FEDERAL COURT OF AUSTRALIA

Sarifdeen v TM25 Holding B.V. [2016] FCA 1429

ORDERS

THE COURT ORDERS THAT:

1.    The appeals be dismissed pursuant to ss 25(2B)(ba) and (bb) of the Federal Court of Australia Act 1976 (Cth) and pursuant to rule 36.74(a), (b), (c) and (d) of the Federal Court Rules 2011.

2.    The Appellants jointly pay the costs of the appeals.

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

REASONS FOR JUDGMENT

MURPHY J:

INTRODUCTION

1    In these proceedings the appellants, Mr Raziudeen Sarifdeen and Mr Mohamed Kaleel Abdul Cader, bring related appeals against a judgment of the Federal Circuit Court made in favour of TM25 Holding BV, G-Star Raw CV, and G-Star Australia Pty Ltd (the G-Star Parties) (TM25 Holding B.V. & Ors v Redac International Pty Ltd & Ors [2016] FCCA 113). Before the Court is an interlocutory application by the G-Star Parties seeking orders that:

(a)    the appeals be dismissed for want of prosecution and failure to comply with orders of the Court pursuant to ss 25(2B)(ba) and 25(2B)(bb)(i) of the Federal Court of Australia Act 1976 (Cth) (the FCA) and rr 36.74(1)(a), (b) and (d) of the Federal Court Rules 2011 (Cth) (the Rules);

(b)    in the alternative, the respondents’ submissions stand as the respondents’ Notice of Objection to Competency within the meaning of rule 36.72 of the Rules in relation to each of the appeals, and each appeal be dismissed as incompetent;

(c)    further or in the alternative to orders (a) and (b), each of the appeals be summarily dismissed pursuant to s 25(2B)(aa) of the FCA; and

(d)    the appellants pay the respondents’ costs of the appeals (the Dismissal Application).

2    In the alternative to orders (a) to (d) above, the G-Star Parties seek orders pursuant to s 56 of the FCA and rule 36.09 of the Rules that the appellants provide security for the respondents’ costs up to and including the hearing of the appeals in the sum of $34,945 and that the appellants pay the respondents’ costs of that application (the Security for Costs Application).

3    For the reasons I explain, in my view it is appropriate to dismiss both appeals for failure to comply with orders of the Court, failure to comply with the Rules and want of prosecution. Mr Cader’s appeal is also dismissed for his failure to attend a hearing.

4    The application for security for costs was made in the alternative and it is unnecessary to decide. In my view, if the appeals were not dismissed, an order for security for costs would be appropriate.

THE PROCEDURAL HISTORY

5    On 12 February 2016 the primary judge gave judgment for the G-Star Parties and declared that the appellants, together with Redac International Pty Ltd (Redac) and DC Fashion Hub Pty Ltd (DC Fashion), breached the Trade Marks Act 1995 (Cth) (Trade Marks Act), the Copyright Act 1968 (Cth) (Copyright Act), ss 18 and 29 of the Australian Consumer Law as found in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL) and as adopted by s 9 of the Fair Trading Act 1999 (Vic) (Fair Trading Act) and engaged in passing off, by importing and selling counterfeit G-Star products. His Honour granted injunctive relief and ordered Mr Sarifdeen, Mr Cader, Redac and DC Fashion to pay the G-Star Parties $8,941.42 as damages for loss of sales, $20,000 as damages for loss of reputation, $100,000 additional damages, and costs to be taxed.

6    On 4 March 2016 the appellants each filed a Notice of Appeal. Mr Sarifdeen’s Notice of Appeal alleged (leaving the errors as they are):

1    Judgement error: the Appellant not in breach of s. 120 of the Trade Mark Act 1995 (Cth) (Trade Marks Act)

2    Judgement error: The Appellant have not infringed or authorised the infringement of the Copyright Works (as defined in paragraph 8 of the Statement of Claim) (“the Copyright Works” in breach of ss. 36, 37 and/or 38 of the Copyright Act 1968 (Cth) (Copyright Act)

3    Judgement error: the Appellant not have not contravened ss. 18 and 29 of the Australian Consumer Law as found in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL)

4    Judgement error: The Appellant not have not engaged in conduct which constitutes the tort of passing off

5.    Information that is irrelevant, falls, fabricated and misrepresented have been taken into account, and information relevant to the decision has not been given due regard

6.    A procedural irregularity has occurred and, as a consequence, we have not been afforded fair decisions

7.    Judgement error: Penalty imposed as Additional charges is not defined and apportioned and unfairly charged

8.    Judgement error: Parties not in the case has been included in the final Judgment

9.    Parties not in the case has been listed for payment by the respondents

Mr Cader’s Notice of Appeal was in essentially the same form except that it did not include grounds 8 and 9.

