FEDERAL COURT OF AUSTRALIA

Electrolux Home Products Pty Ltd v Delap Impex Ltd [2013] FCA 600

THE COURT ORDERS THAT:

1.    Leave be granted to the applicant to serve on the first and second respondents in Hungary the amended originating application filed on 13 June 2013 and the statement of claim filed, pursuant to orders made on that day, in accordance with the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters 1965 done at The Hague on 15 November 1965 and Division 10.6 of the Federal Court Rules 2011 (Cth).

2.    Leave be granted to the applicant to serve on the fifth defendant by email at info@deluxeappliances.com scanned copies of the following documents:

   (i)    the amended originating application;

   (ii)    the affidavit of Ian Forte sworn 16 May 2013; and

   (iii)    the affidavit of Joao Lay sworn 23 May 2013.

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

REASONS FOR JUDGMENT

1    Electrolux Home Products Pty Ltd (“Electrolux HP”) is a major manufacturer and supplier of a variety of branded whitegoods in the Australian market, including Electrolux and AEG. It is a wholly owned subsidiary of AB Electrolux. AB Electrolux is a Swedish company and, relevantly, the owner in Australia of registered trade marks for Electrolux and AEG appliances. Electrolux HP is the only authorised user of the Electrolux and AEG trade marks for products sold in Australia.

2    On 17 May 2013 Electrolux HP filed an originating application (later amended) seeking restraining orders against Delap Impex Ltd (“Delap”), a foreign company, and four individuals apparently associated with it. The evident purpose of the orders is to prevent Delap from advertising, promoting or supplying Electrolux branded appliances to Australian consumers in contravention of Australian laws.

3    By an amended interlocutory application Electrolux HP seeks leave to serve the amended originating application and a statement of claim (yet to be filed) on Delap (the first respondent) and Andras Paradi (the second respondent) outside Australia, and for substituted service by email on the fifth respondent, Suzanne Szabo.

Application for leave to serve the first and second respondents outside of Australia

4    Rule 10.43 of the Federal Court Rules 2011 (Cth) (“the Rules”) relevantly provides:

(1)    Service of an original application on a person in a foreign country is effective for the purpose of a proceeding only if:

        (a)    the Court has given leave under subrule (2) before the application is served;

         …

(2)    A party may apply to the Court for leave to serve an originating application on a person in a foreign country in accordance with a convention, the Hague Convention or the law of the foreign country.

(3)    The application under subrule (2) must be accompanied by an affidavit stating:

        (a)    the name of the foreign country where the person to be served is or is likely to be; and

        (b)    the proposed method of service; and

        (c)    that the proposed method of service is permitted by:

                           (i)    if a convention applies — the convention; or

                           (ii)    if the Hague Convention applies — the Hague Convention; or

                           (iii)    in any other case — the law of the foreign country.

(4)    For subrule (2), the party must satisfy the Court that:

        (a)    the Court has jurisdiction in the proceeding; and

        (b)    the proceeding is of a kind mentioned in rule 10.42; and

        (c)    the party has a prima facie case for all or any of the relief claimed in the proceeding.

                        .....

5    The reference to the Hague Convention is a reference to the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (done at The Hague on 15 November 1965). See r 10.41 for this definition and the definition of “convention”.

6    Rule 10.44 applies to service of documents other than an originating process. It replicates the requirements of r 10.43. Division 10.6 (rr 10.63 to 10.68) deals with service of local judicial documents on foreign countries which are parties to the Hague Convention.

7    Practice Note CM12 requires that applications for leave to serve court documents (including originating process) on a person in a foreign country under Div 10.4 of the Rules should support the application with evidence of information obtained from the Private International Law Section of the Commonwealth Attorney-General’s Department as to the appropriate method of transmitting documents for service in that country. That evidence is to include whether documents:

    (a)    should be transmitted in accordance with an international agreement or arrangement and the details of that agreement or arrangement;

    (b)    should be transmitted for service via the diplomatic channel; or

    (c)    may be transmitted for service by a private agent within the territory of that country.

