FEDERAL COURT OF AUSTRALIA

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Permanent Stay) [2019] FCA 802

File number:

NSD 1816 of 2004

Judge:

PERRAM J

Date of judgment:

30 May 2019

Catchwords:

PRACTICE AND PROCEDURE – permanent stay for want of prosecution or abuse of process – where third party nation state failed to respond to invitation to provide voluntary discovery – where interim stay of proceedings previously ordered – where cross-claimants took subsequent steps to procure discovery – whether want of prosecution – whether abuse of process – whether permanent stay justified – whether whole or only part of proceeding should be stayed

PRACTICE AND PROCEDURE – application to lift interim stay to amend pleadings – where Russian Federation previously found to be real plaintiff – where proposed amendments reflect subsequently altered relationship between cross-claimants and Russian Federation – where cross-claimants did not raise issue prior to interim stay – whether cross-claimants should be permitted to revisit previously determined finding by lifting stay and amending pleadings

Legislation:

Trade Marks Act 1995 (Cth) s 88

Cases cited:

Aon Risk Services Australia Ltd v Australian National University [2009] HCA 27; 239 CLR 175

Arhill Pty Ltd v General Terminal Company Pty Ltd (1990) 23 NSWLR 545

Australian Competition and Consumer Commission v Adata (Vic) Pty Ltd (No 2) [2015] FCA 272

Batistatos v Roads and Traffic Authority of New South Wales [2006] HCA 27; 226 CLR 256

Birkett v James [1978] AC 297

Brimaud v Honeysett Instant Print Pty Ltd (1988) 217 ALR 44

Carey v Freehills [2014] FCA 788

Commonwealth v Verwayen [1990] HCA 39; 170 CLR 394

Cox v Journeaux (No 2) [1935] HCA 48; 52 CLR 713

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 4) [2017] FCA 1345

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International NV [2007] FCAFC 43; 157 FCR 558

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International BV [2010] FCA 1293

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 2) [2012] FCA 23

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 3) [2013] FCA 85; 300 ALR 741

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 5) [2018] FCA 19

Federal Treasury Enterprise Sojuzplodoimport v SPI Spirits Limited 726 F3d 62 (2d Cir 2013)

Federal Treasury Enterprise Sojuzplodoimport v Spirits International BV 809 F3d 737 (2d Cir 2016)

Federal Treasury Enterprise Sojuzplodoimport v Spirits International BV (unreported, SD NY 9 November 2017)

Immer (No 145) Pty Ltd v The Uniting Church in Australia Property Trust (NSW) [1993] HCA 27; 182 CLR 26

Palavi v Radio 2UE Sydney Pty Ltd [2011] NSWCA 264

Professional Administration Service Centres Pty Ltd v Commissioner of Taxation [2012] FCAFC 180; 295 ALR 52

S.P.I. Spirits (Cyprus) Limited v Diageo Australia Limited [2004] FCA 1780

S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2) [2006] FCA 931; 155 FCR 150

Sabre Corp Pty Ltd v Russ Kalvin’s Hair Care Company [1993] FCA 841; 46 FCR 428

Sargent v ASL Developments Ltd [1974] HCA 40; 131 CLR 634

Spirits International B.V. v Federal Treasury Enterprise (FKP) Sojuzplodoimport (No 2) [2013] FCAFC 120

Spirits International BV v Federal Treasury Enterprise (FKP) Sojuzplodoimport [2011] FCAFC 69; 91 IPR 438

Tamaya Resources Ltd v Deloitte Touche Tohmatsu [2016] FCAFC 2; 332 ALR 199

Tomlinson v Ramsey Food Processing Pty Ltd [2015] HCA 28; 256 CLR 507

UBS AG v Tyne [2018] HCA 45; 360 ALR 184

Date of hearing:

14 March 2019

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Category:

Catchwords

Number of paragraphs:

164

Counsel for the Cross-Claimants:

Mr D Shavin QC and Ms C L Cochrane

Solicitor for the Cross-Claimants:

Quinn Emanuel Urquhart & Sullivan

Counsel for the Cross-Respondent:

Mr M J Darke SC and Mr D B Larish

Solicitor for the Cross-Respondent:

King & Wood Mallesons

ORDERS

NSD 1816 of 2004

BETWEEN:

FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT

First Cross-Claimant

FEDERAL PUBLIC UNITARY ENTERPRISE EXTERNAL ECONOMIC UNION SOJUZPLODOIMPORT (FGUP VO)

Second Cross-Claimant

AND:

SPIRITS INTERNATIONAL B.V. (REGISTERED IN THE NETHERLANDS)

Cross-Respondent

JUDGE:

PERRAM J

DATE OF ORDER:

30 MAY 2019

THE COURT ORDERS THAT:

1.    The parties bring in short minutes of order to give effect to these reasons by 27 June 2019.

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

REASONS FOR JUDGMENT

PERRAM J:

1    The Third Further Amended Cross-Claim (‘the Cross-Claim’) has been stayed since 20 November 2017. The Cross-Respondent now seeks that it be dismissed or stayed permanently. The Cross-Claimants resist this and seek instead to lift the stay altogether. The stay was originally put in place because the Russian Federation, which is not a party, had failed to give adequate discovery of a range of material pertaining to the subject matter of the Cross-Claim: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 4) [2017] FCA 1345 (‘the First Stay Decision’).

2    These reasons are divided as follows:

FORMALITIES

[3]

THE AUSTRALIAN LITIGATION

[8]

THE UNITED STATES PROCEEDING

[54]

THE SHAPE OF THE DEBATE

[59]

THE CORRECT QUESTION

[62]

THE ADEQUACY OF DISCOVERY GIVEN SO FAR

[66]

The State Archive

[75]

Accounting Chamber of the Russian Federation

[82]

Federal Security Service of the Russian Federation

[86]

Federal Service on Financial Markets

[89]

Ministry of Economic Development of the Russian Federation

[90]

Ministry of Finance of the Russian Federation

[91]

Ministry of Internal Affairs of the Russian Federation

[94]

Investigation Committee of the Russian Federation

[95]

Conclusions on Russian State entities subject to the Australian discovery regime but not subject to the Brodsky Order

[102]

Russian State entities subject to the Brodsky Order

[104]

The Federal Agency for the State Property Management

[124]

The Ministry for Agriculture

[125]

The Russian Agency on Patents and Trademarks

[127]

The Apparatus

[128]

The Administration of the President

[129]

CONCLUSIONS ON DISCOVERY

[130]

THE CROSS-CLAIMANTS’ STEPS IN 2018

[135]

A FINAL ARGUMENT: REVISITING THE REAL PLAINTIFF ISSUE

[139]

WHAT SHOULD HAPPEN?

[150]

CONCLUSIONS

[160]

FORMALITIES

3    There are two interlocutory applications before the Court. The first was filed by the Cross-Respondent and is dated 7 December 2018. The principal order it seeks by prayer 1 is that the Cross-Claim be dismissed. It also seeks a number of ancillary orders in the event that prayer 1 is granted. The application was supported by an affidavit of Mr John Victor Swinson dated 7 December 2018.

4    The Cross-Claimants relied upon an expert opinion of Mr Alexander Muranov in relation to a number of aspects of Russian law. It was tendered and became Exhibit 3. In relation to the facts, the Cross-Claimants read an affidavit of Ms Natalia Semenova dated 14 February 2019. An exhibit to that affidavit, Exhibit NS-3, was not tendered. In response the Cross-Respondent relied upon an affidavit of a United States attorney, Mr Keith R Hummel, dated 6 March 2019 and a further affidavit of Mr Swinson dated 7 March 2019. The Cross-Respondent also tendered a joint tender bundle which became Exhibit 1.

5    The second interlocutory application was filed by the Cross-Claimants on 8 March 2019 and seeks the lifting of the stay imposed on 20 November 2017. It was supported by an affidavit of the Cross-Claimants’ new Australian solicitor, Ms Michelle Fox, dated 8 March 2019. Exhibit MXF-1 to her first affidavit was tendered and became Exhibit 4. There were objections to this affidavit which were resolved by means of a schedule of objections and agreed rulings. These concerned [9]-[10]. The Cross-Respondent relied upon an affidavit of Mr Swinson dated 13 March 2019. Exhibit JVS-4 to the affidavit was tendered and became Exhibit 2. Two further affidavits of Ms Fox, dated 12 March 2019 and 13 March 2019, were also read.

6    In addition, I asked to be provided with the letters by which the Russian Federation was invited to give discovery. These were annexed to an affidavit of Mr Swinson affirmed 19 August 2016, which was read by the Cross-Respondent on the first stay application. I have treated this affidavit as having been read. On 3 April 2019 I raised with the parties via my associate whether they objected to this course. Both parties consented.

7    I made an order by consent that evidence in each application be evidence in the other and the two applications were heard together.