7    The notices did not comply with r 36.01 of the Rules in that they did not accurately state the part of the judgment appealed from or specifically state the grounds relied on in support of the appeal.

8    At the first case management conference on 6 May 2016 I made orders requiring the appellants to file and serve Amended Notices of Appeal by 22 July 2016 and to pay the respondents’ costs thrown away by reason of the amendment. I informed the appellants that they were given this period of time because of their difficulties in affording legal representation, but if the appeal was not pleaded in a way which complied with the Rules it would be struck out. I also made orders that the appellants provide the G-Star Parties with draft Part A and Part B appeal book indexes by 22 July 2016.

9    In the expectation that the appellants would comply with the orders the appeal was listed for hearing on 6 October 2016 on an estimate of one day. I also listed the appeals for another case management conference on 5 August 2016 so as to be satisfied as to the appellants’ compliance with the orders.

The appellants’ failure to comply with the orders of 6 May 2016

10    The appellants did not comply with the orders of 6 May 2016. They did not provide the G-Star Parties with draft Part A and Part B appeal book indexes by 22 July 2016 and, although they filed Amended Notices of Appeal within the time allowed, the notices did not comply with the Rules. The Amended Notices of Appeal did not identify the appeal grounds with precision nor accurately identify the factual findings made by the trial judge about which the complaint was made. The gist of the appeals appeared to be little more than that the appellants’ evidence was not believed and, with some exceptions, the notices did not identify why the primary judge’s factual findings were said to be wrong or against the evidence.

11    It is noteworthy that the factual findings about which the appellants complained were to a large extent based on the adverse view the primary judge took of Mr Sarifdeen’s and Mr Cader’s credit. There was nothing in the Amended Notices of Appeal to show that his Honour’s findings were against incontrovertible facts or uncontested testimony or that the findings were clearly improbable or contrary to compelling inferences: see Fox v Percy (2003) 214 CLR 118; [2013] HCA 22 at [26]-[31] (Gleeson CJ, Gummow and Kirby JJ).

12    At the case management conference on 5 August 2016 the appellants said that they had been unable to obtain legal assistance and the Amended Notices of Appeal were their best effort. They said that they had been unable to complete the draft Part A and Part B indexes because they did not have legal assistance and could not afford to obtain the transcript of the hearing below.

13    The G-Star parties applied to dismiss the appeals. Having regard to the appellants’ difficulties in affording legal assistance and in affording to obtain the transcript I refused the application. I made orders to allow the appellants a further six weeks, until 16 September 2016, to file and serve a Further Amended Notice of Appeal and provide draft appeal book indexes. Having regard to the continuing costs and inconvenience to the G-Star Parties in the appellants’ failures to comply with the Rules and the orders of the Court, I ordered the appellants to pay the G-Star Parties’ costs of the day forthwith, fixed at $3,500. I listed the appeals for a further case management conference on 28 October 2016.

The appellants’ failure to comply with the orders of 5 August 2016

14    The appellants did not comply with the orders of 5 August 2016. They did not file and serve Further Amended Notices of Appeal or provide draft appeal book indexes by 16 September 2016. Nor did the appellants meet the costs order. They said that they could not afford to pay the costs and only offered to pay by instalments of $300 per month, which the G-Star Parties did not accept.

15    On 5 October 2016 the appellants provided draft appeal book indexes to the G-Star Parties. However, as the appellants later conceded, the appeal book indexes did not comply with the Rules or Practice Note APP2. The solicitors for the G-Star Parties identified the following deficiencies in the appeal book indexes prepared by the appellants:

(a)    Part A of the draft appeal book index did not include the further amended originating application and the amended statement of claim, the reasons for judgment, the sealed orders of the first instance proceeding or the notices of appeal to this Court; and

(b)    Part B of the draft appeal book index did not include a chronological list of all documents received in evidence, a complete list of affidavit evidence, a list of exhibits or an index of the transcript of the hearing below.