8    The interlocutory application was accompanied by three affidavits of John Wynne Fitzpatrick, a solicitor who describes himself as “the Applicant’s legal consultant”, sworn on 15 and 17 May 2013 and Ian Forte, the Regulatory Affairs Manager of Electrolux HP, sworn on 16 May 2013. All these affidavits were filed on 17 May 2013, presumably with the originating application and the interlocutory application. Two affidavits were filed on 23 May 2013 – one from Marian Helen Elizabeth Hall, a solicitor, the other from Melissa Owens, an employee of Electrolux HP – both sworn on 22 May 2013. Ms Hall’s affidavit deals with matters relating to the application for substituted service. On 28 May 2013 Electrolux HP filed an affidavit from Joao Lay, a consumer who purchased a defective AEG branded oven through a website operated by Delap and Mr Paradi.

What is the foreign country where the person to be served is or is likely to be?

9    According to the evidence in Mr Forte’s affidavit, Delap is situated in Hungary. It appears that its registered office is in Budapest. It also appears to maintain a website with the domain name of www.euroappliances.com. A “whois” domain name search carried out by Mr Fitpatrick reveals that Andras Paradi, the second respondent, is the registrant, administrator, technical contractor, and billing contractor for the website. The search revealed that Mr Paradi gave his address as “Delap Impex Kft” at the same Budapest street address where the company’s office is located.

10    I am satisfied on the basis of this evidence that both Delap and Mr Paradi are, or are likely to be, in Hungary.

What is the proposed method of service?

11    In its original form the interlocutory application sought leave to serve Delap and Mr Paradi by post and by email. Notwithstanding the requirements of the Rules, the proposed method of service was not raised in any one of the plethora of affidavits. Nor did the affidavits touch upon whether the Hague Convention or any other convention applied or, if not, whether the two proposed methods were permitted by Hungarian law. One affidavit suggested that service by post on the registered office of the company was permissible under the domestic laws of Hungary. None of the evidence suggested that service by email was permissible. Nor did the affidavits include the information required by Practice Note CM12. That was only supplied after the proceeding was adjourned at the request of senior counsel to enable some of the deficiencies in the evidence to be rectified. The necessary information came in the form of annexures to a fourth affidavit from Mr Fitzpatrick sworn on 13 June 2013.

12    The method of service on Delap and Mr Paradi proposed in the amended interlocutory application is to send a Letter of Request for Service Abroad of Judicial or Extrajudicial Documents pursuant to the Hague Convention to the Ministry of Public Administration and Justice at the Department of Justice Cooperation and Private International Law at a post office box in Budapest Hungary together with a certificate of service, a sealed copy of the originating application and the statement of claim, together with an official translation, and an undertaking as to costs.

Is the proposed method of service permitted by the Hague Convention?

13    As Hungary is a signatory to the Hague Convention, Electrolux HP must show that the proposed method of service is permitted by the Hague Convention. For the following reasons, I am satisfied that it is.

14    Article 2 of the Hague Convention requires each Contracting State to designate a Central Authority which will undertake to receive requests for service coming from other Contracting States and to proceed in conformity with the provisions of Articles 3 to 6. The Central Authority designated by Hungary is the Ministry of Public Administration and Justice. Its offices are located at the Department of Justice Cooperation and Private International Law at the postal address nominated in the amended interlocutory application. Art 5 provides:

The Central Authority of the State addressed shall itself serve the document or shall arrange to have it served by an appropriate agency, either -

   a)    by a method prescribed by its internal law for the service of documents in domestic actions upon persons who are within its territory, or

   b)    by a particular method requested by the applicant, unless such a method is incompatible with the law of the State addressed.

Subject to sub-paragraph (b) of the first paragraph of this Article, the document may always be served by delivery to an addressee who accepts it voluntarily.

If the document is to be served under the first paragraph above, the Central Authority may require the document to be written in, or translated into, the official language or one of the official languages of the State addressed.

That part of the request, in the form attached to the present Convention, which contains a summary of the document to be served, shall be served with the document.

15    Hungary has declared that service under the first paragraph of Art 5 shall only be applied if the document to be served is accompanied by an official translation into the Hungarian language. The amended interlocutory application proposes that the documents to be served will be accompanied by official Hungarian translations.