THE AUSTRALIAN LITIGATION

8    The present litigation was commenced nearly 15 years ago on 7 December 2004 when S.P.I. Spirits (Cyprus) Ltd and Spirits International NV (together, ‘the Spirits Applicants’) sued Diageo Australia Ltd (‘Diageo’) for misleading and deceptive conduct and other relief relating to trademarks. Diageo had been marketing for sale in Australia a premixed vodka drink under the brand ‘Ruski RTD Vodka’ to which was attached the word ‘Stolichnaya’.

9    It appears that one of a number of defences Diageo was contemplating was that the Spirits Applicants were not entitled to be registered as the owners of the trademarks because beneficial title in them was vested elsewhere. That elsewhere was the Russian Federation. The present Cross-Claimants are emanations of the Russian Federation who are charged with the task of returning to the Russian Federation ownership of the trademarks. On 15 December 2004 the Cross-Claimants applied by notice of motion to be joined as parties to the proceeding to assert their claim that the Stolichnaya trademarks (and some other trademarks also related to hard liquors) had been misappropriated from the Russian Federation in the aftermath of the collapse of the former Union of Soviet Socialist Republics. The misappropriation was said to have occurred at the hands of predecessors in title to the Spirits Applicants with the consequence that the Register of Trade Marks should be rectified to record the true successor in title (one of the Russian entities) as the registered owner. Similar litigation has been pursued around the world.

10    The joinder motion was returnable before Gyles J on 17 December 2004. At that time, his Honour permitted joinder of one of the Cross-Claimants, Federal Treasury Enterprise (FKP) Sojuzplodoimport (‘FKP’) but not the other, Federal State Unitary Enterprise (‘FGUP’): S.P.I. Spirits (Cyprus) Limited v Diageo Australia Limited [2004] FCA 1780. At [4] his Honour said, with what one may be forgiven for observing in 2019 has turned out to involve some minor understatement, ‘I recognise that the joinder of FKPS may interrupt the timetable and may, to some extent, slow down the progress of the litigation’.

11    On 10 February 2005 FKP filed the first version of the current Cross-Claim. This cross-claim was brought against Spirits International N.V. (‘the Cross-Respondent’) but not S.P.I .Spirits (Cyprus) Limited. FGUP was joined as the second cross-claimant on 22 April 2005.

12    It was in November 2005, presumably after the pleadings had reached a sufficient state of preparedness, that the Cross-Respondent began formally to press for discovery from not only the Cross-Claimants but also the Russian Federation itself. The underlying motivation for this was the idea that if the Cross-Claimants wished to make allegations about the circumstances in which the trademarks came to pass out of Soviet (or Russian) State hands, it could not be fair to do so without the Russian Federation showing its hand, especially where FKP and FGUP were emanations of it.

13    The Cross-Respondent’s efforts evolved across time. They began with the filing of a notice of motion dated 23 November 2005. Those advising the Cross-Respondent had to wrestle with the issue of how they would obtain discovery from a nation state which was not a party to the proceeding but of which the Cross-Claimants were emanations. The difficulties thrown up by this position included issues such as the extent of the capacity of the Cross-Claimants to compel the Russian Federation of which they were manifestations to give discovery; whether third party discovery could be had against a foreign party; and comity between States. The initial notice of motion dated 23 November 2005 sought, on this issue, the following orders:

Discovery- Russian Federation

2    A declaration that documents within the possession, custody or control of the Russian Federation are within the possession, custody or control of the Cross-claimants for the purposes of discovery in these proceedings.

3    In the alternative to order 2, an order that the Cross-claimants provide discovery, by filing and serving a verified list, of all documents in their possession, custody or control or within the possession, custody or control of the Russian Federation which fall within the categories:

(a)    set out in the schedule to this notice of motion; or

(b)    otherwise ordered by the Court.

4    In the alternative to orders 2 and 3, an order, pursuant to Order 15A rule 8 of the Federal Court Rules, that the Russian Federation provide discovery, by filing and serving a verified list, of all documents falling within the categories:

(a)    set out in the schedule to this notice of motion; or

(b)    otherwise ordered by the Court.

5    In the alternative to orders 2, 3 and 4, an order that the Cross-claimants take all steps available to them to obtain documents which are in the possession, custody or control of the Russian Federation and which fall within the categories:

(a)    set out in the schedule to this notice of motion; or

(b)    otherwise ordered by the Court.

