FEDERAL COURT OF AUSTRALIA

Selth v Australasian Barrister Chambers Pty Limited (No 2) [2016] FCA 46

ORDERS

NSD 975 of 2014

NSD 1019 of 2014

THE COURT ORDERS THAT:

1.    The application to adjourn the trial of the action is refused.

2.    The application for leave to file and serve a cross-claim is refused.

3.    The notice to produce issued by the second respondent dated 27 January 2016 is set aside.

4.    The application for leave to appeal from the order dismissing the application for adjournment of the trial is refused.

5.    The costs of each matter dealt with in these orders are reserved for later determination.

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

EX TEMPORE REASONS FOR JUDGMENT

1    This is an application that is made this morning by all respondents other than the identified first respondent which has been placed in liquidation by orders of the Supreme Court.

2    The application is made to adjourn the trial of the proceeding, which has been set down for hearing for Monday, 1 February 2016 to Friday, 5 February 2016. The application to adjourn the proceeding is put on the basis that the respondents I mentioned wish to and seek leave to bring a cross-claim against particular individuals asserting particular things. The cross-claim is said to be one in which it will be asserted that there was misleading conduct on the part of a number of members of the committee of the unincorporated body Australian Bar Association when, approximately, two years ago it sought to and did file applications for particular trade marks and then sought to make decisions to initiate a litigation against the respondents.

3    The respondents in this proceeding seek to assert that that conduct, because it lacked standing and for other reasons, is conduct which is properly characterised as misleading conduct. The proposed cross-claim has not been formulated or reduced to the precision one would expect but, nevertheless, reflects the essential elements of what would be sought to be put in a cross-claim in the proceeding.

4    The second aspect of the application involves the notion that the efficient disposition of the questions in issue in the proceeding would be aided by adjourning the matter in order to enable a determination at an administrative level within the Intellectual Property Office of Australia concerning contests as to the trade mark applications which are opposed. It is said that adjourning this matter would enable the proceeding on the trade mark question to be resolved, which may well then have consequences in terms of the present proceedings. Those consequences might flow from whether or not there is a determination in favour of the applicants or the opponents to the trade mark.

5    The proceeding, as I have mentioned, has been set down for five days next week. We are here today on 28 January 2015 on the cusp of the proceedings. The question of a cross-claim by the respondents has been a matter of debate for some very considerable period of time going back to the latter part of 2014 when orders were made that a cross-claim be filed by 6 February 2015 and then there were orders extending the time for doing so until 27 February 2015 and then further orders were made further extending the time until 20 March 2015. The question of a cross-claim seems not to have been agitated further because the respondents disavowed any interest in prosecuting a cross-claim.

6    The matter was most recently dealt with in the discussions which took place in relation to an interlocutory hearing on 18 December 2015 in Sydney in the context of discovery application when, again, the question was raised as to whether or not the respondents sought to impugn the title of the applicants by making a cross-claim for revocation of particular marks or making a cross-claim which would frame claims the respondents would seek to assert against the applicants however they might be precisely ultimately defined.

7    At that proceeding, the respondents disavowed any interest in a cross-claim and, of course, the issues which would be sought to be made the subject of the cross-claim, are issues which have been identified and have been alive for some very considerable period of time on the pleadings.

8    In the interlocutory application in Sydney on 18 December 2015, there was substantial debate about the question of discovery of various categories of documents and, in the course of that debate, there was a reasonably thorough analysis of the issues in controversy raised by the pleadings in this proceeding. I dealt with that matter by reviewing all of the documents in the matter in the course of the immediately following weekend and then in the working days after that weekend on 22 December 2015 I published a judgment which dealt with the discovery questions but also sought to comprehensively distil the scope of the controversy on the pleadings.

9    The questions which would be sought to be agitated by the proposed cross-claim are matters which have been alive in the context of those issues, as I have identified, and have been alive for some considerable time. It is, frankly, very late in the day to now, on the cusp of the trial, be saying that the interests of justice are best served and the interests of expedition, costs and efficiency are best served by putting off a trial which, no doubt, the parties have worked up so that an administrative proceeding in the Australian Intellectual Property Office might take its course and then, having come to some sort of resolution at that level would itself be determinative of the proceeding in this Court.

10    I rather think the reverse is much more likely to be true and that the canvassing of factual questions about rights, interests, standing, obligations and duties in respect of any of these particular matters in controversy in this matter is likely to be of assistance to the administrative decision-making within the Trade Marks Office in relation to the trade marks in due course. So the end result of these considerations is such that I am not persuaded that the interests of justice are served by adjourning the matter.

