FEDERAL COURT OF AUSTRALIA

Sebel Furniture Limited v Acoustic & Felts Pty Limited (No 2) [2009] FCA 291

PRACTICE AND PROCEDURE – application that judge who heard and determined interlocutory application not sit on the final hearing on grounds of apprehended bias – subject matter of interlocutory hearing no longer the same as the subject matter of the proposed final hearing – application refused  

Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 related

Australian National Industries Ltd v Spedley Securities Ltd (in liq) (1992) 26 NSWLR 411, (1992) 9 ACSR 309 applied

Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2009] FCAFC 8 applied 

Johnson v Johnson (2000) 201 CLR 488 applied

Livesey v New South Wales Bar Association (1983) 151 CLR 288 applied

McGovern v Ku-ring-Gai Council (2008) 251 ALR 558, (2008) 161 LGERA 170 applied 

Raybos Australia Pty Ltd v Tectran Corporation Pty Ltd (No 4) (1986) 6 NSWLR 674 applied

Re JRL; Ex parte CJL (1986) 161 CLR 342 applied  

Re Watson; Ex parte Armstrong (1976) 136 CLR 248 applied 

SEBEL FURNITURE LIMITED (ACN 000 378 996) v ACOUSTIC & FELTS PTY LIMITED (ACN 001 636 004)

NSD 1876 of 2008

FOSTER J

1 APRIL 2009

SYDNEY 

THE COURT ORDERS THAT:

1.                  The applicant’s application that Foster J not sit as the judge hearing and determining the final hearing of these proceedings be refused.

2.                  The costs of that application be the respondent’s costs in the proceedings. 

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

REASONS FOR JUDGMENT

Introduction

1                                             On 12 January 2009, I delivered a judgment which determined an application for urgent interlocutory injunctive relief which had been made by the applicant on 23 December 2008:  Sebel Furniture Limited v Acoustic & Felts Pty Limited [2009] FCA 6 (the principal judgment). 

2                                             I declined to grant all of the interlocutory relief claimed by the applicant.  In particular, I declined to grant relief based upon the applicant’s registered trade mark, the tort of passing off and s 52 of the Trade Practices Act 1974 (Cth) (the TPA) insofar as this latter cause of action related to the alleged similarities between the applicant’s plastic moulded chair and the respondent’s plastic moulded chair. 

3                                             Prior to the interlocutory hearing before me, the respondent had agreed to give an undertaking to the Court on an interlocutory basis dealing with certain alleged misrepresentations said to have been made by it.  That undertaking was noted at the time I delivered the principal judgment.  At the same time, I granted an interlocutory injunction restraining the respondent from making certain other representations.

4                                             The applicant is a well-known supplier of chairs moulded from plastic materials.  It has an extensive business in Australia and exports to over 70 countries worldwide.

5                                             A significant product in the applicant’s range of furniture is a sidechair known as the Postura chair.  That chair is specifically designed for the education sector.

6                                             The applicant is the Registered Owner of Trade Mark No 1054076 in respect of a shape (the applicant’s trade mark).  The applicant’s trade mark is registered in Class 20 in respect of sidechairs moulded from plastic materials.  Sidechairs are chairs without arms. 

7                                             The applicant’s trade mark is embodied in the Postura chair. 

8                                             The respondent trades under the business name Reed Furniture (Reed Furniture).  It also has other businesses.  Towards the end of 2008, Reed Furniture commenced to import into Australia and to supply and distribute here a moulded plastic chair known as the Titan chair.  The Titan chair is intended to be supplied to the same educational market which, for many years, has been supplied with Sebel’s Postura chairs. 

9                                             In the proceedings, the applicant alleges that the respondent has infringed the applicant’s trade mark by using the shape in respect of which the applicant’s trade mark is registered as a trade mark upon or in relation to the Titan chair.  The applicant also alleges that the respondent has engaged in passing off and in conduct which constitutes a contravention of s 52 of the TPA by promoting, offering to supply and supplying the Titan chair.

