FEDERAL COURT OF AUSTRALIA

E D Oates Pty Ltd v Edgar Edmondson Imports [2012] FCA 607

THE COURT ORDERS THAT:

1.    The application be dismissed.

2.    The applicant pay the respondent’s costs of and incidental to the application.

Note:        Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    This is an application for an order for the examination of the respondent by its proper officers under O 15A r 3(2)(a) of the Federal Court Rules 1979 (Cth) (the 1979 Rules). For the reasons that follow, the application is refused.

2    E D Oates Pty Ltd (the applicant) is the registered proprietor of Australian Design Registration 129429 (“Oates Registered Design”) for an article being a “bucket and wringing assembly”. The date of registration is 13 March 1997. The applicant is concerned that its monopoly in the Oates Registered Design has been infringed by a competing mop bucket called an “Enduro wringer bucket” and/or an article that is the subject of Edmondson’s Australian Design Registration 330806 (“Edmondson Registered Design”). The Edmondson Registered Design has a registration date of 17 May 2010. The applicant considers that Edmondson’s Product arguably constitutes an obvious or fraudulent imitation of the Oates Registered Design within s 30(1) of the Designs Act 1906 (Cth) (“Designs Act 1906”).

3    In order to assist it determine whether it was entitled to relief against Edmondson for design infringement, the applicant sought preliminary discovery under O 15A r 6 of the 1979 Rules for documents relating to the design and development of Edmondson’s Product. At the same time, the applicant also sought an order for examination under O 15A r 3, but subsequently accepted that a determination as to whether an order for examination should be made ought to await the outcome of discovery and inspection.

4    On 5 April 2012, the Court made orders, including an order for preliminary discovery in the applicant’s favour and reserving liberty to apply for an order of the kind now sought. The background to this application is set out in E D Oates Pty Ltd v Edgar Edmondson Imports Pty Ltd [2012] FCA 356.

5    On 20 April 2012, the respondent filed an affidavit of Timothy John Edmondson sworn on 20 April 2012 making discovery under the orders of 5 April 2012. On 30 April 2012, the applicant’s solicitor carried out an inspection of 23 discovered documents.

6    On 4 May 2012, the applicant made an application under O 15A r 3(2)(a) of the 1979 Rules for an order for the examination of the respondent and, in particular, that:

the respondent, by its appropriate officer attend before the Court, on a date to be fixed by the Court, to be examined as to information which would or might lead to the identity or the description of any person or persons who, in the period 1 July 2009 to 4 July 2011:

(a)    did, caused, procured or authorised the doing in Australia or outside of Australia any of the following acts:

(i)    initiating instructions, directions or providing information to any person, including (but not limited to) any patent attorney involved or in respect of whom a request was made to investigate, consider or otherwise devise the design of the product the subject of Australian Design Registration 330806, such article being a mop bucket (Edmondson Product);

(ii)    initiating instructions, directions or providing information to any person, including (but not limited to) any patent attorney involved or in respect of whom a request was made to investigate, consider or undertake any comparison of the article being the subject of Australian Design Registration 129429 (Oates Registered Design), for an article being a “bucket and wringing assembly” and a mop bucket proposed to be manufactured, whether in Australia or outside Australia, offered for sale, sold, supplied, or otherwise promoted or marketed, directly or indirectly, by the Respondent, with the Edmondson product, or any mop bucket the features of which were or were intended to be the same or substantially identical to the Edmondson Product;

(iii)    initiating instructions, directions or providing information to any person, in respect of whom an enquiry or request was made to or otherwise an instruction or direction was provided to or concerning, directly or indirectly, manufacture the or any of the components comprising the Edmondson product; and

(iv)    initiating instructions, directions or providing information to any person, in respect of the proposed design, manufacture and/or marketing in Australia of the or any of the components comprising the Edmondson Product;

(b)    was involved in the said acts, and each of them, as referred to in (a) above, by aiding, abetting, procuring or inducing such acts.

The applicant named the respondent’s proper officers as Peter Charles Edmondson and Timothy Edmondson.

