FEDERAL COURT OF AUSTRALIA

Pinnacle Runway Pty Ltd v Triangl Limited [2017] FCA 627

ORDERS

THE COURT ORDERS THAT:

1.    Pursuant to r 10.48 of the Federal Court Rules 2011 (Cth) (the Rules), the following documents be taken to have been served on the Respondent on 23 February 2017:

(a)    the Fast Track Application;

(b)    the Fast Track Statement; and

(c)    the Genuine Steps Statement;

all dated 12 July 2016, substantially in the form as filed with the Court.

2.    The timing for filing a notice of address for service and a defence to the statement of claim be extended to 7 July 2017.

3.    Pursuant to r 10.24 of the Rules, until such time as the Respondent files and serves a notice of address for service or further order, that service by the Applicant on the Respondent of any further documents in this proceeding may be effected by the Applicant sending a copy of those documents to the Respondent by email to the email address craig@triangl.com.

4.    A copy of these orders are to be served on the Respondent within seven days.

5.    Costs be reserved.

6.    Liberty to apply.

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

REASONS FOR JUDGMENT

MURPHY J:

1    By an interlocutory application filed on 4 May 2017, the applicant seeks orders that:

(a)    pursuant to rr 10.23 and 10.48 of the Federal Court Rules 2011 (Cth) (the Rules), the Fast Track Application, the Fast Track Statement and the Genuine Steps Statement be deemed to have been served on the respondent on 23 February 2017, substantially in the form as filed with the Court;

(b)    the time for the respondent to file a notice of address for service and a defence be extended to a date which is 35 days from the date of these orders;

(c)    pursuant to r 10.24 of the Rules, until such time as the respondent files and serves a notice of address for service or further order, that service of any further documents in this proceeding may be effected by the applicant sending a copy of those documents to the respondent by email to the email address craig@triangl.com;

(d)    a copy of these orders be served on the respondent within seven days; and

(e)    the respondent pay the applicant’s costs of the interlocutory application.

2    Rule 10.48 of the Rules provides as follows:

10.48    Deemed service

A party may apply to the Court without notice for an order that a document is taken to have been served on a person on the date mentioned in the order if:

(a)    it is not practicable to serve the document on the person in a foreign country in accordance with a convention, the Hague Convention or the law of a foreign country; and

(b)    the party provides evidence that the document has been brought to the attention of the person to be served.

Note    Without notice is defined in the Dictionary.

3    In the application the applicant relies on an affidavit of solicitors in the legal firm, Actuate IP, being:

(a)    Mr Andrew Petale affirmed on 22 December 2016;

(b)    Mr Colin Cheung affirmed on 4 May 2017;

(c)    Mr Louis Lao affirmed on 30 May 2107; and

(d)    Mr Lao affirmed on 11 May 2017, who deposes that he served the interlocutory application and supporting affidavits on the respondent by email to the email address craig@triangl.com.

4    Mr Petale’s affidavit shows that:

(a)    on 16 May 2016 he caused an email to be sent to the respondent at the email addresses juliana@triangl.com and customercare@triangl.com, attaching a letter of demand in relation to alleged breaches of the applicant’s trade mark;

(b)    on 25 May 2016 he caused an email to be sent to the same email addresses requesting a response to the letter of demand;

(c)    on 26 May 2016 Mr Craig Ellis telephoned an employee of Actuate IP and he identified himself as the owner of the respondent, and said that his email address is craig@triangl.com;

(d)    on 1 June 2016 Mr Petale caused an email to be sent to the respondent addressed to juliana@triangl.com, attaching a draft Fast Track Statement and stating that proceedings would be commenced without further notice unless the respondent complied with the applicant’s demands. On the same day Mr Ellis responded by email to set up a time for a telephone conference;

(e)    on 2 June 2016 Mr Ellis telephoned Mr Petale but no resolution of the dispute was reached was reached;

(f)    on 3 June 2016 Mr Ellis sent an email to Mr Petale from the email address craig@triangl.com, setting out a detailed rejection of the applicant’s demands;

(g)    on 7 June 2016 Mr Petale caused a further letter of demand to be sent to Mr Ellis at the same email address. On 10 June 2016 Mr Stephen Stern, a partner of Corrs Chambers Westgarth, sent an email to Mr Petale advising that he acted for the respondent and would respond to the latest letter of demand by the end of the week;

(h)    on 20 June 2016 Mr Stern sent an email to Mr Petale essentially rejecting the applicant’s position;

(i)    on 6 July 2016 Mr Petale caused an email to be sent to Mr Stern requesting that he confirm that he had instructions to accept service of proceedings. On 11 July 2016 Mr Stern advised that he was instructed not to accept service; and

(j)    on 11 July 2016 Mr Ellis telephoned Mr Petale and informed him that he was aware that Mr Stern had confirmed that he did not have instructions to accept service.