11    Mr Minus, on behalf of those remaining respondents, agitates the proposition that, well, the interests of justice are best served because the administrative matters will be efficacious in terms of the issues in controversy here and, secondly, that there is some authority for the proposition that where there are proceedings, within the Intellectual Property Office which might touch upon questions in issue in the litigation, there might be some utility in adjourning the litigation. Reference is made to Enviro Pak Pty Ltd v New Horticulture Pty Ltd (No 2) [2013] FCA 624, a decision of Griffiths J. Each case, of course, turns on its merits and, in this particular case, we are so close to the commencement of the trial of the action that I am not persuaded that there are any real merits in adjourning the matter to enable the Trade Marks Office to embark upon things in March which may have some relevance or contingent reference to this proceedings.

12    Of course, the other thing to note about the questions in the Patents Office, in respect of that decision, is that questions within the Patents Office going to difficult questions of novelty and obviousness, prior art and distinguishing prior patents is a matter of some technical precision which may be of some value and assistance to a Court, ultimately. That is not the question here. The question here involves questions of fact going to rights, duties, obligations and entitlements which, once resolved within the framework of the current controversy, might well be of greater assistance to the Trade Marks Office than the reverse, as I have already indicated.

13    I am not persuaded that the matter should be adjourned and I am not persuaded that leave should be granted to frame and file and prosecute a cross-claim, which involves a question of contended misleading conduct against individuals in relation to the filing of prosecution of the applications in respect of individuals who acted two years ago.

14    The applicants in the proceeding have filed an interlocutory application, which is addressed this morning, by which they seek an order setting aside a notice to produce issued by the second respondent, Mr Minus, on 27 January 2016, by which particular documents are sought. The notice to produce seeks a range of documents and contains eight paragraphs in all and the notice directs attention to particular paragraphs of the affidavit of Mr Phillip Alan Selth, sworn 22 April 2015 and filed in the Court on 23 April 2015.

15    The rule under which the notice issues is r 20.31 and that rule provides in part, at least, that a party may serve on another party a notice to produce in accordance with Form 39 for the inspection of any document mentioned in a pleading or affidavit filed by the second party and, of course, the relevant document here is the affidavit of Mr Selth, which is an extensive affidavit, sworn 22 April 2015. I have had the benefit of looking at this affidavit closely before the proceeding this morning and looking at the paragraphs which are addressed by the notice to produce. I do not propose to go through each individual paragraph of the notice to produce because I am satisfied that having regard to each one of them, the call for the production of documents does not fall within the scope of the rule.

16    That follows because each of the documents which are sought are not documents mentioned in the affidavit of Mr Selth. They seem, more properly, to be characterised as references in the notice to produce to documents, which might be described as classes or categories of documents, which the issuer of the notices seeks to secure much in the way of de facto discovery. The precise particular question that needs to be addressed, in relation to such a notice, is whether or not the affidavit actually and directly refers to the document sought or is sufficiently precise that one can say that there is a document mentioned in the sense that the rule uses that term.

17    The particular documents which are sought, and all of the various eight paragraphs of the notice, are not documents which are mentioned in the affidavit in that sense.

18    Accordingly, I set aside the notice to produce.

19    The application I now have before me is an application for leave to appeal from an interlocutory decision, which is that the adjournment application be dismissed. The legal test to be applied, in relation to an application for leave to appeal, is whether or not the decision is attended by sufficient doubt to warrant review and consideration by the Full Court of this Court. On some occasions, where there are significant contested questions, particularly questions of law, it may be that the views can be formed quite readily that such questions require consideration by a Full Court of this Court.

20    In this particular case, what is really pressed is, essentially, a re-agitation of the issue which was determined by the interlocutory application itself. Having regard to the fact that the cross-claim, which is sought to be agitated (and which requires leave) has not been formulated and also having regard to the fact that the content of the cross-claim, which would be sought to be agitated goes to matters as I have earlier described (but matters which are and have been alive as questions for some very considerable period of time), I am not satisfied that the decision to refuse the adjournment is attended by sufficient doubt to warrant consideration by the Full Court of this Court as to the exercise of the discretion not to grant the adjournment.

21    Accordingly, the application for leave to appeal from the decision to refuse the adjournment is, itself, refused.

Associate:

Dated:    28 January 2016