10                                          At [107] of the principal judgment, I said:

107       Sebel’s pleaded case for infringement of Sebel’s trade mark may be summarised as follows:

(a)        Sebel uses Sebel’s trade mark upon and in relation to its range of Postura chairs;

(b)        By reason of its advertising and promotion of the Postura chair and of the many sales of that chair effected by Sebel since 1996, the shape of the Postura chair is seen by Australian consumers as:

… denoting a chair that is designed and/or manufactured by Sebel and supplied by the applicant and its authorised distributors.

(c)        The respondent has promoted, offered to supply and supplied the Titan chair in Australia;

(d)        In connection with those activities, the respondent has:

… in Australia, used as a trade mark a sign, namely a shape upon or in relation to the Titan chair, that is deceptively similar to [Sebel’s] registered trade mark, in that the trade mark so nearly resembles [Sebel’s] registered trade mark that it is likely to deceive or cause confusion, within the meaning of section 10 of the Trade Marks Act 1995.

The particulars of this allegation refer to the advertising, promotion and sale of the Titan chair by Reed Furniture.

(e)        The alleged use of Sebel’s trade mark by the respondent has been without Sebel’s consent;

(f)        Accordingly, by the conduct described in sub-par (d) above, the respondent has infringed Sebel’s trade mark.

11                                          At [205] of the principal judgment, I said: 

CONCLUSIONS

The Claim for Interlocutory Relief

(a)        Sebel has failed to make out a prima facie case for relief which would restrain the promotion, offering to supply or supply of the Titan chair in Australia.

(b)        For that reason, its claim for an interlocutory injunction restraining the respondent from engaging in such activities in respect of the Titan chair is refused.

(c)        If I am wrong in conclusions (a) and (b), I am of the view that the balance of convenience and the balance of justice in any event favour the refusal of an interlocutory injunction restraining the respondent from promoting, offering to supply or supplying the Titan chair in Australia.

(d)        Sebel has made out a prima facie case for an interlocutory injunction restraining the respondent from representing in trade or commerce in Australia in relation to chairs that:

(i)         The Titan chair is the only plastic sidechair available in Australia which currently conforms to UK standards EN 1729 – Parts 1 and 2 (2006); or

(ii)        The Titan chair is the first 1-piece chair that conforms to UK standards EN 1729 – Parts 1 and 2 (2006).

(e)        The balance of convenience and justice favours the grant of such an injunction; and

(f)        There will be an interlocutory injunction to the effect of the injunction referred to in sub-par (d) above.

12                                          When I made orders on 12 January 2009, I listed the matter for directions before me on 5 February 2009. 

13                                          When the matter was called on before me on 5 February 2009, Senior Counsel for the applicant informed me that the applicant wished to make an application that I not sit as the judge hearing the final hearing of these proceedings.  The proceedings are in my docket and ordinarily I would be the judge who would deal with the final hearing. 

14                                          On 5 February 2009, submissions were made by both parties directed to the question of whether or not I should sit on the final hearing.  The respondent submitted that I should not disqualify myself from that task.

15                                          At the conclusion of the directions hearing which took place on 5 February 2009, I directed the parties to file and serve Written Submissions in support of their respective positions.

16                                          I have received Written Submissions from each party and will take those submissions into account when deciding the application which has been made to me by the applicant.

17                                          On Monday of this week, my associate notified the solicitors for the parties that I would deliver judgment today on the disqualification application made by the applicant.

18                                          Yesterday afternoon, my associate received an email from the solicitors for the applicant which was in the following terms (omitting formal parts): 

Thank you for your email dated 30 March 2009 indicating that his Honour will deliver judgment at 9.30 a.m. on 1 April 2009.

We wish to advise, to the extent that it is relevant to his Honour’s decision, that we have received the following instructions:

1.         to seek leave to discontinue the trade mark infringement part of the applicant's claim, namely paragraphs 1, 2, the first paragraph numbered 4, second paragraph numbered 4, 5, 6, 7 and 8 of the Amended Application; and

2.         to seek leave to discontinue paragraph 3(d) of the Amended Application.

