FEDERAL COURT OF AUSTRALIA

Christian v Société Des Produits Nestlé SA

[2015] FCA 1341

THE COURT ORDERS THAT:

1.    The interlocutory application filed on 18 November 2015 be dismissed.

2.    The applicant pay the costs, if any, of the respondents incurred in respect of the interlocutory application.

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

REASONS FOR JUDGMENT

(REVISED FROM THE TRANSCRIPT)

1    This is an interlocutory application for a stay of two orders made by the Full Court on 4 November 2015. It has been called on urgently today because this is the last day on which James Christian, the appellant in the Full Court and the applicant for special leave to appeal to the High Court, has to comply with those orders: see Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153.

Background

2    On 4 November 2015, the Full Court made orders upholding the respondents’ (the Nestlé parties) cross-appeal. The Full Court made orders 8 and 11 that required that the registration of the Australian business name, A-SASHI VITAMINS, be cancelled and, within 14 days, Mr Christian take all necessary and reasonable steps to cancel the registration of the domain name www.a-sashi.com.au.

3    Mr Christian’s affidavit in support of his application for a stay under r 41.11 of the Federal Court Rules 2011 (Cth) asserted its purpose as being to set out the grounds on which he sought the stay. He said that yesterday, 17 November 2015, he had filed an application for special leave to appeal from the whole of the Full Court’s judgment. Mr Christian’s affidavit annexed a copy of the application for special leave. It contained 17 grounds of appeal, the first two of which asserted that the Full Court had erred in failing to determine that the Federal Circuit Court had erred, first, in failing correctly to apply the proviso in s 120(2) of the Trade Marks Act 1995 (Cth) when determining the question of trade mark infringement and, secondly, in determining that the A-SASHI word mark and each of the first and second A-SASHI device marks were deceptively similar to, and thereby infringed, each of the Nestlé parties’ three registered trade marks.

4    The other 15 grounds of appeal in one form or another make allegations that, first, one of the members of the Full Court, Bennett J, ought to have recused herself when Mr Christian applied to her Honour to do so. Her Honour rejected that application for reasons she gave also on 4 November 2015: Christian v Société Des Produits Nestlé SA (No 1) [2015] FCAFC 152. Secondly, those grounds alleged that her Honour or the Full Court, in a variety of ways, had been biased, or could be apprehended to have been biased in determining the proceedings as they did.

Mr Christian’s submission

5    Mr Christian argued that the filing of the application for special leave to appeal demonstrated that he had substantial grounds which ought be considered by the High Court for the purposes of it determining whether he ought be granted special leave to appeal and, if so, any such appeal. He said that he would suffer irreparable harm by having to comply with orders 8 and 11 made by the Full Court. He said, on an inquiry by me as to the nature of that harm, that it would cost him between about $30 to $40 to seek to re-register the business name and domain name if they were cancelled, and that there was no necessary guarantee that he would be able to obtain such re-registrations. He argued that there was no evidence that the stay would pose any risk to the Nestlé parties and that it was only fair that he be granted a stay to preserve the status quo while the special leave application was pending. He argued that no prejudice would be suffered by the Nestlé parties if the two orders were stayed and that his allegations relating to actual and apprehended bias were supported by facts.

Consideration

6    An applicant for special leave to appeal is a person who seeks to persuade the High Court under s 35A of the Judiciary Act 1903 (Cth) to exercise its jurisdiction to grant special leave to appeal to that court if the challenged decision involves either a question of public importance or circumstances where the grant would be in the interests of justice. Relevantly, in such an application, the court must consider the four issues raised by Brennan J in Jennings Construction Limited v Burgundy Royale Investments Pty Limited (No  1) (1986) 161 CLR 681 at 685, namely: (1) whether there is a substantial prospect that special leave will be granted; (2) whether the applicant has failed to take whatever steps are necessary to seek a stay from the court in which the matter is pending; (3) whether the grant of a stay will cause loss to the respondent; and (4) where the balance of convenience lies.

7    As is clear, the second issue is not relevant here since I am considering that very question. Brennan J addressed an argument there that special leave was unlikely to be granted saying that (161 CLR at 685):

It is undesirable to canvass the arguments in advance. I do not, however, think that the prospect of a grant of special leave is insubstantial.

8    And, in that case, his Honour granted a stay on certain conditions. Likewise, in Rinehart v Welker (2012) 83 NSWLR 347 at 358 [49] Bathurst CJ, Beazley and McColl JJA said that it was not an essential prerequisite for a grant of a stay that the Court find that there are substantial prospects of success of the special leave application. They said that:

There may be cases, albeit rare, when the other factors material to the grant of a stay may be of such significance that a stay should be granted even if this Court is unable to reach the view that the application has substantial prospects of success.

9    Nonetheless, in Jennings 161 CLR at 684, Brennan J said that:

A stay to preserve the subject-matter of litigation pending an application for special leave to appeal is an extraordinary jurisdiction and exceptional circumstances must be shown before its exercise is warranted. If an order for a stay is made, the respondent is kept out of the benefit of the order of the court in which the matter is pending until the hearing of the application for special leave to appeal.