5    On 12 July 2016 the applicant commenced the proceedings herein by filing a Fast Track Application, Fast Track Statement and Genuine Steps Statement (the Originating Documents) dated 12 July 2016.

6    Mr Petale’s affidavit also shows that:

(a)    on 14 July 2016 Mr Petale caused an email to be sent to Mr Ellis at the email address craig@triangl.com attaching the Originating Documents. The letter was addressed to Mr Ellis at Triangl Limited, 26/F Tesbury Centre, 28 Queens Road East, Wan Chai, Hong Kong. It requested Mr Ellis to acknowledge receipt and service of the documents by no later than 18 July 2016. He did not respond. I note in passing that Mr Petale mistakenly records the date of this email as 21 July 2016, but the attached email shows that it was sent on 14 July 2016 at 3:53 pm;

(b)    on 2 September 2016 the Court made orders granting leave to the applicant to serve the Originating Documents on the respondent in Hong Kong, in accordance with Article 5(a) of the Hague Convention. Evidence was adduced in that application to show that the registered address of Triangl Limited is 26/F Tesbury Centre, 28 Queens Road East, Wan Chai, Hong Kong; and

(c)    on 18 November 2016 the Chief Secretary for Administration of the Government of Hong Kong Special Administrative Region wrote to this Court stating that service of the documents could not be affected on the respondent. An Affidavit of Non-Service dated 4 November 2016 was attached to the letter in which the bailiff who attempted to serve the Originating Documents on the respondent deposed that he was unable to do so, that no one responded to his call at 26/F Tesbury Centre, 28 Queens Road East, Wan Chai, Hong Kong, and that those premises are apparently deserted. The bailiff also deposed to an enquiry he made of the Assistant Building Supervisor who informed him that Triangl Limited had moved out of the premises in August 2016, without leaving a forwarding address.

7    Mr Cheung’s affidavit shows that:

(a)    on 23 February 2017 he caused an email to be sent to Mr Ellis at the email address craig@triangl.com enclosing the Originating Documents and proposed consent orders for the respondent’s signature which provided that the Originating Documents be deemed to have been served on the respondent on that date (the Proposed Consent Orders). It provided a deadline of 2 March 2017 for the Proposed Consent Orders to be signed and returned. There was no response to this email; and

(b)    on 7 April 2017 he caused an email to be sent to Mr Ellis at the email address craig@triangl.com enclosing the same materials and extending the deadline for the respondent to sign and return the Proposed Consent Orders to 13 April 2017.

8    Mr Lao’s affidavit affirmed on 30 May 2017 shows that Triangl has not gone out of business, it still offers garments for sale, and it continues to actively trade into Australia.

9    Before an order can be made under r 10.48, the Court must be satisfied that it is not practicable to serve the Originating Documents on the respondent in Hong Kong in accordance with the Hague Convention. Whether or not service in accordance with the Hague Convention is practicable depends on the circumstances of the case. Mr Petale and Mr Cheung both depose, and I accept, that:

(a)    the Originating Documents were brought to the attention of the respondent by their transmission by email to Mr Ellis on 14 July 2016 and 23 February 2017; and

(b)    it is not practicable to serve the Originating Documents on the respondent in the manner prescribed by the Rules.

10    There is sufficient evidence that the respondent cannot be served by the manner prescribed by the Rules as, although it continues to trade, it no longer trades from its registered address and it did not leave a forwarding address. There is also sufficient evidence that the respondent, through Mr Ellis, is aware of the proceeding and aware of this application. On 14 July 2016 the Originating Documents were sent to his email address craig@triangl.com, through which he had communicated in relation to the dispute for some months previously. On 9 May 2017 the present interlocutory application and supporting affidavits were sent to the same email address. Considering the lengthy history of the proceeding to date, the nature of the proceeding and the prejudice to the applicant if the adjudication of its claim is unduly delayed, I am satisfied that it is not practicable to serve the Originating Documents in accordance with the Hague Convention.

11    In my view it is appropriate to make the orders sought pursuant to r 10.48, essentially in the terms the applicant seeks. It is unnecessary to make an order under r 10.23. It is also appropriate to order that until such time as the respondent files and serves a notice of address for service, or until further order, that service of any further documents in the proceeding be effected by sending a copy of the documents to the respondent at the email address craig@triangl.com. I will not order that the respondent pay the applicant’s costs. Costs will be reserved.

Associate:

Dated:    1 June 2017