The applicant will continue its claim in respect of the balance of paragraph 3 of the Amended Application.

We have previously informed the respondent’s solicitor, Gilbert + Tobin of our instructions and they have been copied into this email.

19                                          If leave to discontinue is granted in accordance with the foreshadowed application for such leave, the only relief which the applicant will press at the final hearing is its claim for the following order, namely:

An order that the respondent, whether by itself, its servants or agents, be restrained from making each of the following representations in trade or commerce in Australia in relation to chairs:

(a)        No chair in Australian classrooms has been manufactured to a European Standard.

(b)        The Titan chair is the only one-piece polypropylene chair that has attained EN1729 Part 1 and Part 2 Certification.

(c)        EN1729 Part 1 supersedes all other standards in Australia for chairs used in classrooms.

20                                          The applicant’s claim for this relief was resolved on an interlocutory basis when the respondent proffered and I accepted an undertaking in the terms of the order sought by the applicant.  The form of the undertaking is set out in [2] of the orders which I made on 12 January 2009.  The circumstances in which that undertaking came to be given are dealt with at [15]–[18] and at [185]–[187] of the principal judgment. 

21                                          If leave to discontinue is granted, all other claims for relief made by the applicant will be abandoned.

22                                          The claim for the injunctive relief which I have extracted at [19] above is found in subpars 3(a), 3(b) and 3(c) of the Amended Application filed on 23 December 2008.  As I understand that claim, it is founded upon ss 52, 80 and 87 of the TPA.  

23                                          Notwithstanding that the applicant intends to abandon most of the case which it has previously sought to make in these proceedings, it has not withdrawn its application that I should not hear and determine the final hearing of the proceedings.

24                                          That hearing will almost certainly now be confined to the claim for injunctive relief extracted at [19] above and (possibly) the respondent’s Cross-Claim.

25                                          In its Cross-Claim, the respondent seeks an order that the applicant’s trade mark be cancelled on the following grounds, namely that:

(a)                The applicant’s trade mark is not, and was not, at the date of application for registration of that trade mark, inherently adapted to distinguish the sidechairs supplied and promoted by the applicant under the name “Postura” from the sidechairs of other persons; and

(b)               The applicant’s trade mark is not, and was not, at the date of application for registration of the registered trade mark, capable of distinguishing the sidechairs supplied and promoted by the applicant under the name “Postura” from the sidechairs of other persons.

26                                          In the circumstances, I must still deal with the disqualification application but I will do so upon the basis that the only claim that will need to be determined is the applicant’s claim which I have extracted at [19] above and the respondent’s Cross-Claim.

The Applicant’s Submissions

27                                          The applicant’s submissions may be summarised as follows:

(a)                In the principal judgment, I concluded that the applicant had failed to establish that it had a prima facie case or a serious question to be tried that the shape embodied in the respondent’s Titan chair is deceptively similar to the applicant’s trade mark.  I also expressed the view that the respondent had probably not used the shape embodied in its Titan chair as a trade mark (see the principal judgment at [162]);

(b)               The conclusion which I expressed at [162] of the principal judgment in respect of the issue of deceptive similarity necessarily involved a process of reasoning which required evaluation, impression and judgment based on a comparison of the registered trade mark with the impugned mark, also taking into account, as an evaluative tool, a judgment about imperfect recollection;

(c)                In the principal judgment, the conclusion which I reached in respect of the question of whether or not the shape embodied in the respondent’s Titan chair is deceptively similar to the applicant’s registered trade mark was reinforced by the characteristics of the likely purchasers of plastic moulded sidechairs in respect of which unqualified findings of fact were made;

(d)               These conclusions or findings fed into my decision to decline interlocutory relief based upon the passing off case and the non-misrepresentation case founded upon s 52 of the TPA;