10    His Honour referred to the earlier decision in Marconi’s Wireless Telegraph Company Limited v Commonwealth (No 3) (1913) 16 CLR 384 at 386 where the Court held that it would not ordinarily grant an application for a stay of that kind unless very strong and special grounds were shown. In Edelsten v Ward (No 2) (1988) 63 ALJR 346 Brennan J re-emphasised that the jurisdiction to grant a stay is an exceptional one which is exercised only in extraordinary circumstances. He said:

It is as well to emphasise that observation again lest the impression be created that, in the conduct of litigation, the orders of this Court are available to keep matter in statu quo until the litigation is finally resolved. That is not the purpose of the inherent jurisdiction. Something quite exceptional must be shown before that jurisdiction is exercised.

11    Moreover, in Rahme v Commonwealth Bank of Australia (1993) 117 ALR 618 at 620 Deane J said, in a case analogous to a final decision of a Full Court of this Court, that apart from the exceptional case in which special leave to the High Court had actually been granted:

the final decision of the highest appellate court of a State or Territory is conclusive of the particular litigation. That being so, it is only in demonstrably exceptional circumstances, such as the immediate threat of the destruction of the subject-matter of the litigation or of grave and irreparable damage being sustained, that an application to this Court for interlocutory relief can be justified.

12    His Honour made similar observations in Federal Commissioner of Taxation v Myer Emporium Ltd (No 1) (1986) 160 CLR 220 at 222-223. There he emphasised that, if a stay were to be ordered, special circumstances had to exist to justify departure from the ordinary rule that a successful litigant is entitled to the fruits of his litigation pending the determination of any appeal and that such a stay was necessary in order to prevent the appeal being rendered nugatory. The Full Court made similar observations in Petrotimor Companhia de Petroleos SARL v Commonwealth [2003] FCAFC 82 at [13]-[23] per Beaumont J, with whose reasons in this respect Black CJ and Hill J agreed, as did Branson J in refusing to stay an extradition order following a decision of a Full Court of five judges pending an application for special leave to appeal in New Zealand v Moloney [2006] FCA 1363; see too Catalano v Managing Australian Destinations Pty Limited (No 2) [2014] FCA 597.

13    I am not persuaded that any irreparable loss or damage will be suffered by Mr Christian if he has immediately to comply with orders 8 and 11 made by the Full Court. The likelihood of other persons wishing to use a name or trademark that the Full Court has enjoined him from using is, in my opinion, fanciful. Any person who sought to do so would be likely to be met with a prompt application by the Nestlé parties to protect the fruits of the victory already found to be theirs by the Full Court’s decision. Moreover, Mr Christian will not suffer any substantive harm given the trivial cost that he informed me would need to incur for him to reapply for those registrations.

14    Additionally, I am of opinion that it is sufficiently unlikely that the High Court would grant Mr Christian’s application for special leave to appeal, to the point where it would not be appropriate to grant a stay. The first two grounds of his application raised questions of law concerning the way in which the Full Court applied settled principles in the exercise of its power of re-hearing when making findings about the deceptive similarity of the marks. Those grounds do not involve any suggestion of a departure from those settled principles or the need for the High Court to re-examine those principles, particularly in light of its recently having done so.

15    The other grounds of Mr Christian’s application for special leave alleged that there was an apprehension of, and actual, bias in respect of Bennett J and or the Full Court on grounds that have almost fanciful features. These include the publication on the website of a floor of barristers’ chambers of a statement that her Honour was a distinguished alumna of that floor. Her husband is a member of that floor. Her Honour practiced from it before she was appointed to this Court more than 12 years ago, and senior counsel, who appeared for the Nestlé parties in the appeal, also is a member of that floor. The application suggested that her Honour or the Full Court might not bring or have brought an impartial mind to the resolution of the appeal.

16    Those allegations are, in my view, ludicrous and an abuse of the process of the Court to the extent that they are relied on here. No sensible person might think that, after a person has been appointed a judge, she might be influenced by the fact that she had come from a floor of barristers or that her husband practiced on that floor or that counsel appearing for a party happened also now to practice on that floor or that the floor promotes itself as having an association with the judge because she was a notable alumna: Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 at 344-345 [6]-[8] per Gleeson CJ, McHugh, Gummow and Hayne JJ.

17    Likewise, the application alleged that her Honour should have disqualified herself because she had had a supposed 20 year connection with a solicitor who had been an original founding partner and colleague of the solicitors acting for the Nestlé parties and therefore she might not be impartial. Again, in my opinion, that bare allegation is fanciful.

18    So is the allegation that her Honour showed actual bias in the way that she dealt with an interlocutory application to join new parties after judgment had been reserved by the Full Court, in circumstances where those new parties had acquired, or were proposing to acquire, rights to the trademarks subject to the litigation. That allegation raised no reasonably arguable claim of apprehension of bias, let alone of the much more serious allegation of actual bias.

19    The arguments are the weaker because there is no suggestion that the Full Court erred in proceeding to make the factual findings that it did or that it should not have made the orders Mr Christian wishes to challenge. The other allegations of bias are in a similar vein.

20    In my opinion, no injustice is likely to be done by allowing the successful Nestlé parties the fruits of their victory in the Full Court.

Conclusion

21    For these reasons, I am of opinion that the application should be dismissed. Mr Christian said that he accepted that he should pay whatever costs, if any, the Nestlé parties incurred in respect of the interlocutory application filed today.

Associate:

Dated:    27 November 2015