7    In support of its application for examination, the applicant relied on an affidavit of its solicitor sworn on 8 May 2012 (with its annexures). Amongst other things, the solicitor, Ms Beniac-Brooks, deposed that consideration of the documents discovered by the respondent had left her unclear about the research and design pathway for the Edmondson Registered Design. Further, Ms Beniac-Brooks deposed that such consideration did not disclose sufficient information about the nature of an apparently relevant agreement and the identity and role of persons involved in the designs, drawings, comparisons, testing, creation of moulds, as well as the relevant decision-making processes referred to in the discovered documents. Ms Beniac-Brooks further deposed to an absence of documents that would be relevant to assisting the applicant in identifying the prospective respondents:

… where the involvement of such persons is that of a joint tortfeasor, through any one or more persons or entities causing, procuring or inducting [sic] the alleged infringement of the Applicant’s registered design from occurring, including by reference to there being a person knowingly concerned or involved in a contravention of:

●    s 52 of the Trade Practices Act 1974 (Cth); and/or

●    s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth).

8    Consistently with this, the applicant’s written submissions stated that, notwithstanding the applicant’s inspection of the discovered documents, “there is insufficient information to enable ascertainment from the discovered documents, [of] the identity of the person or persons or entities involved in, or the nature of the infringement concerned of Oates in respect of the subject product”.

9    In oral submissions this morning, the applicant’s counsel referred to the fact that the discovered documents indicated a “raft of people who may well be involved in the development pathway”. Counsel accepted, it seemed to me, that these causes of action against the raft of people he referred to were essentially speculative at this stage.

10    At the commencement of the earlier hearing on 20 October 2011, the Court, with the parties’ agreement, ordered that the 1979 Rules should apply. To the extent necessary, the Court ordered today that the 1979 Rules should continue to apply.

11    Order 15A r 3 of the 1979 Rules relevantly provides that:

(1)    Where an applicant, having made reasonable inquiries, is unable to ascertain the description of a person sufficiently for the purpose of commencing a proceeding in the Court against that person (in this rule called the person concerned) and it appears that some person has or is likely to have knowledge of facts, or has or is likely to have or has had or is likely to have had possession of any document or thing, tending to assist in such ascertainment, the Court may make an order under subrule (2).

(2)    The Court may order that the person, and in the case of a corporation, the corporation by an appropriate officer, shall:

(a)    attend before the Court to be examined in relation to the description of the person concerned;

(b)    …

(Emphasis added.)

12    Relevantly, O 15A r 1 states:

description includes the name, and (as applicable) the place of residence, registered office, place of business, occupation and sex of the person against whom the applicant desires to bring a proceeding, and also whether that person is an individual or corporation.

13    The function of O 15A r 3 is, as Siopis J said Cape Australia Holdings Pty Ltd v Iannello [2009] FCA 709 (‘Cape Australia’) at [63], “to provide a person with a means of obtaining information as to the identity of a party against whom the applicant wishes to commence a proceeding but is unable to do so because the applicant does not have sufficient information about that person’s description to issue the application commencing the proceeding in the Court”. The scope of the information that may be sought under O 15A r 3 is limited: see Lynx Engineering Consultants Pty Ltd v The ANI Corporation Limited (No 2) (2007) 163 FCR 372 (‘Lynx’) at 377 [26]. As Siopis J said in Lynx at 377 [26]:

Order 15A r 3 permits an applicant to obtain information limited to the ascertainment of the description of the person or persons against whom he or she desires to commence a proceeding. The definition of “description” in O 15A r 1 is indicative of the limited nature of the information which is available to an applicant under this rule - being the basic information needed to commence a proceeding, namely, the name, address, sex and occupation of the person to be sued, and whether that person is a natural person, or a corporation. The fact that O 15A r 1 provides that the definition of “description” “includes” these items of information, emphasises the limited scope of the information that is obtainable under this rule. Accordingly, this rule will have application where the applicant has already identified a cause of action against an anonymous person or persons and desires to commence proceedings against that person or those persons, but is unable to do so because of the absence of necessary information.

14    The circumstances in which O 15A r 3 operate are different from those applicable to O 15A r 6. Order 15A r 6 provides for preliminary discovery to assist a person to determine whether to commence a proceeding on the basis that the applicant may have a right to obtain relief against an identified party. To adopt Siopis J’s words in Cape Australia at [64]:

By contrast, O 15A r 3 is not addressed to the position of a person considering whether to bring a proceeding against a person on the basis that that person may have a claim for relief. The speculative element inherent in the language of O 15A r 6 is absent from the language of O 15A r 3. The ambit of O 15A r 3 is, accordingly, to that extent narrower than O 15A r 6.