(e)                The conclusions which I reached in respect of deceptive similarity are similar, in principle, to findings of credit since both types of finding involve evaluation, impression and judgment that are peculiar to the mind of the judge making the relevant findings; and

(f)                 In those circumstances, there will be, in the present case, an appearance of pre-judgment on the question of deceptive similarity (and perhaps also on the question of whether the relevant shape has been used as a trade mark) which will create an apprehension in the mind of the reasonable and rational observer that I may not be impartial when it comes to a consideration of these matters at the final hearing.  The submission was that, when I come to decide the question of deceptive similarity on a final basis, that question will inevitably involve the very same matters of evaluation, impression and judgment as were decided by me in the principal judgment.

28                                          In those circumstances, so it was submitted, I should stand aside from the final hearing of these proceedings.

29                                          Senior Counsel for the applicant was at pains to stress that there was no suggestion in any of the submissions which he made to me that I would not, in fact, be impartial in conducting the final hearing of these proceedings.

The Respondent’s Submissions

30                                          The respondent’s submissions may be summarised as follows:

(a)                There is no principle of law to the effect that a judge who expresses views in deciding an interlocutory application about matters of impression should not hear the same proceedings on a final basis and that the principles concerning disqualification on the ground of apprehended bias have no application in the present circumstances;

(b)               Judicial officers are under a duty to hear and determine matters allocated to them (Re JRL; Ex parte CJL (1986) 161 CLR 342 at 352);

(c)                Judges should not too readily accede to applications for disqualification, otherwise litigants may succeed in effectively influencing the choice of the judge in their own cause by sidelining a judge who the particular litigant may see as likely not to determine the case favourably to them;

(d)               Judges should resist being driven from their courts by the conduct or assertion of parties, including assertions of actual or imputed bias (see Raybos Australia Pty Ltd v Tectran Corporation Pty Ltd (No 4) (1986) 6 NSWLR 674 at 689);

(e)                The pre-judgment principle is that a judge ought not hear a case if, in all the circumstances, the parties or the public might entertain a reasonable apprehension that the judge might not bring an impartial and unprejudiced mind to the resolution of the questions involved in the proceedings (see Livesey v New South Wales Bar Association (1983) 151 CLR 288 at 293–294; Re Watson; Ex parte Armstrong (1976) 136 CLR 248 at 258–263; Johnson v Johnson (2000) 201 CLR 488 at [11]–[14] (pp 492–494), at [29]–[54] (pp 498–509) and at [71]–[81] (pp 514–518). 

(f)                 The attributes of the fictitious bystander discussed in the cases were recently articulated by a Full Court of this Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2009] FCAFC 8 at [75]–[82] and [85]–[88]; 

(g)                There is no suggestion of actual bias in the present case;

(h)                The evaluation undertaken by me of the applicant’s trade mark and the Titan chair and the observations which I made concerning the class of likely purchasers of the parties’ chairs were not matters which could attract the pre-judgment principle;

(i)                  It was clear from the principal judgment that the views which I expressed were preliminary and taken only so far as the relevant principles concerning the requirements for the ground of interlocutory injunctions required; and

(j)                 In all the circumstances, the reasonable bystander would not apprehend bias in the form of pre-judgment on the issues to be determined at the final hearing. 

Consideration

31                                          The applicant relies upon the pre-judgment principle in the submissions which it has made in support of the present application.  The applicant has expressly disavowed any suggestion that I am actually biased against it or that I have actually made up my mind in advance of the final hearing.  Nor is there any suggestion that I cannot and will not bring to the final hearing an independent and impartial mind. 

32                                          In applications of this type, it is almost always one of the litigants who seeks to invoke the relevant principle.  The moving party, ostensibly in the interests of justice, draws to the attention of the relevant judicial officer the concern that continued participation on the part of that particular judicial officer in the matter may lead to perceptions in the mind of the hypothetical independent observer that the judicial officer may not bring an independence and impartiality to the issues to be heard and determined by him.  Should there be a real risk of such perceptions being formed, the judicial officer ought to stand aside. . 