16    I will now consider whether the criteria required by r 10.43(4) of the Rules have been met.

Does the Court have jurisdiction in the proceeding?

17    Section 19 of the Federal Court of Australia Act 1976 (Cth) (“FCA Act”) provides that the Court has such original jurisdiction as is vested in it by laws made by the Parliament. The originating application seeks relief under the Australian Consumer Law contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth) (“ACL”). Section 138 of the Competition and Consumer Act relevantly provides that jurisdiction is conferred on this Court in relation to any matter arising under the ACL in respect of which a civil proceeding has been instituted under it. The originating application also seeks remedies to restrain trade mark infringements. Section 191(1) of the Trade Marks Act 1995 (Cth) (“Trade Marks Act”) confers jurisdiction on this Court with respect to matters arising under that Act.

18    The requirement in r 10.43(4)(a) has therefore been met.

Is the proceeding of a kind mentioned in rule 10.42?

19    Rule 10.42 relevantly provides that, subject to r 10.43, an originating application may be served on a person in a foreign country in a proceeding that consists of, or includes, any one or more of the kinds of proceedings mentioned in the table to the rule. Relevantly, they include:

•    Proceeding based on a cause of action arising in Australia (item 1).

•    Proceeding based on the contravention of an Act that is committed in Australia (item 12).

•    Proceeding seeking an injunction ordering a person to do, or to refrain from doing anything in Australia (whether or not damages are also sought) (item 23).

20    It is unnecessary to consider whether any of the causes of action upon which Electrolux HP relies to support the relief sought arises in Australia or whether there was a contravention of an Act in Australia. It is enough for present purposes that the originating application includes a proceeding of the kind mentioned in one of the items in the table. Paragraph 14 of the originating application is in the following terms:

Pursuant to section 18 of the Australian Consumer Law, the First Respondent be restrained from advertising, promoting, selling or supplying electrical appliances bearing the trademarks Electrolux, AEG, Kelvinator, Simpson, Dishlex, Westinghouse or Chef to consumers or purchasers which are not the same or identical to the electrical appliances bearing those trademarks advertised, promoted, sold or supplied by the Applicant to consumers or purchasers of those appliances in Australia.

21    A similar order is sought against Mr Paradi in paragraph 24.

22    Section 18 of the ACL, prohibits a person in trade or commerce from engaging in conduct that is misleading or deceptive or is likely to mislead or deceive.

23    Although the injunctions sought are not expressly limited to conduct in Australia, counsel submitted that they were not intended to have any extra-territorial operation.

24    As the relief sought includes an injunction ordering a person to refrain from doing something in Australia, I am satisfied that the proceeding is of a kind mentioned in r 10.42.

Does the applicant have a prima facie case for all or any of the relief claimed in the proceeding?

25    The principles applicable to the assessment of whether an applicant for leave has a prima facie case were reviewed in Australian Competition and Consumer Commission v Prysmian Cavi E Sistemi Energia S.R.L (No 4) [2012] ATPR 42-423; [2012] FCA 1323; (“ACCC v Prysmian Cavi”) (Lander J) and Apotex Pty Ltd v Les Laboratoires Servier (No 2); (2012) 293 ALR 272; [2012] FCA 748 (“Apotex”) (Bennett J). In summary:

(1)    It is sufficient to attract the discretion to grant leave if there is a prima facie case for any of the relief sought in relation to any of the causes of action relied upon for the relief sought: see ACCC v Prysmian Cavi at [73]-[76].

(2)    If a case for relief is fundamentally deficient, then a prima facie case will not have been made out: see ACCC v Prysmian Cavi at [80].

(3)    The purpose of the prima facie case test is to see whether the material before the Court discloses the existence of a controversy between the parties that warrants the use of the Court’s processes to resolve it and the involvement of the proposed respondent in litigation in an Australian court: Century Insurance (in provisional liquidation) v New Zealand Guardian Trust Limited [1996] FCA 376 (Lee J); ACCC v Prysmian Cavi at [78], [88].