16    On 24 October 2016, doing so with the assistance of solicitors, the appellants provided a further version of the draft appeal book indexes. The solicitors for the G-Star Parties identified some of the same deficiencies in the revised draft appeal book indexes.

17    On 13 October 2016 the appellants filed Further Amended Notices of Appeal which constituted a substantial departure from the earlier notices of appeal. The Further Amended Notices of Appeal only relate to the nature and extent of the damages awarded and do not concern the findings that the appellants committed the alleged breaches.

18    On 20 October 2016 the appellants made a payment of $300 towards the costs order but made no further payment.

The dismissal application

19    On 13 October 2016 the G-Star Parties applied to dismiss the Amended Notices of Appeal pursuant to s 25(2B)(ba) and (bb)(i) of the FCA and r 36.74(1)(a), (b) and (d) of the Rules. The application was listed for hearing on 28 October 2016. The parties filed the following material:

(a)    an affidavit of Jonathan Feder, a partner in K&L Gates and the solicitor for the G-Star Parties, sworn 13 October 2016. He noted that the appellants had not complied with the orders to file Amended Notices of Appeal that complied with the Rules, to provide draft appeal book indexes that complied with the Rules or to pay $3,500 in costs;

(b)    an affidavit of Mr Cader sworn 19 October 2016 in which he admitted the factual matters in Mr Feder’s affidavit and sought to explain their delay in providing draft appeal book indexes and their failure to pay the costs order largely by reference to their financial difficulties. In summary, he deposed that the appellants would shortly be in a position to proceed with the appeal, that their difficulties related to their lack of financial resources and that their appeals had merit;

(c)    an affidavit of Mr Sarifdeen sworn 26 October 2016 in essentially the same terms as Mr Cader’s affidavit; and

(d)    an affidavit of Mr Feder sworn 26 October 2016 which annexed correspondence with solicitors acting for the appellants regarding the deficiencies in the appeal book indexes.

20    The parties also filed written submissions in relation to the application. The appellants’ written submissions attached copies of notices of income tax assessment for Mr Cader for the financial years ended 30 June 2010 (FY10) to FY15, and copies of part of the company tax returns of DC Fashion for FY14 and FY15 and for Redac for FY14. Mr Cader also made oral submissions in which he said that the copy notices of assessments and tax returns showed that the appellants’ clothing business was small, that their profit was low and that the damages awards were excessive. The notices of assessment and the tax returns were not in evidence at the hearing below.

The interlocutory hearing on 28 October 2016

21    At the case management conference on 28 October 2016 counsel for the G-Star parties pressed the application to dismiss the appeals. I declined to rule on the application and instead I made orders to permit the G-Star parties to amend their application to include an application for summary judgment on the basis that the appellants have no reasonable prospect of successfully prosecuting their appeals and to make an application for security for costs.

22    I proposed that the hearing of the amended application be listed for 14 November 2016. In response Mr Cader said that he intended to go to Sri Lanka on 10 November to be with his mother who was undergoing surgery and to stay there for about 20 days. To accommodate Mr Cader’s situation but to avoid further delay in dealing with the matter I listed the application for hearing on 8 November 2016. Mr Cader agreed to that date.

The amended application to dismiss the appeals

23    On 2 November 2016 the G-Star Parties filed an amended interlocutory application seeking dismissal of the Further Amended Notices of Appeal for failure to comply with orders of the Court, failure to comply with the Rules and want of prosecution, as well as seeking summary judgment and alleging that the appeal is incompetent. In the alternative, they sought orders for security for costs. The parties filed further evidence as follows:

(a)    an affidavit of Mr Feder sworn 3 November 2016 in which he calculated the likely costs and disbursements of the appeal from the present until the conclusion of a one-day hearing;

(b)    an affidavit of Mr Cader sworn 3 November 2016 in which he deposed as to his parlous financial position and annexed copies of notices of income tax assessment for the financial years ended FY12 to FY15; and

(c)    an affidavit of Mr Sarifdeen sworn 3 November 2016 in which he deposed to his parlous financial position.

MR CADER’S APPLICATION FOR AN ADJOURNMENT

24    On the afternoon of Friday, 4 November 2016, Mr Cader sent an email to my Chambers requesting an adjournment. He said that his mother was seriously ill and that it was necessary for him to go to Sri Lanka the following day. In response, my Chambers informed Mr Cader that an application for an adjournment could not be made on the basis of an email and without supporting affidavit evidence.