33                                          In the present case, it was submitted on behalf of the applicant that the reasoning employed by me in refusing a significant part of its claims for interlocutory relief, having regard to the subject matter of that application and the issues thrown up by that application, inevitably leads to the result that I should not sit on the final hearing of those proceedings.

34                                          A Full Court of this Court recently encapsulated the relevant principles.  In Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2009] FCAFC 8 at [70]–[74], Greenwood J (with whom Emmett J agreed) said:

70        The basic principle upon which the common law system of adversarial trial rests is that the Tribunal is independent and impartial. So important is the principle that even “the appearance of departure from it is prohibited lest the integrity of the judicial system be undermined” (Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 at [7], per Gleeson CJ, McHugh, Gummow and Hayne JJ (“Ebner”)). The apprehension of bias principle finds expression in this test (Ebner at [6]) (leaving aside any question of waiver or necessity):

… a judge is disqualified if a fair-minded lay observer might reasonably apprehend that the judge might not bring an impartial mind to the resolution of the question the judge is required to decide.

71        That test speaks of possibilities rather than probabilities and contemplates a “real and not remote” possibility that a judge might not bring an impartial mind to bear. The test recognises the possibility of human frailty in decision-making. The application of the test requires two things. First, the identification of what it is that might lead a judge to decide the particular questions before him or her other than on the merits. Secondly, having identified the factor or circumstance that might influence a departure from meritorious decision-making, it is “no less important” (Ebner at [8]) to articulate the “logical connection” between that factor and the fear that the judge might not apply proper judicial method (that is, merits based decision-making) in resolving the controversy on the facts and the law (Ebner at [8]: as to a recent example of the application of the second limb, see: Expectation Pty Ltd v PRD Realty Pty Ltd & Anor (No 2) (2006) 151 FCR 160). Only when the relevant factor is identified and the logical connection articulated, can the reasonableness of the asserted apprehension of bias be assessed. This test reflects (Ebner at [33]):

… the general principle to be applied … to problems of apprehended bias, whether arising from interest, conduct, association, extraneous information or some other circumstance.

72        Ebner (comprising two appeals) was a case involving contended “interest” on the part of the primary judge through relatively small shareholdings in a major Australian bank held both directly in one case and through a family trust in another which, although disclosed, was said to give rise to apprehended bias in the determination of the issues. Johnson v Johnson (2000) 174 ALR 655 was a “conduct” case in which the primary judge during the course of a lengthy hearing concerning the distribution of substantial assets between a husband and wife consequent upon dissolution of the marriage, twice made a particular observation that was said to suggest pre-judgment (eg apprehended bias) as to the reliability or credit of the applicant husband. Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ at [12] emphasised three things. First, reference to the hypothetical fair-minded lay observer makes plain the entirely objective character of the test. Secondly, the observer is taken to be “reasonable”. Thirdly, applying an observation of McHugh J in Vakauta v Kelly (1988) 13 NSWLR 502 at 527 adopted by Toohey J in Vakauta v Kelly (1989) 167 CLR 568 at 584–5, the Court noted that:

The person being observed is a professional judge whose training, tradition and oath or affirmation require [the judge] to discard the irrelevant, the immaterial and the prejudicial.

73        Further, the fictional observer is not presumed to have a detailed knowledge of the law, or the character, history or ability of a particular judge. Nevertheless, the reasonableness of any suggested apprehension of bias is to be considered in the context of “ordinary judicial practice” (Johnson v Johnson at [13]). The rules and conventions governing such practice take account of the “exigencies of modern litigation”. Sometimes modern case management will result in a dialogue between the judge and counsel which might suggest an impression as to the judge’s view of the strengths or weaknesses of a party’s case on a particular issue. Opinions (although tentative or preliminary) are very like to be formed yet participants in these processes understand that justice will be done between the parties because a judge applying the professional standards previously mentioned will ultimately decide issues on the merits by discarding the irrelevant, the immaterial and the prejudicial so as to reach a decision on the merits according to law. Sometimes, statements made or the behaviour of a judge may create “an ineradicable apprehension of pre-judgment” (Johnson v Johnson at [14]). However, later statements or later behaviour or both taken together, may alter an impression of pre-judgment as, objectively viewed, “the hypothetical observer is no more entitled to make snap judgments than the person under observation” (Johnson v Johnson at [14]).