(4)    Substantial inquiry is not called for. It is unnecessary to adduce all the evidence that would be presented at trial. What is required is that the allegations in the originating application are capable of being proved. See ACCC v Prysmian Cavi at [89]-[96]. Hearsay evidence will suffice: Evidence Act 1995 (Cth), s 75; ACCC v Prysmian Cavi at [97]-[120].

(5)    “A prima facie case for relief is made out if, on the material before the court, inferences are open which, if translated into findings of fact, would support the relief claimed”: Ho v Akai Pty Ltd (in liq) (2006) 24 ACLC 1526; [2006] FCAFC 159 at [10]; Western Australia v Vetter Trittler Pty Ltd (in liq) (1991) 30 FCR 102 at 110.

26    Applying these principles I am persuaded that there is a prima facie case for at least some of the relief claimed.

27    All the relief claimed in the proceeding is injunctive relief. Section 232 of the ACL provides that a court may grant an injunction if it is satisfied that a person has engaged, or is proposing to engage, in conduct that constitutes or would constitute, amongst other things: (a) a contravention of a provision of Chapter 2 (which relevantly contains s 18), 3 (which relevantly contains ss 29, 54, 58, 64A, 102 and 106) or 4; or (e) being in any way, directly or indirectly, knowingly concerned in, or party to, the contravention by a person of such a provision. Section 126 of the Trade Marks Act permits a court to grant an injunction in an action for trade mark infringement.

28    So is there a prima facie case that Delap and Paradi have engaged in or are proposing to engage in such conduct?

29    The amended originating application seeks injunctions to restrain conduct that allegedly contravenes the ACL in numerous respects and to restrain trade mark infringements. Fourteen injunctions are sought against Delap and 10 against Mr Paradi. It is unnecessary to canvas all the evidence that might support every one of these injunctions. It is enough that Electrolux HP is able to make out a prima facie case in support of one alone.

30    Paragraphs 6 and 18 of the amended originating application seek orders pursuant to ss 102 and 232 of the ACL restraining Delap and Mr Paradi from giving to purchasers of electrical appliances bearing certain brand names, including AEG and Electrolux, documents evidencing a warranty against defects that does not comply with the requirements prescribed for warranties of electrical appliances under the ACL.

31    Section 102(2) of the ACL provides:

A person must not, in connection with the supply, in trade and commerce, of goods or services to a consumer:

(a)    give to the consumer a document that evidences a warranty against defects that does not comply with the requirements prescribed for the purpose of subsection (1); or

(b)    represent directly to the consumer that the goods or services are goods or services to which such a warranty against defects relates.

32    A warranty against defects is defined in subs (3) to mean:

a representation communicated to a consumer in connection with the supply of goods or services, at or about the time of supply, to the effect that a person will (unconditionally or on specified conditions):

(a)    repair or replace the goods or part of them; or

(b)    provide again or rectify the services or part of them; or

(c)    wholly or partly recompense the consumer;

if the goods or services or part of them are defective, and includes any document by which such a representation is evidenced.

33    Section 102(1) provides that the regulations may prescribe requirements relating to the form and content of warranties against defects.

34    Regulation 90(1) of the Competition and Consumer Regulations 2010 (Cth) prescribes requirements for both the form and content of warranties against defects. Paragraph (c) provides that a warranty against defects must include the text mentioned in subreg (2). That text is as follows:

Our goods come with guarantees that cannot be excluded under the Australian Consumer Law. You are entitled to a replacement or a refund for a major failure, and compensation for any other reasonably foreseeable loss or damage. You are also entitled to have the goods repaired or replaced if the goods fail to be of acceptable quality and the failure does not amount to a major failure.

35    Mr Forte testified that the website of Deluxe Appliances (deluxeappliances.com.au, later euapplicances.com) advertised whitegoods bearing the AEG and Electrolux marks for sale to the Australian market. Mr Lay said that he purchased a defective AEG wall oven through the website. Mr Lay said he read the terms of a warranty on the website, but he recalls little of its content.

36    As I mentioned earlier, the domain name search showed that Mr Paradi of Delap is the registrant, administrator, technical contractor and billing contractor of the two domain names. The contact address on the euappliances site is Delap at the address of its registered office.

