.                  The motion be dismissed.

2.                  The respondents pay the applicant’s costs.

3.                  The matter be listed for further directions on Tuesday, 6 December 2005 at 9.30 am.

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

REASONS FOR JUDGMENT

(MOTION FOR TRANSFER OF PROCEEDINGS)

Edmonds J:

Introduction

1                     By notice of motion dated 12 October 2005 and filed 27 October 2005 the respondents, Dev Prem Pty Limited, Lalit Kumar Devpal Bhalla and Anil Prakash Chandra, seek orders:

(1)               That the application be transferred to the Brisbane Registry of the Court; and

(2)               further, or alternatively, that the trial of this matter be heard in the Brisbane Registry of the Court.

2                     The first order is sought pursuant to s 48 of the Federal Court of Australia Act 1976 (Cth) – see too O 10 r 1(2) of the Federal Court Rules – and the second pursuant to O 30 r 6(2) of those Rules.

3                     As to the alternative order, the observations of Mansfield J in Arrowcrest Group Limited v DJM Racing Wheels Limited [2003] FCA 564 at [4] are relevant:

‘It must also be borne in mind that the issue as to the proper place of the proceedings is related to, but is not the same as, the issue as to where the trial or part of the trial should be conducted.  The proper place of the proceedings is where the proceedings ought properly to be conducted, including all pre-trial and interlocutory issues.  It is as a consequence of the proper place of the proceedings being in a particular registry that, generally speaking, the trial will take place there.  Order 30 r 6(2) provides however that the Court may direct that the trial, or part of a trial, of a proceeding be held at a place other than the proper place.  It is not uncommon that the Court, in the exercise of its power and having regard to the convenience of the parties or witnesses, and the most efficient and economic means of conducting a trial, directs that part of a trial, or the evidence of a particular witness or witnesses, be heard in another place.  There is presently no application under O 30 r 6(2), but ruling on the present motion does not preclude the DTM respondents from making such an application to the trial judge if it is appropriate prior to the hearing.’

4                     Here, the motion contemplates an order pursuant to O 36 r 10(2) in the alternative, but such an order was not pressed in written or oral submissions on behalf of the respondents.   Not surprisingly then, it was not addressed on behalf of the applicant.  For these reasons, I propose to rule on the present motion as one made solely under s 48 of the Federal Court of Australia Act (and O 10 r 1(2)(f)) of the Federal Court Rules) and not, in the alternative, under O 36 r 10(2) of the Federal Court Rules.  In so ruling, the respondents will not be precluded from making an application under O 36 r 10(2) if it is appropriate prior to the hearing.

Background

5                     The substantive proceedings were commenced in the New South Wales District Registry on 18 March 2005.  The statement of claim discloses three broad areas of claim:  trade mark infringement, misleading or deceptive conduct (s 52 of the Trade Practices Act 1974 (Cth)) and passing off.  The applicant seeks, inter alia, an injunction and either damages or an account of profits.

6                     The applicant company, Starr Partners Pty Limited, conducts a real estate franchising business in New South Wales comprising some 36 franchises in the business of marketing and listing residential property, commercial property, conducting strata management and the maintenance of large property management portfolios.  It is the registered owner of certain trade marks, more recent versions of which employ the words ‘Starr Partners’ and a stylised star motif.  The first respondent owns and operates a real estate business from three offices in the northern suburbs of Brisbane.  It carries on business under the name ‘Star Realty’ and has a mark which comprises the same name with a stylised star motif which is not a registered trade mark.

7                     The conduct complained of took place totally in Queensland save perhaps for the availability of Queensland print media to, and internet access by, prospective purchasers of Queensland real estate in other States.  It has not been suggested that the conduct complained of involved the sale of New South Wales real estate.

Relevant Principles

8                     The principles to be applied in exercising the discretion conferred by s 48 are not in dispute.  The leading authority is the decision of the Full Court in National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155.  At 162, the Court said:

‘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 weight 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.’

9                     Without exception, these principles have been applied in subsequent cases of which several were referred to by both parties.

10                  In the present case it is not suggested that the applicant’s choice of the New South Wales Registry was capricious or irrational.  The applicant is based in Sydney and its 36 franchises are located in New South Wales.