74        The lay observer must be “fair-minded” and act out of reason and thus act “reasonably”. In order to act out of reason, the lay observer must have a frame of reference so as to make not just any decision but an informed decision and thus a reasoned decision. Plainly, the lay observer is not informed by a “detailed knowledge” of the law or by a knowledge of the values or expertise of the particular judge. Nor is the lay observer to be attributed with “undue knowledge and sophistication” (Johnson v Johnson at [42], per Kirby J) or “highly specialised knowledge” or “all that was eventually known to the court” (Johnson v Johnson at [49], per Kirby J). Yet, the fictitious bystander is not “wholly uninformed and uninstructed about the law in general or the issues to be decided” (Johnson v Johnson at [53], per Kirby J). At [53], Kirby J also said this:

The attributes of the fictitious bystander to whom courts defer have therefore been variously stated. …  Being reasonable and fair‑minded, the bystander, before making a decision important to the parties and the community, would ordinarily be taken to have sought to be informed on at least the most basic considerations relevant to arriving at a conclusion founded on a fair understanding of all the relevant circumstances.  The bystander would be taken to know commonplace things, such as the fact that adjudicators sometimes say, or do, things they might later wish they had not, without necessarily disqualifying themselves from continuing to exercise their powers.  The bystander must also now be taken to have, at least in a very general way, some knowledge of the fact that an adjudicator may properly adopt reasonable efforts to confine proceedings within appropriate limits and to ensure that time is not wasted.  The fictitious bystander will also be aware of the strong professional pressures on adjudicators (reinforced by the facilities of appeal and review) to uphold traditions of integrity and impartiality.  Acting reasonably, the fictitious bystander would not reach a hasty conclusion based on the appearance evoked by an isolated episode of temper or remarks to the parties or their representatives which was taken out of context.  Finally, a reasonable member of the public is neither complacent nor unduly sensitive or suspicious. 

[emphasis added]

35                                          In the same case at [120]–[125], Besanko J said:

120       The relevant test for apprehended bias is that set out in the reasons of the High Court in Johnson in the passage set out above ([114]). The High Court has referred to a number of principles which are relevant to the application of the test for apprehended bias. The cases, and the principles which emerge from them, are set out in the reasons for judgment of Greenwood J (at [70]-[74]). As the issue in this case is not the scope of the principles but their application to the facts of the case, it is not necessary for me to do other than provide a short summary of what I think are the more important principles, having regard to the circumstances of this case.

121       The test stated in Johnson refers to possibilities, not probabilities, although the possibilities must be real and not remote: Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 at 345 [7] per Gleeson CJ, McHugh, Gummow and Hayne JJ. In circumstances in which it is alleged that a judge should disqualify himself or herself on the ground of a reasonable apprehension of bias by reason of prejudgment, the case must be firmly established and judges should not accede too readily to suggestions of appearance of bias: Re JRL; Ex parte CJL (1986) 161 CLR 342 (“Re JRL”) at 352 per Mason J. It has also been said that a conclusion of a reasonable apprehension of bias is not to be drawn lightly: Vakauta v Kelly (1989) 167 CLR 568 at 584-585 per Toohey J. The fair-minded lay observer “is to be presumed to approach the matter on the basis that ordinarily a judge will so act as to ensure both the appearance and the substance of fairness and impartiality”; at the same time, he is “not presumed to reject the possibility of prejudgment or bias”: Livesey v The New South Wales Bar Association (1983) 151 CLR 288 (“Livesey”) at 299.