37    Exhibit IF1 tab 9 to Mr Forte’s affidavit is the warranty against defects advertised on the Deluxe Appliances website for the appliances it sold. It is a warranty against defects within the meaning of s 102(3) of the ACL but does not include the text prescribed by s 102(1).

38    This evidence is sufficient, at least at a prima facie level, to show that in connection with the supply of goods, Delap represented to consumers and to a consumer in particular (Mr Lay) that the goods it supplied were goods to which a warranty that did not comply with the prescribed requirements relates. Consequently, I am satisfied that there is a prima facie case for an injunction to restrain Delap from giving warranties to Australian customers who purchase AEG and Electrolux branded electrical appliances that do not comply with the requirements prescribed by s 102 of the ACL.

39    The case against Mr Paradi is that he is knowingly concerned in Delap’s contraventions of the ACL and the Trade Marks Act. To succeed, Electrolux HP will have to show that Mr Paradi had knowledge of the essential matters making up the contraventions: Yorke v Lucas (1985) 158 CLR 661 at 667, 676. In the present case, the essential matters making up a contravention of s 102(2) of the ACL are that:

(a)    Delap supplied goods or services to a consumer in trade and commerce; and

(b)    Delap gave the consumer a warranty against defects which did not comply with the prescribed requirements or represented directly to the consumer that the goods or services to which such a warranty against defects relates did not comply with the prescribed requirements.

40    For the following reasons I am satisfied that Mr Paradi is aware of the essential matters making up a contravention of the subsection.

41    There is no evidence about whether Mr Paradi is a director or other officeholder of Delap. No company search of Delap is annexed or exhibited to any affidavit, although one was apparently conducted. But he is certainly closely involved with the company and what evidence there is suggests that he is its controlling mind and will (Tesco Supermarkets Ltd v Nattrass [1972] AC 153; Hamilton v Whitehead (1988) 166 CLR 121). The evidence of Mr Paradi’s involvement appears in several affidavits. I have already referred to the documents disclosing his role in relation to the two websites. In addition, on 23 October 2012, in an email to Mr Fitzpatrick, Mr Paradi identified himself as “Andras Paradi, Delap Impex Kft.” In a letter attached to the email Mr Paradi wrote (without alteration):

Private person has the right to import electrical goods to Australia without meeting the consumer law…

We clearly state in our website the terms and conditions of sale regarding to warranty as you mentioned in your letters. Our 60 days warranty and the lack of manufacturer warranty are clear and cannot be misunderstood. Seems like you understood it as well: “Delap Impex offers very limited warranties and which are considerably less than the warranties which are required by Australian Consumer Laws” – Mark Emrose.

(Emphasis in original.)

42    The italicised statement set out in Mr Paradi’s email was wrongly attributed to Mr Emrose, who works in the Office of the Technical Regulator in South Australia. The statement was in fact made by Mr Forte in the affidavit filed in this proceeding, a draft of which had been forwarded to Mr Paradi in a cease and desist letter from Mr Fitzpatrick. It is reasonable to infer from Mr Paradi’s remarks that he admits that Mr Forte is right in that Delap’s warranties do not comply with Australian law.

43    In an email sent to Mr Fitzpatrick from Deluxe Appliances (info@deluxeappliances.com.au), in response to another cease and desist letter, Mr Paradi threatened, amongst other things, to move the website to a different domain name, to sell all Electrolux and AEG products at wholesale prices and to sell more products in Australia if he did not “stop immediately and confirm closing this case today”. In the email Mr Paradi described Delap as “just a hobby for me until now” and said that Mr Fitzpatrick could sue Delap but he would achieve nothing because it would take him (Mr Paradi) 10 minutes to set up a new company anywhere in Europe.

44    This evidence would also support the claim for injunctive relief.

45    In addition, I am persuaded that there is a prima facie case of trade mark infringement.

46    The claim against the respondents for infringement of Electrolux’s trade marks is supported by the affidavits of Mr Forte and Mr Lay and several of Mr Fitzpatrick’s affidavits.

