FEDERAL COURT OF AUSTRALIA

International Awards Group LLC v Asian Advertising Festival (Spikes) Asia Pte Ltd (No 1) [2016] FCA 617

ORDERS

THE COURT ORDERS THAT:

1.    The applicant have leave to serve its originating application and a sealed copy of this order on the second respondent in Hong Kong in accordance with the Hague Convention.

2.    The case management hearing scheduled for 31 May 2016 be vacated.

3.    The return date for the originating process be fixed as 9.30am on 15 July 2016.

4.    The matter be stood over for further directions at 9.30am on 31 May 2016.

5.    The applicant be granted leave to remove Annexure MGU-13 from the affidavit of Melinda Gai Upton affirmed 27 April 2016.

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

REASONS FOR JUDGMENT

PERRAM J:

1. Introduction

1    This is an application for leave to serve an originating application, fast track statement and genuine steps statement on the first respondent (‘AAF’) in Singapore and the second respondent (‘Haymarket’) in Hong Kong.

2    Singapore is not a party 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 (‘the Hague Convention’) but Hong Kong is.

3    Rule 10.43(2) of the Federal Court Rules 2011 (Cth) provides that 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.’ The Court may only accede to the application if it has jurisdiction in the matter, if it involves a proceeding of a kind mentioned in r 10.42, and if the applicant has a prima facie case for all or any of the relief claimed: r 10.43(4).

2. Have the requirements of rule 10.43(4) been met?

4    Evidence about these matters was given by affidavit by the applicant’s solicitor, Ms Melinda Upton. Her evidence was as follows. The applicant (‘IAG’) is the owner of two Australian trade marks, AME (No 1366292 in class 41) and AME AWARDS (No 1366411 in class 41). IAG is engaged in the business of providing award competitions and ceremonies promoting excellence in the fields of advertising and marketing campaigns. It has used the marks since 1996 in relation to its services both in Australia and also overseas. Its awards are available to entrants from a range of countries. A number of the entrants to its competitions have been resident in Australia as have some of the judges of the competitions. Ms Upton says that the applicant has used the marks in Australia in a number of ways such as, for example, by means of the distribution of promotional materials.

5    Ms Upton also gives evidence that since 2011 AAF has provided award competitions and ceremonies promoting excellence in the fields of advertising and marketing to the Australian public using the word mark AMES. This has included the promotion of its business from a website with the domain name www.ames.asia. On this website Australia is listed as one of a number of ‘representatives’ for AAF conferences, and the same website has included within it specific provision for a person wishing to use AAF’s services in Australia, including a specific website for the Australian market. The www.ames.asia domain name appears to be registered to Haymarket.

6    IAG commenced the current proceeding on 13 April 2016. It alleges that the respondents have infringed its trade marks, engaged in passing off and breached ss 18 and 19 of the Australian Consumer Law, which is contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth).

7    Because the applicant does not need under r 10.43(4) to establish a prima facie entitlement to all of the relief it seeks but just ‘any’ of it, it is convenient to confine attention in these reasons to the trade mark allegations only. In that context, one can readily foresee a debate to come that there has been no trade mark use in Australia and that the Trade Marks Act 1995 (Cth) is territorially so confined. However, one can just as readily see an argument being made that the use of an overseas website to target the Australian market using a trade mark will constitute a use of that mark in Australia: cf. Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471 at [43].

8    Consequently, I accept that IAG has a prima facie case of trade mark infringement which this Court has jurisdiction to hear (see s 191 of the Trade Marks Act 1995 (Cth)) and that the first and third requirements of r 10.43(4) are therefore met. The final requirement of r 10.43(4) is that the proceeding be of a kind mentioned in r 10.42. Item 13 of the table in r 10.42 contains an entry which refers to a ‘proceeding based on a contravention of an Act (wherever occurring) seeking relief in relation to damage suffered wholly or partly in Australia’. The applicant’s claim plainly meets that criterion.

9    It follows that the requirements of r 10.43(4) have all been satisfied.

3. Service in Hong Kong?

10    Rule 10.43(2) permits service of an originating application under the Hague Convention on parties resident in nations which are party to it. Since Hong Kong is a party to the Hague Convention, service of the originating application upon Haymarket is authorised under it as the requirements of r 10.43(4) have otherwise been met.

11    Rule 10.43(2) does not authorise service of the fast track statement or the genuine steps statement as neither is an originating application. Service must, therefore, be effected, if it is to be effected at all, under r 10.44:

‘10.44 Service of other documents

(1)     A party may apply to the Court for leave to serve a document filed in or issued by the Court, other than 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.’