122       In Johnson, Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ made observations on the need for any apprehension to be reasonable and on the knowledge to be attributed to the fair-minded lay observer. Their Honours said (at 493 [12]-[13]):

… two things need to be remembered: the observer is taken to be reasonable; and the person being observed is “a professional judge whose training, tradition and oath or affirmation require [the judge] to discard the irrelevant, the immaterial and the prejudicial”.

Whilst the fictional observer, by reference to whom the test is formulated, is not to be assumed to have a detailed knowledge of the law, or of the character or ability of a particular judge, the reasonableness of any suggested apprehension of bias is to be considered in the context of ordinary judicial practice. The rules and conventions governing such practice are not frozen in time. They develop to take account of the exigencies of modern litigation. At the trial level, modern judges, responding to a need for more active case management, intervene in the conduct of cases to an extent that may surprise a person who came to court expecting a judge to remain, until the moment of pronouncement of judgment, as inscrutable as the Sphinx. In Vakauta v Kelly Brennan, Deane and Gaudron JJ, referring both to trial and appellate proceedings, spoke of “the dialogue between Bench and Bar which is so helpful in the identification of real issues and real problems in a particular case”. Judges, at trial or appellate level, who, in exchanges with counsel, express tentative views which reflect a certain tendency of mind, are not on that account alone to be taken to indicate prejudgment. Judges are not expected to wait until the end of a case before they start thinking about the issues, or to sit mute while evidence is advanced and arguments are presented. On the contrary, they will often form tentative opinions on matters in issue, and counsel are usually assisted by hearing those opinions, and being given an opportunity to deal with them.

(Citations omitted.)

(See also at 508-509 [53] per Kirby J.)

(See also Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd (2006) 229 CLR 577 at 609-610 [111] per Kirby and Crennan JJ.)

123       Apprehended bias may arise where a judge is required to make findings of fact about matters which were the subject of earlier findings of fact by the judge, which earlier findings have been set aside for whatever reason. The case of apprehended bias will be a strong one in cases in which the findings of fact turn on findings as to credit. It may be a strong one, even in those cases in which the findings of fact do not turn on findings of credit. Clearly, it depends on the precise circumstances of the case. In Livesey, the High Court said (at 300):

It is, however, apparent that, in a case such as the present where it is not suggested that there is any overriding consideration of necessity, special circumstances or consent of the parties, a fair-minded observer might entertain a reasonable apprehension of bias by reason of prejudgment if a judge sits to hear a case at first instance after he has, in a previous case, expressed clear views either about a question of fact which constitutes a live and significant issue in the subsequent case or about the credit of a witness whose evidence is of significance on such a question of fact.

On the other hand, in Re JRL, Mason J said (at 352):

It needs to be said loudly and clearly that the ground of disqualification is a reasonable apprehension that the judicial officer will not decide the case impartially or without prejudice, rather than that he will decide the case adversely to one party. There may be many situations in which previous decisions of a judicial officer on issues of fact and law may generate an expectation that he is likely to decide issues in a particular case adversely to one of the parties. But this does not mean either that he will approach the issues in that case otherwise than with an impartial and unprejudiced mind in the sense in which that expression is used in the authorities or that his previous decisions provide an acceptable basis for inferring that there is a reasonable apprehension that he will approach the issues in this way.

(See also Laws v Australian Broadcasting Tribunal (1990) 170 CLR 70 at 100 per Gaudron and McHugh JJ.)

124       The Court was referred to a decision of the Full Court of the Supreme Court of South Australia in Southern Equities Corp Ltd (in liq) v Bond (2000) 78 SASR 339 and a decision of the Court of Appeal of the Supreme Court of New South Wales in Baulkham Hills Shire Council v Basemount Pty Ltd (2003) 126 LGERA 339. The facts of this case differ from the facts in those two cases. While it has been helpful to look at those two authorities, this case is to be decided by the application of the general principles to the facts of the case.