47    AB Electrolux is the owner of various trade marks in Australia and internationally, including trade marks that consist of the word Electrolux, the word mark “AEG” and the stylised AEG image described as “tricuspid in disc in square” (“the Electrolux Trade Marks”). The Electrolux Trade Marks are registered in Australia in relation to goods and services including classes 7, 9 and 11 which include household electrical machines and appliances of certain kinds, amongst them various kitchen appliances such as electrical ovens.

48    The trade mark searches in relation to the AEG and Electrolux marks are exhibited to Mr Fort’s affidavit. They are also annexed to one of Mr Fitzpatrick’s 15 May 2013 affidavits.

49    Hanns Hallesius, Head of Group Intellectual Property for AB Electrolux, advises in a letter annexed to Mr Fitzgerald’s most recent affidavit that Electrolux HP is the only authorised user of the Electrolux Trade Marks for products sold in Australia. In an earlier letter from AB Electrolux to Delap (annexed to an earlier affidavit) Mr Hallesius stated, amongst other things, that Delap “does not authorize or consent to the use by [Delap] … of any of the Electrolux Trade Marks in connection with the importation into Australia and sale to Australian consumers of goods or services including any of the said classes”. He also stated (without alteration):

AB Electrolux regards any importation into Australia and sale to Australian consumers of goods within classes 7, 9 & 11 bearing the Electrolux Trade Marks but without the consent and authorisation of AB Electrolux to constitute as an infringement of its rights as the owner of the Electrolux Trade Marks.

50    The circumstances in which a person infringes a registered trade mark are set out in s 120 of the Trade Marks Act:

120    When is a registered trade mark infringed?

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

51    The registered owner of the trade mark has exclusive rights to use the trade mark and to authorise other persons to use the trade mark and may obtain relief if the trade mark has been infringed (s 20). But an authorised user of the mark may also bring an action for infringement of the mark, provided that it names the registered owner as a defendant (s 26). As I mentioned at the outset, Electrolux is an authorised user of the relevant trade marks in Australia. The most recent evidence is that it has the consent of the owner to bring the proceedings and it has now amended its originating application to join AB Electrolux as a defendant to the action.

52    In Paul’s Retail v Sporte Leisure Pty Ltd (2012) 202 FCR 286 at [66], the Full Court pointed out that the effect of the decision in E & H Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386 at [58] (which was not disapproved by the High Court on appeal: E & H Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144) is that “an importer of goods who sells in Australia goods to which the mark has been applied overseas uses the mark as a trade mark within the meaning of s 120”.

53    In Paul’s Retail Pty Ltd v Lonsdale Australia Ltd [2012] FCAFC 130 the Full Court affirmed the correctness of the proposition that, subject to s 123, the mere sale by an importer of goods already marked is an infringing use of the mark by the importer.

54    Here, the evidence shows that Delap sold through an Australian website goods bearing AB Electrolux’s registered trade mark. The ovens that Mr Lay received from Deluxe Appliances carried the AEG marks. Photographs of one of the ovens showing the marks are exhibited to Mr Forte’s affidavit.

55    Section 123(1) of the Trade Marks Act provides a defence to s 120. It states:

In spite of section 120, a person who uses a registered trade mark in relation to goods that are similar to goods in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to, or in relation to, the goods by, or with the consent of, the registered owner of the trade mark.

56    On an application of this nature, however, it is unnecessary to say anything about the defence. It is for a respondent to raise it, if there is evidence to support it. If it does, the onus would rest with Delap and/or another respondent to show that the AEG marks had been applied to, or in relation to, the oven by AB Electrolux or with its consent. As the evidence establishes infringement within the meaning of s 120, there is a prima facie case that Delap has infringed registered trade marks belonging to their registered owner, AB Electrolux. Having regard to the evidence about Mr Paradi’s involvement in Delap’s activities, I am also satisfied that there is a prima facie case that he is knowingly concerned in the infringing conduct.

57    It is unnecessary to decide whether there is a prima facie case for any of the other injunctions.

Should leave be granted to serve Delap and Mr Paradi outside the jurisdiction?

58    It follows that I am satisfied that the requirements of r 10.43 have been made out. I accept that I have a residual discretion as to whether or not to exercise the power (see ACCC v Prysmian Cavi at [383]) but I see no reason why I should decline to do so.