25    That evening Mr Cader filed a document titled “Application for an Extension of Time” in which he deposed that his mother was seriously ill which he said required his urgent presence as he was the eldest son in the family. He said he would be leaving for Sri Lanka the following day and he annexed an Air Asia printout which referred to airline tickets to Kuala Lumpur for himself, his wife, and two children. By way of further explanation (leaving the errors as they are) he said:

My mother suffers from pancreatic problems and requires surgery. She is schedule to undergo for a surgery mid next week. As the eldest son I am required to be there and assist my Moher during this difficult time. I will be returning to Australia on the 25 November 2016.

He sought that the hearing date on 8 November 2016 be vacated and the hearing be adjourned to a date after 25 November 2016. He also said that he would make an affidavit to support the application for an extension of time, but he did not do so.

26    I will treat the Application for an Extension of Time as an application for an adjournment. Mr Cader is unable to afford legal representation and he should not be prejudiced because of his failure to know the correct form or procedure for making such an application. The G-Star Parties oppose the application for an adjournment.

27    I refuse the adjournment application because:

(a)    the date for hearing the dismissal application was moved forward to 8 November 2016 in order to accommodate Mr Cader’s stated need to travel to Sri Lanka to be with his mother when she underwent surgery;

(b)    he did not apply for an adjournment until one clear business day before the hearing. The adjournment application was served after the close of business on Friday, 4 November for a hearing listed to take place at 9.00 am the following Tuesday;

(c)    Mr Cader did not file any affidavit material to support his application. He sought an order that Mr Sarifdeen be permitted to make an affidavit on his behalf and Mr Sarifdeen did not do so. In any event it is difficult to see how Mr Sarifdeen could do more than give evidence as to what he was told by Mr Cader;

(d)    Mr Cader did not provide any documentary evidence to substantiate his claim that his mother was due to be operated on in Sri Lanka. It would have been relatively straightforward for him to obtain a note from his mother’s treating doctor or hospital;

(e)    Mr Cader did not provide any documentary evidence to substantiate the alleged change in his mother’s situation from 28 October 2016 to 4 November 2016. On 28 October he said that he intended to go overseas to be with his mother when she underwent surgery and that he would be leaving on 10 November. On 4 November he said that his mother was due to be operated on “mid next week” but he did not disclose the exact date of the operation or substantiate that date. For example, if the operation was on Wednesday 9 November 2016 it is possible that Mr Cader could have travelled to Sri Lanka on Tuesday afternoon, after the dismissal application was heard;

(f)    the Air Asia printout only shows that Mr Cader intended to travel to Malaysia and did not show that he was travelling to Sri Lanka;

(g)    the Air Asia printout is undated and the Court does not know when the tickets were booked and whether this was a pre-planned trip or an urgent trip which was booked at the last moment;

(h)    Mr Cader’s appeal was filed on 4 March 2016 and eight months later it is still not ready to be heard. The G-Star Parties have incurred considerable costs in defending the appeal to date and they are entitled to have their dismissal application determined expeditiously. If the adjournment was granted to a date after 25 November 2016 it is unlikely the application would be heard this year; and

(i)    there would be wasted costs for the G-Star Parties if the application did not proceed on the date fixed and a costs order in their favour would have little meaning because Mr Cader is unlikely to pay any costs amount awarded.

28    I now move to dealing with the merits of the dismissal application.

THE DISMISSAL APPLICATION

Relevant legislation and Rules

29    Section 25(2B) of the FCA relevantly provides:

A single Judge (sitting in Chambers or in open court) or a Full Court may:

…

(aa)    give summary judgment;

…

(ba)    make an order that an appeal to the Court be dismissed for want of prosecution; or

(bb)    make an order that an appeal to the Court be dismissed for:

(i)    failure to comply with a direction of the Court; or

(ii)    failure of the appellant to attend a hearing relating to the appeal; or…

30    Rule 36.74(1) of the Rules relevantly provides:

A respondent may apply to the Court for an order that the appeal be dismissed for the failure by an appellant to do any of the following:

(a)    comply with a direction of the Court;

(b)    comply with these Rules;

(c)    attend a hearing relating to the appeal;

(d)    prosecute the appeal.