An order for examination under O 15A r 3(2)(a) may only be granted to an applicant who already has a cause of action against a respondent but simply lacks the description of that respondent: see Lynx at 377 [26] and Cape Australia at [64]. Contrary to the applicant’s counsel’s submission this morning, the Full Court decision in Hooper v Kirella (1999) 96 FCR 1 (‘Hooper’) does not stand for a contrary proposition.

15    In the present case, the applicant apparently seeks an order for examination in order to obtain information to assist it in determining whether it has certain causes of action against a number of identified and unidentified persons. This at least would appear to be the thrust of Ms Beniac-Brook’s affidavit and, in part, counsel’s submissions: see [6]-[9] above. In this way, the applicant fails to satisfy the requirements of O 15A r 3(2)(a) of the 1979 Rules. See further [20] below.

16    The same kind of error led the applicant to fail in such cases as Lynx, Cape Australia and G Breschi & Son Pty Ltd v AFT Ltd [1988] VR 109 (‘G Breschi’). In Lynx, the applicant sought to examine a person orally in respect of the “nature and extent of the involvement” of a number of persons and entities for the purpose of discerning the potential liability of these persons and entities: see Lynx at 378 [32]. Siopis J refused to make the order on the basis that the applicant was impermissibly “attempting to blend the power to examine orally a party under O 15A r 3, with the power to obtain information under O 15A, r 6, in respect of the potential liability of identified persons”: see Lynx at 378 [32].

17    In Cape Australia, the applicant sought an order for preliminary discovery under O 15A r 3 to assist it to determine whether a prospective respondent had communicated confidential information to third parties. Siopsis J dismissed the application, stating at [62] that:

In my view, the applicants have misconceived the circumstances in which O 15A r 3 applies.  It is apparent from Mr Murdoch’s evidence and the applicants’ submissions that the applicants do not know whether Mr Iannello ever communicated confidential information to a third party.  It is also apparent, therefore, that the applicants are not in a position where they believe that they have a cause of action against an unidentified third party, but are unable to commence the proceeding because they do not know the description of that party.

This led his Honour to conclude (at [65]):

In the circumstances, the evidence of Mr Murdoch which accepts that the applicants do not know if they have a cause of action against one or more third parties, fails to satisfy the requirements of O 15A r 3.

18    In G Breschi, an applicant similarly failed when it sought an order under an equivalent provision of the Rules of the Supreme Court of Victoria to examine a respondent in order to determine who among a group of identified persons was the relevant contracting party for the purposes of the applicant’s claim: see G Breschi at 113 per Gobbo J. See also National Education Advancement Programs (NEAP) Pty Ltd v Ashton (1995) 128 FLR 334 at 343 per Young J.

19    In the present matter, the affidavit of Ms Beniac-Brooks is to the effect that the applicant does not yet know whether it has a cause of action against one or more persons and seeks an order for examination under O 15A r 3(2)(a) in order to obtain further information to assist it in determining whether it has causes of action against both identified and unidentified respondents. That is, the applicant is not seeking limited information of the kind with which O 15A r 3 is concerned. Again, to adopt Siopis J’s language, this is an attempt impermissibly to “blend” the powers in O 15A r 3 and O 15A r 6.

20    In written submissions, however, the applicant also adopted another position, asserting that the contemplated proceedings were not “speculative”, but that the applicant had in mind “a proceeding attended by reasonable cause to believe that it has a right to obtain relief in relation to infringement of the Oates Registered Design”. As already noted, this was not the tenor and effect of the affidavit of Ms Beniac-Brook filed in support of the current application. Notwithstanding Ms Beniac-Brooks’ affidavit, however, the applicant’s counsel’s further submissions indicated that the applicant sought also to maintain this position. Indeed, in written submissions, with reference to the persons it sought to examine, the applicant expressly stated:

The Court is further entitled to assume, on the facts before it, and particularly in the absence of any response from the respondent which would assist to clarify the matter, conclude [sic] that such persons were directly or indirectly responsible for, or otherwise materially involved in authorising and directing the particular course which the company followed, in relation to the matter of concern to Oates, being infringement of the Oates registered design, on the basis of either obvious imitation or fraudulent imitation.