Should leave be granted for substituted service on Ms Szabo?

59    The final question concerns the application for substituted service on the fifth respondent, Suzanne Szabo.

60    The Rules require that an originating application and the statement of claim or accompanying affidavit be served personally: r 8.06. In the case of an individual, that means leaving the documents with the individual: r 10.01. For Electrolux HP to be able to leave the documents with Ms Szabo, it needs to have a street address at which she may be located. To date it has been unable to find one. It is for this reason that it applies for an order for substituted service. It wants to serve Ms Szabo by email. It relies on the affidavit of Marion Hall and one of Mr Fitzpatrick’s affidavits sworn on 15 May 2013.

61    Rule 10.24 provides:

If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the court without notice for an order:

(a)    substituting another method of service; or

(b)    specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or

(c)    specifying that the document is taken to have been served:

(i)    on the happening of a specified event; or

(ii)    at the end of a specified time.

Note: Without notice is defined in the Dictionary.

62    The Dictionary defines “without notice” as “without serving or advising another party or other person of an application made to the Court”.

63    The question, then, is whether Electrolux has shown that it is not practicable to serve Ms Szabo personally.

64    The euappliances.com website listed the Australian contact as Suzanne Szabo and the means of contact as a mobile phone number at designated times.

65    On 15 May 2013 Mr Fitzpatrick telephoned this phone number. He told Ms Szabo he needed to send her some documents. She told him he should send any papers to the Hungarian address. He replied:

No, these are documents that I need to send to you personally. Can you give me an address where I can serve you personally?

66    Ms Szabo replied:

If you want to send anything to me you can send it via the email address you have at info@deluxeappliances.com.

67    The email address to which she referred is the address nominated in the amended interlocutory application.

68    On 22 May 2013 Ms Hall, a solicitor in Mr Fitzpatrick’s firm, telephoned the same number and, posing as a consumer, spoke with one Suzanne Szabo. In the conversation Ms Hall established that Ms Szabo had an association with Delap and that she was located in Perth, Western Australia but she did not ask her for an address. Rather, she carried out a number of searches in an abortive attempt to find it. She searched the Australian electoral roll and found three Suzanne Szabos in NSW, one in Victoria and none in Western Australia. She searched the ASIC Company & Business Person Register but that turned up no-one with that name. Ms Hall also searched the Perth White Pages without success. And she arranged for a land titles search in Western Australia, again without any result. For some inexplicable reason she also searched the death notifications in the Ryerson Index for the surname “Szabo” from 1950 to 2013.

69    Ms Hall states that she believes that Ms Szabo resides or is located somewhere in Perth but asserts that she has exhausted all possible searches to locate her precise whereabouts for the purpose of effecting personal service upon her.

70    Mr Fitzpatrick states that he does not believe that it is practicable to serve the originating application personally on Ms Szabo and that the best way to bring the originating application to her attention is to send it to the email address she provided.

71    So has Electrolux HP proved that it is impracticable to serve Ms Szabo personally? What does impracticable mean in this context?

72    Tamberlin J in Ricegrowers Co-Operative Ltd v ABC Containerline NV (1996) 138 ALR 480 at 482 said of the former rule (O 7 r 9) (where the test was whether service under the Rules was “practical” rather than “practicable”) that in order to establish impracticality some attempt should be made to effect service in accordance with the Rules or some evidence led to show that it was “so obviously futile” so as not to warrant an attempt. If the suggestion was that it was necessary in every case to show futility, then I respectfully agree with Allsop J (as his Honour then was) in Humane Society International Inc v Kyodo Senpaku Kaisha Ltd [2007] FCA 124 (“Humane Society International”) who suggested that “the language of the [former] rule … may be wide enough to cover circumstances where in the light of the nature of the claim and the circumstances of the applicant and respondent service through the method provided for by following the Rules is not sensible or realistic, even if it is possible or feasible”.

73    I doubt that in Ricegrowers Tamberlin J was suggesting that an applicant for substituted service needs to show that it is futile to attempt service. His Honour was merely dealing with the case before him where no attempt had been made to effect service in accordance with the Rules. In that context, he pointed out that an applicant had to either make an attempt or prove that an attempt would be futile. Here, some effort was put into obtaining an address so as to effect personal service.