31    Rule 36.72 of the Rules provides that a respondent who objects to the competency of an appeal must file a notice of objection to competency that briefly but specifically states the grounds of the objection. If the Court decides an appeal is not competent, the appeal is dismissed.

Consideration re dismissal

32    Having regard to the procedural history set out above I consider it appropriate to dismiss both appeals pursuant to s 25(2B)(ba) and (bb)(i) of the FCA and r 36.74 (1)(a), (b) and (d), doing so on the basis that the appellants have failed to comply with orders of the Court, failed to comply with the Rules and failed to diligently prosecute their appeals. In relation to Mr Cader’s appeal it is also appropriate that it be dismissed pursuant to s 25(2B)(bb)(ii) and r 36.74(1)(c), on the basis that he failed to attend the hearing on 8 November 2016.

33    It is therefore unnecessary to decide the application for summary judgment or decide whether the appeal is competent.

34    I consider it appropriate to dismiss the appeals, first, because:

(a)    the appellants filed the appeals on 4 March 2016 and the Notices of Appeal did not comply with the Rules;

(b)    on 6 May 2016 the appellants were ordered to file Amended Notices of Appeal which complied with the Rules and provide draft appeal book indexes to the G-Star Parties by 22 July 2016. They did not do so;

(c)    as a result of the appellants’ failures it was necessary to vacate the hearing date of the appeal on 6 October 2016. As a result of their continued failures it has not been possible to relist the appeal hearing;

(d)    on 5 August 2016 the appellants were ordered to file Further Amended Notices of Appeal which complied with the Rules and provide draft appeal book indexes by 16 September 2016. They did not do so;

(e)    on 5 August 2060 appellants were directed to immediately pay $3,500 to the G-Star Parties’ for their costs of the day. It has been three months since the order and the appellants have only paid $300, doing so on 20 October 2016;

(f)    on 5 October 2016 the appellants provided draft appeal book indexes, but the indexes did not comply with the Rules or Practice Note APP2; and

(g)    on 13 October 2016 the appellants filed Further Amended Notices of Appeal. Notwithstanding the delay in filing the amended appeals, as pleaded the grounds of appeal are either deficient or appear to have little merit.

35    It is established that the discretion to dismiss proceedings for want of prosecution must not be exercised lightly: see Van Reesema v Giameos (1979) 27 ALR 525; (1979) 41 FLR 86 (Van Reesema). In Van Reesema the Court considered various factors in deciding whether there had been “contumelious delay” including whether the appellant had complied with the Court’s orders, whether the appellant had failed to provide a draft index of the appeal books within time as required by the Rules, whether the appellant had failed to attend the District Registrar to settle the appeal books as required by the Rules and the public policy in the business of the Court being conducted with expedition and that its rules and orders be complied with. It is noteworthy that most of those factors are made out in the present case.

36    Second, the appellants’ failure to comply with the Rules and the Court’s orders has meant that the G-Star Parties have been deprived of the opportunity to have the appeals resolved expeditiously and consistently with the overarching purpose in s 37M of the FCA: see Dahler v Australian Capital Territory (No 2) [2016] FCA 1100 at [69]. As I have said, the date for hearing was forgone because of the appellants’ failures and it has not been possible to relist the appeal.

37    Third, while I am reluctant to dismiss the appeals when the appellants’ failures can, at least in part, be traced back to their inability to afford to engage legal representatives, this cannot be allowed to continue. I allowed the appellants a generous period of time and the appellants continued on a path of non-compliance with Court orders and the Rules.

38    I am similarly reluctant to dismiss the appeals when their failure to pay the costs order may be traced back to their impecuniosity. However, at least so far as Mr Cader is concerned, there are indications that his financial difficulties are not as stark as he said. He was able to pay for four return airfares to Sri Lanka (doing so on an urgent basis on his account) which tends to show that he made a choice when he failed to pay the costs order and only offered to jointly pay $300 per month. It seems likely that he was in a position to afford to meet the costs order.