6    If an order is made in accordance with paragraph 5 of this Notice of Motion, orders that:

(a)    the Cross-claimants produce to the Cross-Respondents all documents obtained by them from the Russian Federation pursuant to the steps taken in accordance with the Court’s order; and

(b)    each of the Cross-claimants, by a General Director with personal knowledge of the mattes depose to, file and serve an affidavit in which he or she:

(i)    deposes to the steps taken by the Cross-claimants to comply with the Court’s order, including details of its requests to the Russian Federation (both verbally and in writing) and the Russian Federation’s responses thereto (whether verbal or in writing); and

(ii)    annexes any of the requests and responses referred to in (i) which are in writing.

14    At the end of the notice of motion there was a notation to this effect:

In this Notice of Motion, the term “Russian Federation” includes, but is not limited to, the ministries, agencies and State bodies identified in Schedule B to this Notice of Motion.

15    It will be observed that the notation assumed that the list in Schedule B was inclusive rather than exhaustive. Schedule B then set out a list of Ministries and Agencies of the Russian Federation. There were twelve such bodies on the list:

SCHEDULE B

Name of Ministry/Agency

(English)

Name of Ministry/Agency

(Russian)

The Apparatus of the Government of the Russian Federation

АППАРАТ ПРАВИТЕЛЬСТВА РОССИЙСКОЙ ФЕДЕРАЦИИ

Administrative Office of the President of the Russian Federation

АДМИНИСТРАЦИЯ ПРЕЗИДЕНТА РОССИЙСКОЙ ФЕДЕРАЦИИ

Ministry of Finance of the Russian Federation

МИНИСТЕРСТВО ФИНАНСОВ РОССИЙСКОЙ ФЕДЕРАЦИИ

Ministry of Agriculture of the Russian Federation

МИНИСТЕРСТВО СЕЛЬСКОГО ХОЗЯЙСТВА РОССИЙСКОЙ ФЕДЕРАЦИИ

Ministry of Internal Affairs of the Russian Federation

МИНИСТЕРСТВО ВНУТРЕННИХ ДЕЛ РОССИЙСКОЙ ФЕДЕРАЦИИ

Federal Security Service of the Russian Federation

ФЕДЕРАЛЬНАЯ СЛУЖБА БЕЗОПАСНОСТИ РОССИЙСКОЙ ФЕДЕРАЦИИ

Ministry of Economic Development and Trade of the Russian Federation

МИНИСТЕРСТВО ЭКОНОМИЧЕСКОГО РАЗВИТИЯ И ТОРГОВЛИ РОССИЙСКОЙ ФЕДЕРАЦИИ

Federal Agency for Federal Property Management

ФЕДЕРАЛЬНОЕ АГЕНТСТВО ПО УПРАВЛЕНИЮ ФЕДЕРАЛЬНЫМ ИМУЩЕСТВОМ

Federal Service on Intellectual Property, Patents and Trademarks

ФЕДЕРАЛЬНАЯ СЛУЖБА ПО ИНТЕЛЛЕКТУАЛЬНОЙ СОБСТВЕННОСТИ, ПАТЕНТЫ И ТОВАРНЫЕ ЗНАКАМ

Federal Service on Financial Markets

ФЕДЕРАЛЬНАЯ СЛУЖБА ПО ФИНАНСОВЫМ РЫНКАМ

Accounting Chamber of the Russian Federation

СЧЕТНАЯ ПАЛАТА РОССИЙСКОЙ ФЕДЕРАЦИИ

State Archive of the Russian Federation

16    One mystery in this litigation is that at some point it appears to have become accepted that this list contains thirteen entities including the Investigation Committee of the Russian Federation which was established in 2010. I have not been able to discern how the Investigation Committee came to be regarded as being on this list but the parties seem unified in their view that it was. For example, Ms Semenova deposed to the following in her affidavit:

Spirits suggested a list of state authorities to FKP in 2005 which contained the 13 state entities relevant to this application. A copy of this list of entities suggested by Spirits, annexed to a Notice of Motion filed by Spirits on 23 November 2005 is at Tab 7.

17    I propose to yield to the parties’ certainty and also to accept that Schedule B has thirteen entities on it including the Investigation Committee (notwithstanding the contrary being the case). I shall refer henceforth only to the thirteen entities on the Schedule B list.

18    It will be seen that the motion contemplated a variety of mechanisms by which discovery might be obtained from the Russian Federation. The first was to declare that the documents held by the Russian Federation were held by the Cross-Claimants for the purposes of discovery (prayer 2). The second was to make the Cross-Claimants give discovery of documents held, inter alia, by the Russian Federation (prayer 3). The third was to order the Russian Federation to provide third party discovery under Order 15A r 8 of the former Federal Court Rules (prayer 4). The fourth was to require the Cross-Claimants to take all reasonable steps to obtain the documents from the Russian Federation and to provide them to the Cross-Respondent (prayers 5 and 6). This last prayer was seeking, in effect, a Sabre order (see Sabre Corp Pty Ltd v Russ Kalvin’s Hair Care Company [1993] FCA 841; 46 FCR 428). It made no provision for a stay if the discovery orders were not complied with.

