FEDERAL COURT OF AUSTRALIA

First National Group of Independent Real Estate Agents Ltd v Elyod Investments Pty Ltd [2008] FCA 1260

FIRST NATIONAL GROUP OF INDEPENDENT REAL ESTATE AGENTS LTD (ACN 005 942 192) v ELYOD INVESTMENTS PTY LTD (ACN 124 432 471), PATRICK JOSEPH DOYLE and ANDREW BRENDAN DOYLE

VID 175 of 2008

JESSUP J

18 AUGUST 2008

MELBOURNE

THE COURT ORDERS THAT:

1.                  The motion of which notice was given on 18 July 2008 for the transfer of the proceeding to the Queensland District Registry of the Court be refused.

2.                  The respondents pay the applicant’s costs of that Notice of Motion.

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

REASONS FOR JUDGMENT

1                     On 14 August 2008, I refused the respondents’ motion for a transfer of this proceeding to the Queensland District Registry of the court.  These are my reasons for doing so. 

2                     The proceeding was commenced in the Victoria District Registry by Application and Statement of Claim filed on 20 March 2008.  According to the allegations it has made, the applicant carries on a real estate agency business called “First National”.  It relies on a number of registered trade marks using the expression “First National Real Estate”.  It refers to what is described as a “membership agreement” by which it claims to have provided to the first respondent “various branding, marketing and advertising services, including the right to use the First National trade mark, the First National Real Estate trade marks and the First National get up” (each as defined in the Statement of Claim).  It claims to have terminated the membership agreement in February 2008.  It claims that, notwithstanding that termination, the respondents (including, in addition to the first respondent, the second respondent, said to be the sole director, secretary and majority shareholder of the first respondent, and the third respondent, said to be an employee of the first respondent) continued to use the term “First National” in breach of the trade marks to which I have referred, and by way of misleading or deceptive (and similar) conduct in breach of the Trade Practices Act 1974 (Cth) and passing off. 

3                     The applicant is a company with national operations, including in Queensland.  The first respondent is a company whose operations are based in Queensland and, perhaps, in a locality within that State (as noted below, however, there is evidence from which it may provisionally be inferred that the first respondent carries on business also in New South Wales).  The respondents contend that the bulk of the evidence in the case will be concerned with events which have occurred in Queensland, and will be given by witnesses resident there.  The respondents propose to call four witnesses, each of whom is such a resident. 

4                     The applicant proposes to call three witnesses, two of whom are resident in Victoria.  Its head office is in Victoria, and the solicitors and counsel who have been concerned in the preparation of the case are based in Melbourne.  The proceeding is listed for trial on 27 October 2008, and it would, according to the applicant, be prejudicial if it were now to be obliged to engage Brisbane practitioners for the purpose, or to incur the expense of conducting a proceeding in Brisbane through the services of practitioners based in Melbourne.

5                     The power which the respondents asked me to exercise is that given by s 48 of the Federal Court of Australia Act 1976 (Cth), namely:

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.

How that power should be exercised in a particular case was referred to by the Full Court in National Mutual Holdings Pty Ltd v Sentry Corporation (1988) 19 FCR 155, 162, as follows:

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.

6                     In their affidavit in support of the motion, the respondents contend that the proceeding should be transferred to the Queensland District Registry because of “the balance of convenience”.  They refer to the Queensland witnesses who will need to be called, including, it seems, someone who is unconnected to them and will need to be called on subpoena.  They point out that one witness will be the applicant’s own member services manager, who lives in Brisbane.  They contend that the proceeding should have been commenced in Queensland. 

7                     I accept that, if there were a clean slate, the considerations referred to by the respondents should be regarded as pointing to the Queensland District Registry as the most natural place to have commenced this proceeding.  Even so, however, the position was not unambiguously thus.  There is nothing unnatural about an applicant commencing a proceeding in the place of its own administrative operations, being the place of residence of two of its three intended witnesses.  Further, according to the applicant’s allegations, the respondents have themselves given something of an interstate dimension to the controversy upon which the proceeding is centred, in that they procured the registration of the expression “First National Business Brokers” as a business name in New South Wales in December 2007.  I am prepared to infer, therefore, and for present purposes only, that the first respondent’s business operations are not confined to Queensland.  Additionally, it seems that many of the facts which look to be controversial may conveniently be tried anywhere.  There is no particular reason, for example, why the trade mark aspects of the case, and those dealing with the business names registrations, might more conveniently be tried in Brisbane than in Melbourne.