39    Fourth, because notwithstanding that the appellants have been provided six months and made three attempts to file proper notices of appeal, the Further Amended Notices of Appeal are deficient. Further, while it is unnecessary to decide whether the appeals have reasonable prospects of success, in my opinion the appeals are, at best, weak. This confirms me in the conclusion that it is appropriate that the appeals be dismissed because the G-Star Parties should not be required to face appeals of little merit which are not being expeditiously prosecuted. If the appeals remain on foot there is no presently no hearing date in sight. In summary I consider the grounds of appeal to be deficient or weak for the following reasons:

(a)    Appeal Ground 1 - under this ground the appellants argue that the primary judge erred in awarding general damages of $8,942.42 for lost sales because this was based on confidential annexures which the appellants could inspect but could not remove for full and considered analysis. The appellants refer to [242]-[243] of the primary judgment but that part of the judgment relates to damages for loss of reputation rather than lost sales. In any event, the primary judge specifically stated (at [258]) that it had been open to the appellants from 16 June 2015 to attend upon the solicitors for the G-Star Parties to review the confidential material, and the G-Star Parties submits that the appellants cross examined witnesses on the basis of some of the confidential documents.

(b)    Appeal Ground 2 - under this ground the appellants argue that the primary judge erred by relying on the evidence of a G-Star employee, Mr Piet Poelmann, who gave evidence in regard to matters of the ownership and licensing of various G-Star trade marks copyright materials and garments. The appellants argue that they wished to cross-examine Mr Poelmann but he was not made available for cross-examination and the relevant evidence was then presented by another G-Star employee, Cameron Heymans. However, it is apparent from the judgment below (at [49]-[54]) that the primary judge had no regard to the evidence of Mr Poelmann and the appellants were given ample opportunity to meet the evidence of Mr Heymanns (see [259]-[261]). The primary judge said that the G-Star Parties relied on Mr Poelmann’s affidavit and the appellants did not indicate that they wished to cross-examine him but on the second day of trial Mr Sarifdeen said that he did want to cross-examine Mr Poelmann and needed time to look at the confidential documents. By the time the matter could be rescheduled for further hearing Mr Poelmann had resigned his employment and accordingly Mr Heymans was called to give essentially the same evidence. He was cross-examined. There seems little substance in this ground.

(c)    Appeal Ground 3 - the appellants allege that having awarded damages for lost sales of $8,942.42 the primary judge should not then have awarded $20,000 for loss of reputation when there was speculative evidence but no actual evidence of any loss of sales. However, the primary judge accepted that damages for loss of reputation were not a matter of precise computation and set out the various bases for his assessment (at [242]-[243]). In circumstances where the factual findings underpinning his Honour’s approach to judgment are not attacked in the appeals it is difficult to see merit in this ground.

(d)    Appeal Ground 4 - the appellants allege that the award of $100,000 in additional or exemplary damages is excessive as the amount of counterfeit goods found to be sold by the appellants were “significant but not substantial.” However, the primary judge set out the various bases for this assessment of damages (at [245]-[255]) including that:

(i)    the appellants’ conduct was flagrant in the sense that they well knew that the garments they were importing were counterfeit and that they were involved in a “cynical and serious breach of the law” (at [250]);

(ii)    the appellants had not in any way been contrite and never revealed the true scale of their operations, they sought to minimise their involvement and underestimate the extent of it, and pursued this “dishonest conduct” through the trial and in their evidence (at [251]);

(iii)    there is a need to discourage such conduct more generally ((at [252]); and

(iv)    while it had not been possible to quantify the volume of sales, the sales were significant, they involved wholesale and retail activities and they were at a greater level of sophistication than street or market sales.

The award is a substantial one but, in circumstances where the findings of fact which underpin his Honour’s judgment are not attacked in the appeals, it is difficult to see this ground succeeding.

(e)    Appeal Ground 5 - the appellants argue that it was not open to the primary judge to award additional damages of $100,000 as such damages cannot flow from infringement of the Trade Marks Act, the Copyright Act or the ACL. The primary judge said that he made this order pursuant to the Trade Marks Act and the Copyright Act and any contention that additional damages cannot be awarded under those Acts is bound to fail.

(f)    Appeal Ground 6 - this ground appears to restate Grounds 3 and 4. In circumstances where the specific findings of fact which underpin his Honour’s judgment are not attacked in the appeals, it is difficult to see any merit in this ground.

(g)    Appeal Ground 7 - this largely seems to restate Ground 4.