12    I am satisfied that the fast track statement and genuine steps statement are a document to which r 10.44 can apply in principle. However, it will only apply (at least in this case) if the Hague Convention itself authorises service of such documents. This, in turn, is a function of whether they are ‘judicial documents’ within the meaning of that expression where used in the Hague Convention. On the material presently before me, I am not satisfied that this has been shown: cf. Bernasconi C, Practical Handbook on the Operation of the Hague Service Convention (3rd ed, Wilson & Lafleur Ltée, 2006) at para [65]ff. Consequently, I am not currently prepared to grant leave to serve these two documents under the Hague Convention. I will not, however, dismiss the application for leave, but will provide further time for this issue to be addressed (if it really needs to be).

13    In relation to the originating application the power to grant leave to serve is nevertheless still discretionary. There are, however, no obvious reasons such as forum non conveniens or lis alibi pendens which present themselves and which might suggest that leave ought not to be granted.

14    In those circumstances, the applicant should have leave to serve its originating application upon Haymarket in Hong Kong under the Hague Convention. If Haymarket enters an appearance then the other documents may be served at its address for service under r 11.01. No further order of this Court is required.

4. Service in Singapore?

15    Singapore is not a party to the Hague Convention or any other convention upon which the applicant relies in relation to service. The consequence is that the applicant must rely on the law of Singapore.

16    I was not taken to any provision of any law of Singapore which authorised service of foreign process in that country. I was taken to various provisions of Singapore law which authorised service of process but these are not to the point. The service of Australian judicial process requiring a person resident in a foreign state to appear before an Australian Court is an exercise of sovereign power by Australia within the territory of a foreign power. It is a significant matter potentially with diplomatic consequences. The effect of r 10.43(3) is that the Federal Court does not permit that power to be exercised unless the foreign country in question has agreed to it. That consent may be signalled by a bilateral or multilateral agreement to which Australia is a party, or the law of the State in question may itself permit service of foreign process.

17    I was provided with a copy of Order 62 of the Rules of Court for the Singapore Supreme Court. It deals, in a familiar way, with service of the process of the Supreme Court. It does not deal with service of foreign process. I was also provided with a copy of the service rules of the High Court of Singapore. None of these deal with service of foreign process. Reference was also made to s 387 of the Singapore Companies Act which authorises service on a corporation by leaving the document to be served at the Company’s registered office. It does not appear to authorise service of foreign process. I would require more persuasion that such a provision would be construed under Singapore law as authorising something as significant as foreign judicial process.

18    Ms Upton gave evidence that she had spoken with a lawyer in Singapore, one Bee Kee Loh, as a consequence of which she believed as follows:

‘(a)    in accordance with the Supreme Court of Judicature Act (Singapore) and the Rules of Court prescribed thereunder, service of the Applicant’s Originating Application, Fast Track Statement and Genuine Steps Statement may be effected on the First Respondent by either:

i.    issuance of a letter of request for service from the Court, on behalf of the Applicant, to the Singapore Minister of Law and the Singapore Supreme Court; or

ii.    personal service, which is the method of service authorised under the Rules of Court for the service of analogous process in Singapore; and

(b)    personal service may be effected by serving a copy of the documents on the Chairman or President, Secretary, Treasurer or other similar officer of the First Respondent, or by leaving copies at the First Respondent’s registered address in Singapore.’

19    I do not understand how the materials I have been taken to show that this is so. It may be that this evidence will turn out to be correct but it does not presently persuade me.

20    I am therefore not satisfied that I should grant leave at this stage. It seems to me possible that service may be able to be effected through diplomatic channels (cf. Note 1 to r 10.43 and Division 10.5) or perhaps by other means, but the evidence does not adequately reveal the situation at the moment. Again, however, I will not dismiss the application, but will afford the applicant more time.

21    I will order that:

1.    The applicant have leave to serve its originating application and a sealed copy of this order on the second respondent in Hong Kong in accordance with the Hague Convention.

2.    The case management hearing scheduled for 31 May 2016 be vacated.

3.    The return date for the originating process be fixed as 9.30am on 15 July 2016.

4.    The matter be stood over for further directions at 9.30am on 31 May 2016.

5.    The applicant be granted leave to remove Annexure MGU-13 from the affidavit of Melinda Gai Upton affirmed 27 April 2016.

Associate:

Dated:    31 May 2016