74    Tamberlin J thought that “impractical” and “impracticable” were synonymous. In Humane Society International, however, Allsop J explored the etymology of the two words and came to a different conclusion. His Honour referred at [9] to the discussion in New Fowler’s Modern English Usage at 383:

“impracticable, impractical. Impracticable means ‘that cannot be carried out, that is not feasible’ (it would be impracticable to place a ban on smoking in pubs; a manned mission to Mars is impracticable at present). In general impractical (which is a relatively recent word, first recorded in the mid-19c.) means ‘not practical, unpractical’, ie (of an idea or course of action) not sensible or realistic; (of a person) lacking the ability to do practical things. Unfortunately impractical is tending to encroach on the territory of impracticable, and it is not easy to see how they can be permanently kept apart.

75    I tend to think that the author’s fears have been realised. I frankly doubt that the differences in meaning are widely appreciated.

76    In the context of the Rules, however, I prefer the approach taken by Palmer J in Alstom Ltd v Sirakas [2010] NSWSC 669 who, when dealing with the requirement under the Uniform Civil Procedure Rules 2005 (NSW) that documents “cannot practicably be served” said at [40] that on the one hand “impracticable” does not mean “impossible” (referring to Re Conan Doyle’s Will Trusts [1971] Ch 982 at 994) and, on the other, that it does not mean “inconvenient” (citing Syndicate Mortgage Solutions Pty Ltd v El-Sayed [2009] NSWSC 207). Presumably, the (or at least a) purpose of the rule was to enable service to be effected where a party was evading personal service. In such a case persistence might pay off. In these circumstances it could not be said that personal service was impossible or not feasible. But I doubt that it was the intention of the rule to require vast resources to be put into the task. Thus, like Flick J in Statewide Secured Investments Pty Ltd v Tarrant [2011] FCA 1067 (“Statewide”), I am of the opinion that it is unnecessary for an applicant to prove that it is impossible or futile to effect personal service.

77    In both Statewide and Speedo Holdings B.V. v Evans [2011] FCA 1089 (“Speedo”) Flick J expressed the view that the present rule should not be given “a meaning more constrained” than its predecessor. Dodds-Streeton J expressed the same view in British American Tobacco Australasia Ltd v Taleb (No 1) [2012] FCA 1065. I respectfully agree. As Flick J indicated in Speedo, that view is supported by the Explanatory Statement on the new Rules which states that, with the exception of Div 10.6 and rr 10.02, 10.07 and 10.08, Part 10 merely “adopts, simplifies and streamlines the process and procedures which operated under the former Rules and does not substantially alter existing practice”. This indicates that the change in language was not intended to make it more difficult to obtain an order for substituted service under the new rule.

78    It is, however, easier to say what “impracticable” does not mean than what it does mean. None of these authorities provides any real guidance on this question. There can, of course, be problems in looking for synonyms (cf. Spencer v The Commonwealth (2010) 241 CLR 118). Still, I incline to the view that the meaning that should attach to “impracticable” in r 10.24 is the first meaning given to the word in the Macquarie Dictionary: “not practicable; that cannot be put into practice with the available means”.

79    In Speedo Flick J was satisfied that it was not practicable to effect personal service after a number of attempts had been made to do so.

80    In the present case there has been no attempt to serve Ms Szabo personally but Ms Szabo appears to be unwilling to provide an address at which she may be served. Independent efforts to find one have been unsuccessful. I am prepared to accept that Ms Szabo is unlikely to disclose an address even if pressed. For all practical purposes, then, personal service is not feasible.

81    In the circumstances I am satisfied that it is not practicable to serve Ms Szabo personally and the email address provides a ready means of bringing the documents swiftly to her attention.

Conclusion

82    Leave should be given to Electrolux HP to serve Delap and Mr Paradi by letter of request to the Hungarian Central Authority in accordance with the Hague Convention and to serve Ms Szabo by email at the nominated email address.

Associate:

Dated:    17 June 2013