(h)    Appeal Ground 8 - the appellants allege that the awards of $100,000 for additional/exemplary damages and $20,000 for loss of reputation were not commensurate with the findings of the profits made by the appellants, any actual loss proved by the G-Star Parties, and that the appellants ran a “relatively small operation”. However, the primary judge found that the appellants’ sales were “significant”, involved wholesale and retail activities, were at a greater level of sophistication than street or market sales (at [253]) and that their business was a “wide-ranging activity” (at [254]). In circumstances where the appellants do not attack the primary judge’s finding that the appellants’ business was not a small operation this ground seems bound to fail.

40    Fifth, dismissal of their appeals will not mean that the appellants have been excluded from access to justice. Although the result was not in their favour they had the benefit of an eight day trial before the Federal Circuit Court.

41    Sixth, I accept that the appellants still wish their appeals to be heard and determined, but the “want of prosecution” referred to in s 25(2B)(ba) is a reference to the prosecution of an appeal in accordance with the Rules: Dowling v Fairfax Media Publications Pty Ltd (No 2) [2010] FCAFC 28 at [82]. The appellants have not complied with the Rules or the orders of the Court.

42    Seventh, I would also dismiss Mr Cader’s appeal for his failure to attend the interlocutory hearing on 8 November 2016. He put on no evidence, but even if I accept the submission that he needed to go to Sri Lanka to be with his mother when she underwent surgery, he had agreed to a hearing date which accommodated that need. Even if (in the absence of any evidence) I accept the submission that his mother’s surgery had been brought forward there is no evidence that he needed to leave on 5 November when the hearing date would have allowed him to leave two days later in any event. Rule 36.74 provides that an appeal may be dismissed for failure to attend the hearing relating to the appeal.

THE SECURITY FOR COSTS APPLICATION

43    Having dismissed the appeals on the grounds set out it is unnecessary to deal with the application for dismissal on the basis of incompetency, the application for summary judgment or the application for security for costs. However, having heard the application for security for costs, it may be worth noting that if I had not dismissed the appeals I would have ordered the appellants to pay security for costs in the sum of $34,945.

44    On the appellants’ evidence they could not pay such an amount and their appeals would therefore have been stayed in any event. I now set out the basis for my view that an order to security for costs would be appropriate.

Relevant legislation and principles

45    Section 56 of the FCA relevantly provides that the Court or a Judge may order an appellant in an appeal under Division 2 of Part III to give security for the payment of costs that may be awarded against him or her. The security shall be of such an amount and given at such time and in such manner and form as the Court or Judge directs. Rules 39.02 and 19.02 are also relevant.

46    I set out the relevant principles in Mecrus Pty Ltd v Industrial Energy Pty Ltd (2015) 327 ALR 523; [2015] FCA 103 at [18]-[20], as follows:

[18] The discretion conferred by s 56 is broad. Many attempts to set limitations upon the discretion have been rejected by the Courts, and the only limitation is that it must be exercised judicially: Bell Wholesale Co Ltd v Gates Export Corporation (1984) 2 FCR 1 at 3 per Sheppard, Morling and Neaves JJ. It is a discretion to be exercised according to the particular merits and circumstances of each case and without any particular predisposition: Bryan E Fencott & Associates Pty Ltd v Eretta Pty Ltd and Others (1987) 16 FCR 497 at 511 per French J; Gentry Bros Pty Ltd v Wilson Brown and Associates Pty Ltd and Others (1992) 8 ACSR 405 at 411, per Cooper J. The weight to be attached to a particular circumstance depends upon its own intrinsic persuasiveness and its impact on other circumstances which have to be weighed: P S Chellaram and Co Ltd v China Ocean Shipping Co and Another (1991) 102 ALR 321 at 323 per McHugh J.

[19] Notwithstanding the broad discretion there are a number of well established guidelines which the Court typically takes into account. In Equity Access Ltd v Westpac Banking Corporation (1989) ATPR 40-972 at 50,635 per Hill J, his Honour identified the following six factors:

(a)    the chances of success of the applicant;

(b)    whether the applicant’s claim is bona fide or a sham;

(c)    the quantum of risk that the applicant cannot satisfy a cost order;

(d)    whether use of the power would shut out a small company from making a genuine claim against a large company (i.e. whether the power is being used oppressively);

(e)    whether the impecuniosity arises out of the act in respect to which relief is sought;

(f)    whether there are aspects of public interest which weigh in the balance against the making of an order; and

(g)    whether there are any particular discretionary matters peculiar to the circumstances of the case.