8                     At base, the arguments favouring a transfer to Queensland appear to be centred upon the place of residence of the respondents’ proposed witnesses, together with the convenience of the respondents themselves in giving the instructions from time to time necessary for the effective defence of the applicants claims.  These are important considerations, but, as I have indicated above, I must also place on the scales a consideration of the applicant’s own convenience in conducting the proceeding in the place where its head office is located, and the place where two of its three proposed witnesses reside. 

9                     Additionally to the matters discussed above, there is a consideration which has, in the result, tipped the scales in favour of the applicant with respect to the respondents’ Motion.  As mentioned above, the proceeding was commenced on 20 March 2008.  On 26 March 2008, the respondents’ solicitors, based in Mermaid Beach in Queensland, wrote to the applicant’s solicitors and informed the latter that the respondents would be seeking orders that the proceeding be transferred to Brisbane.  At the first directions hearing before Weinberg J on 16 April 2008, it seems that the respondents’ solicitor said that the matter should be transferred to the Queensland District Registry.  According to an affidavit filed on behalf of the applicant, his Honour responded that, in the light of the fact that the respondents had not made an application, or filed any material, for the transfer of the matter, the matter would continue to be heard in the Victoria District Registry.  No application for transfer was then made, but by correspondence dated 16 May 2008 the respondents’ solicitors informed the applicant that they were instructed to apply to have the proceeding “transferred to Brisbane forthwith”.  The applicant’s solicitors replied on 21 May 2008, stating that they did not agree to have the proceeding transferred to Brisbane, upon the basis that the applicant had always operated its business from Victoria.  By letter dated 13 June 2008, the respondents’ solicitors said that they were “further instructed to file an application as soon as possible for the transfer of the matter to Brisbane”.  By a further letter dated 1 July 2008, the respondents’ solicitors reiterated their instructions to have the matter transferred to Brisbane.

10                  The proceeding came before me for directions on 11 July 2008.  I fixed the proceeding for trial on 27 October 2008, and gave directions for the filing and service of affidavits intended to be relied upon at trial.  I ordered that any application by the respondents for the transfer of the proceeding to the Queensland District Registry be made by Notice of Motion filed and served within seven days.  The respondents caused a Notice of Motion, returnable on 29 August 2008, to be issued out of the court on 18 July 2008.  However, according to the affidavit of the applicant’s solicitor, the sealed copy of that Notice of Motion was not served upon the applicant until 29 July 2008 (when it was, it seems, served by facsimile). 

11                  Although the respondents have, from the outset, made it clear to the applicant that they intend to press for the proceeding to be transferred to the Queensland District Registry, it was equally clear to them that the applicant would resist any such transfer.  It was not until towards the end of July 2008 that the respondents served the applicant with their Notice of Motion, and with the affidavits which articulated their grounds in support.  It is not, in my view, sufficient for the respondents to say that the applicant knew that such a Notice of Motion might be expected.  It was common ground between the parties that the hearing of the proceeding should be expedited, and the applicant was inevitably under an obligation to undertake the detailed preparation of its case.  It was, I consider, incumbent upon the respondents to take all necessary steps to have the matter of venue determined by the court at an early stage.  They appear to have had a firm view about the matter from the outset, and yet it was about four months before they took the step required to have the question resolved by the court.

12                  I consider that, given the time which the respondents allowed to pass before serving their Notice of Motion, it would be prejudicial for the applicant if it were now to be determined that the proceeding should be henceforth conducted in Brisbane.  In a proceeding of this kind, in which the lawfulness of the use of business representations is in issue, expedition is clearly of the utmost importance.  Expedition implies that early and conscientious attention be given to the preparation of the case for trial, both by the parties and by their legal representatives.  It would not, in my view, have served the interests of justice to require the applicant, in effect, to sit on its hands until the question of venue were determined, in circumstances where the respondents had threatened, but had not yet made, an application for transfer.

13                  For the foregoing reasons, the proceeding should not be transferred to the Queensland District Registry of the Court.

Associate:

Dated:         18 August 2008