125       The appellant did not put its submission of apprehended bias simply on the basis that, as a result of the decision of the Full Court, the primary judge was, or may have been, required to consider again factual matters about which he had previously made findings of fact (not based on findings of credit). That may be because of the nature of the error of the primary judge found by the Full Court and the fact that the Full Court said that, had the primary judge been right to exclude the disputed evidence, the appellant had not identified any error in his reasons.

36                                          Besanko J dissented in the result.

37                                          The principle was also explained in Australian National Industries Ltd v Spedley Securities Ltd (in liq) (1992) 26 NSWLR 411, (1992) 9 ACSR 309 at 437D–442D.  A more recent exposition of the relevant principles can be found in McGovern v Ku-ring-Gai Council (2008) 251 ALR 558, (2008) 161 LGERA 170 at [14]–[24] (251 ALR at pp 561–562) and at [71]–[83] (251 ALR at pp 569–573).  

38                                          These principles are well-established and I intend to apply them in the present case.

39                                          As is well-known, this Court has a docket system.  One of the principal features of that system is that each case is allocated to a particular judge immediately after the originating process is filed.  It is the usual practice thereafter that the particular case remains with the particular judge to whom it was originally allocated.  That usual practice is, however, subject to exceptions.

40                                          In the present case, there is no reason to suppose that the proceedings cannot be allocated to another judge of this Court and heard more or less in the same time frame as they would be heard were they to remain in my docket.  There is, therefore, no reason to have regard to the principle of necessity which, in appropriate cases, may require that a judge not disqualify himself or herself even though, prima facie, the pre-judgment principle has been engaged.

41                                          At the time when the applicant’s disqualification application was argued before me, the applicant was continuing to press all of its claims.  An important group of claims which were then still being pressed involved a comparison between the Postura chair and the Titan chair and a comparison between the applicant’s trade mark and the Titan chair.  These comparisons would be at the heart of the Court’s determination of the applicant’s trade mark claim, passing off claim and s 52 of the TPA claim which is based upon similar considerations to those which would have arisen in respect of the applicant’s passing off claim.

42                                          The principal reason advanced by the applicant in its submissions in support of the proposition that I should disqualify myself was that, in a case where such comparisons are involved, if a judge has found in a judgment on an interlocutory application that the applicant had not established even a prima facie case or serious question to be tried in respect of the causes of action involving such comparisons (as is the case here), the fair-minded lay observer might reasonably think that the judge might not be able to approach the matter afresh at the final hearing, uninfluenced by the views to which he or she came in the judgment on the interlocutory application. 

43                                          The applicant did not submit that, if the only claims for relief to be determined at the final hearing comprise that which it makes in subpars 3(a), 3(b) and 3(c) of the Amended Application and that which the respondent makes in its Cross-Claim, I should disqualify myself.  As is obvious, a submission which descended to that level of particularity was probably not called for at the time that the matter was argued, given that the principal ground of objection was that which I have attempted to capture at [42] above.

44                                          More importantly, however, the reasons advanced by the applicant in the submissions which it did make do not support disqualification in circumstances where the claims for relief at the final hearing are as confined as they will be in the present case.  As I appreciate the substance of the applicant’s remaining claim for relief and the evidence which will be adduced in support of it, the claim does not involve the kinds of comparisons which the applicant contended might necessitate that I should disqualify myself.  Furthermore, I did not express any views as to the strength of the applicant’s case for relief as claimed in subpars 3(a), 3(b) and 3(c) of the Amended Application in the principal judgment because I was not required to do so, the matter having been dealt with on an interlocutory basis by consent.  Nor do I think that the Cross-Claim involves such comparisons.  The applicant did not address the Cross-Claim at all in the submissions which it made in support of its disqualification application.

45                                          For these reasons, I decline to disqualify myself.  I have come to this conclusion on the assumption that the applicant’s claims for relief will be confined to subpars 3(a), 3(b) and 3(c) of the Amended Application and that the Cross-Claim remains on foot.

46                                          The costs of this application will be the respondent’s costs in the proceedings.

Associate:

Dated:         1 April 2009