[20] In KP Cable Investments Pty Ltd v Meltglow Pty Ltd and Others (1995) 56 FCR 189 at 196–198 Beazley J referred to the following additional matters:

(a)    security for costs applications should be brought promptly;

(b)    having regard to the strength and bona fides of the plaintiff’s case, as a general rule, where a claim is regular on its face and discloses a cause of action, in the absence of evidence to the contrary the Court should proceed on the basis that the claim is bona fide with a reasonable prospect of success;

(c)    whether the respondent’s application for security is oppressive, in the sense that it is being used merely to deny an impecunious applicant a right to litigate;

(d)    whether there are any persons standing behind the company who are likely to benefit from the litigation. An issue related to this is whether persons standing behind the company have offered any personal undertaking to be liable for the costs and if so, the form of any such undertaking; and

(e)    security will only ordinarily be ordered against a party who is in substance a plaintiff, and an order ought not to be made against parties who are defending themselves and thus forced to litigate.

47    An application for security for costs in an appeal attracts different considerations from an application in a proceeding at first instance. In Cowell v Taylor (1885) 31 Ch D 34 at 38 Lord Justice Bowen said:

The general rule is that poverty is no bar to a litigant, that, from time immemorial, has been the rule at common law, and also, I believe, in equity.  There is an exception in the case of appeals, but there the appellant has had the benefit of a decision by one of Her Majesty’s courts, and so an insolvent party is not excluded from the Courts, but only prevented, if he cannot find security, from dragging his opponent from one Court to another.

48    In Moore v Macks [2007] FCA 509 Mansfield J approved the statement by Lord Justice Bowen, and also cited the observation of Spender J in Skyring v Sweeney [1999] FCA 61 at [6] where his Honour said:

Impecuniosity is a factor which can be taken into account as justifying the grant of security.  Impecuniosity ought not to be a bar to a person prosecuting at first instance a claim, but the position on appeal seems to me to be fundamentally different.  In effect, in the absence of an order for security for costs in the circumstances of this case, Mr Skyring, in effect, is given a free hit, and that seems to me to be intrinsically unfair.

49    In Tait v Bindal People [2002] FCA 322 at [3]-[4] Spender J made a similar observation (cited with approval in Soh v Commonwealth [2008] FCA 1524 at [11] per Moore J):

... [t]he difference is that, at the appellant level, there has already been a determination adverse to the person against whom security for costs is sought and, if it be shown that there is a substantial risk that even if successful the respondent to the application for leave to appeal, or to an appeal, will be deprived of his costs, such an outcome would clearly be unjust.

50    In my view:

(a)    the G-Star Parties brought the application for security only in response to the ongoing delay and extra costs occasioned by the appellants and it was brought with sufficient promptness;

(b)    the appellants’ grounds of appeal under the Further Amended Notices of Appeal are, at best, weak;

(c)    the evidence is clear that the appellants are impecunious and it is likely they will be unable to pay the G-Star Parties’ costs if they are unsuccessful in their appeals;

(d)    there is no evidence that the appellants’ impecuniosity is caused by the conduct of the G-Star Parties, except in the sense that the litigation has forced the appellants to cease to operate their clothing business in contravention of the Trade Marks Act, the Copyright Act and the ACL. That is not a relevant consideration;

(e)    there is no basis to conclude that the application for security is brought so as to deny the appellants their right of access to the courts. In my view the G-Star Parties only brought the application in response to the delay and cost occasioned by the appellants’ failure to comply with the Rules and orders of the Court; and

(f)    the appellants have already had the benefit of an eight-day hearing before the Federal Circuit Court which determined the case adversely to them.

51    Having regard to the weakness of the appeal grounds, the appellants’ precarious financial position, the significant costs already incurred in the appeal and the first instance proceeding, the fact that the appeal does not raise any wider issue of public interest (Carey-Hazell v Getz Bros & Co (Aust) Pty Ltd [2004] FCA 1334 at [33]-[34] per French J), and the fact that the appellants have already had the benefit of a trial, if the appeals were to proceed an order for security would be appropriate.

52    Mr Feder’s unchallenged evidence (based upon some conservative assumptions including that the appeal will only run for one day) is that the likely party/party costs that would be awarded against the appellants upon a taxation of costs would total approximately $34,945. If not for the fact that the appeals are dismissed I would make an order in that amount.

Associate:

Dated:    28 November 2016