As noted above, the applicant sought to examine Peter Charles Edmondson and Timothy Edmondson.

21    If the applicant’s true position is that it does in fact have sufficient knowledge to conclude that it has a cause of action against the respondent for design infringement, as it invited the Court to assume, then it would also appear that it has sufficient knowledge of the identity of the persons against whom it would wish to commence proceedings, on the basis that would it allege that these persons were principally responsible for the infringement.

22    In this event, the object of the current application must simply be to gather more information in support of the applicant’s infringement claim (including about those who might have been involved in the infringement in some way). As discussed above, O 15A r 3 is not designed to serve such an objective.

23    This morning, counsel for the applicant sought to avoid this conclusion by submitting that the applicant wished to ascertain whether it had other causes of action against persons referred to in the discovered documents, as discussed in Ms Beniac-Brooks’ affidavit. As discussed above, this is not the function of O 15A r 3. Counsel referred to Austal Ships Pty Ltd v Thurlow (No 2) [2007] FCA 202 (‘Austal Ships’). The situation in that case was, however, very different from the present because in Austal Ships, the alleged breach of confidence and copyright essentially arose out of one known incident and the causes of action were relatively clear.

24    Leaving aside that the applicant apparently seeks to use O 15A r 3 to fulfil an objective foreign to it, the applicant has also failed to satisfy me that it has in fact made “reasonable inquiries” to ascertain the description of the person or persons concerned. The making of reasonably inquiries of this kind is a precondition of an order under O 15A r 3: see Hooper at 10 [31] and Lynx at 378-379 [34]-[37]. Whilst an applicant is not required to exhaust all possible avenues of inquiry, an applicant is required to make those inquiries that are reasonable in the circumstances: see C7 Pty Ltd v Foxtel Management Pty Ltd [2001] FCA 1864 at [44]. Ms Beniac-Brooks’ affidavit indicates that the documents obtained on preliminary discovery contain names and other descriptive information from which the applicant might obtain information which would enable it to ascertain the details with which O 15A r 3 is concerned. There is no evidence that reasonable inquiries arising from the discovered documents have been made, or alternatively, are unable to be made.

25    Counsel for the applicant invited the Court to take a different view of the effect of Ms Beniac-Brooks affidavit. In written submissions, the applicant submitted that:

The Beniac-Brooks Affidavit constitutes an invitation, as it were, for the Respondent to assist the Applicant to overcome its concerns as to there being no or insufficient information disclosed through the discovery concerning the person or entity involved in creation of, for example, the moulds, as referred to in the email from Lucy to Tim Edmondson of 1 April 2010 at 10:17 pm …

26    Counsel also referred to “extensive and detailed statement and description of issues of concern to Oates” as reflected in previous correspondence between the parties. The applicant’s counsel submitted that “the disclosure of these issues, accompanied by a request for assistance in resolving the same, satisfied the requirement for all reasonable enquiries having been made by the applicant’s solicitors”.

27    The respondent is not, however, under a legal obligation to assist the applicant generally with its inquiries. Save for the obligations to which the Court’s orders of 5 April 2012 gave rise, it is very largely a matter for the respondent to determine whether, and to what extent, it provides information to the applicant. Counsel for the applicant stated this morning that the applicant was not at this stage challenging the respondent’s compliance with the Court’s orders of 5 April 2012. That the applicant has detailed its concerns can be accepted, but this fact does not give rise to a duty in the respondent to address those concerns, and nor does it establish that the applicant has made all “reasonable inquiries” to address such concerns.

28    For the reasons stated, I would dismiss the application for an order for examination under O 15A r 3(2)(a) of the 1979 Rules.

29    In written submissions, the applicant also sought an extension of time in respect of the applicant’s decision as to whether to commence proceedings. As it happened, on 28 May 2012, the Court extended the relevant period to 29 June 2012 in the circumstances set out in an email from my associate to the parties dated 28 May 2012.

Associate:

Dated:    18 June 2012