11                  This being the case, it seems to me that the principles referred to above require me to be satisfied that there is sound reason to direct that the proceedings be conducted or continued elsewhere than in the New South Wales Registry.  In other words, a sound reason why the venue should be changed.

12                  The following reasons were put forward on behalf of the respondents for a change of venue:

(1)               The alleged offending conduct has occurred in Queensland although it was conceded that this was not of critical significance.  Indeed, in Esco Corp v Wundowie Foundry Pty Ltd [2003] FCA 587 Branson J expressed the view at [3]:

‘However … the place of an alleged infringement of an intellectual property right may not, of itself, be a compelling, or even a powerful, factor so far as the identity of the most suitable Registry for the proceeding is concerned.  The place where the alleged infringement took place might, in a particular case, be almost fortuitous.  Much will depend on the particular circumstances of the case.  In this case I conclude that the place of the alleged infringement is only one factor to be evaluated, together with others, in determining the most suitable place for the proceeding to be conducted.’

(2)               The fact that some seven affidavits have been filed on behalf of the respondents by persons all resident in Queensland.  However, it is pointed out by the applicant that six of these affidavits are of one page each and that none of these witnesses will be cross-examined.  The only witness to date who the applicant proposes to cross-examine is the third respondent. 

(3)               The fact that one of two witnesses upon whom the applicant proposes to rely resides in Queensland.  In my view, as a consideration going to balance of convenience, this is equivocal.

(4)               The respective financial strengths of the applicant and the respondents.  However, the respondents did not seek to support their alleged financial inferiority by reference to any evidence.

(5)               The anticipated cost of flying the respondents’ witnesses to Sydney to give evidence (together with accommodation).  In response, the applicant says that the cost will involve one witness as none of the others will be required for cross-examination.

(6)               The cost of flying Brisbane solicitors and counsel to New South Wales together with accommodation.  The applicant’s response is that it would be put to the same cost if the proceedings are transferred to Queensland.  On the other hand, it was conceded during the course of the hearing that the applicant’s solicitors do have a presence in Brisbane and, because of that, the countervailing cost may not be as great.  I do not think it is any answer to say that the respondents could have avoided such costs by instructing Sydney resident legal representatives at the outset.  The respondents are all located in Queensland, do not carry on any business or have any presence in New South Wales and it is only appropriate that they instruct Brisbane solicitors and counsel.

(7)               The fact that the vast majority of any trading is undertaken by the respondents in the Brisbane/south-east Queensland area.  As it is pointed out by the applicant, equally its trading and its franchisees are in New South Wales.

(8)               The absence of any evidence of prejudice to the applicant if the matter were heard in Brisbane.  As the applicant points out the prejudice is self-evident.  The applicant will be put to the additional costs of having its current legal representatives travel to Brisbane or alternatively retaining and briefing Brisbane based legal representatives. 

(9)               The fact that this is only the second appearance before the Court (the other being a directions hearing), the matter is not on any particular judge’s docket for trial or, if it is, it is not suggested a particular judge has such a detailed knowledge of the matter that it should not be transferred.  As noted earlier, there have been four directions hearings in Sydney, however, having regard to the length of time these proceedings have been on foot and the nature of the hearings to date, while none of this mitigates against a change of venue, I do not understand how it provides any sound reason for a change of venue.

(10)           The material filed to date is not so substantive nor is the action so particularly complex that it need remain in New South Wales.  In response the applicant submits that it is proceeding on the basis that all affidavit evidence has been filed and only the third respondent will be cross-examined.  It is for that reason, the applicant submits, that the trial is likely to conclude within two days.  It follows, in its submission, that the cost involved in the legal representatives of the respondents and one witness travelling to Sydney will not be substantial.  It further submits that despite the acknowledgement of lack of complexity, the respondents’ submissions otherwise appear to be premised on the trial being far more complex and lengthy than it will be.  On the other hand, if that is the case, then that premise is sourced in the applicant casting its statement of claim as wide as it has, particularly if, as it’s counsel submitted, the applicant is proceeding on the basis that all affidavit evidence upon which it relies has been filed.

13                  In all the circumstances, I have come to the view that there is no sound reason to direct that the proceedings be moved to the Queensland Registry.  The motion must be dismissed with costs.

Associate:

Dated:              5 December 2005