19    The hearing of the motion was fixed for 3 March 2006. Prior to the hearing, the notice of motion was amended. There were three significant alterations. First, the claim to have the Cross-Claimants give discovery of documents held by the Russian Federation was abandoned leaving only the third party discovery application under Order 15A r 8 and the application for the Sabre order. Secondly, the list of Russian entities was removed as was the corresponding notation to the notice of motion. Thirdly, a prayer was added which had the effect that if the Russian Federation failed to give discovery consideration would be given to staying the proceeding (prayer 6A).

20    The amended notice of motion was heard on 3 March 2006. Judgment was delivered on 25 July 2006: S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2) [2006] FCA 931; 155 FCR 150. The removal of the list of thirteen entities from the amended notice of motion had the potential consequence that every agency of the Russian Federation would need to be searched, which was a notion which did not appeal to Edmonds J. At 154 [17] his Honour said this:

In effect, the orders now sought by Spirits would require every ministry, agency and instrumentality of the Russian Federation, not just FKP and FGUP, to undertake searches for documents in numerous, broadly defined categories, for the purposes of giving discovery in these proceedings. Even aside from questions of power, a lack of evidentiary support and the inappropriateness of granting such orders against an entity outside the jurisdiction, the orders are inappropriate because of their sheer scope. Further, the application is premature, in circumstances in which FKP and FGUP – the entities charged with dealing in and conducting proceedings in relation to the trade marks in question – have yet to give inter partes discovery.

21    Despite those concerns, Edmonds J then concluded that the Russian Federation was the real plaintiff (at 154 [18]) and, in principle, ordered it to provide discovery akin to an under Order 15A r 8. A significant factor in his Honour’s reasoning on that issue was that it was the Russian Federation, rather than the Cross-Claimants, which claimed to be the owner of the Australian trademarks. His Honour made other findings along similar lines which it is not necessary presently to relate. The immediate point is that his Honour’s conclusion that the Russian Federation was the real plaintiff rested upon a finding that it was the Russian Federation which claimed to be the owner of the Australian trademarks and the Cross-Claimants were mere conduits on its behalf. This matters because, as will be seen, sometime after the judgment of Edmonds J the Russian Federation assigned its interest in the Australian trademarks to the Cross-Claimants. On the present application, the submission was made that this meant that the conclusion of Edmonds J that the Russian Federation was the real plaintiff could no longer stand and should be revisited. I deal with this issue below from [140].

22    Returning to his Honour’s reasons, it is necessary to note the terms of the former Order 15A r 8 (upon which prayer 4 was pursued before his Honour). It was in these terms:

8 Discovery from non-party

The Court may order that a person who is not a party and in respect of whom it appears that the person has or is likely to have or has had or is likely to have had in the person’s possession any document which relates to any question in the proceeding shall make discovery to the applicant of any such document.

23    His Honour accepted at 156-157 [28]-[29] that such an order could be made. But his Honour observed that that that conclusion ‘should not be read as indicating the form of the order I think should be made’. Although it was not necessary to do so his Honour then made some comments on the application for a Sabre order in prayers 5 and 6. He would have declined to make such an order. His Honour had a number of reasons for that conclusion of which two are presently material. First, he did not think that the Cross-Respondent had established on the evidence before him that there was a real possibility that the Cross-Claimants would be given access to the documents by the Russian Federation (at 157 [31]); and secondly, the form of order did not identify the relevant agencies or the kind of documents they might be expected to have (at 157 [32]).

24    His Honour’s ultimate conclusion was at 157-158 [36]-[37]:

36    At this stage, I am not convinced that the discovery that might be given by the Russian Federation needs to be as comprehensive as all documents falling within the categories set out in the schedule to the Notice of Motion. It may be that I can be persuaded, in the interests of doing justice between the parties, that discovery by the Russian Federation needs to be that comprehensive but I would first want to hear the parties on the matter. It may be that the parties can agree more confined categories, but if not, I will hear the parties prior to formulating the precise terms of the order.

37    I propose to stand the motion over to a date to be fixed to hear the parties on the categories of discovery that might be given by the Russian Federation and how the orders to give effect to these reasons might be formulated.

25    Once these reasons for judgment were delivered it was apparent that the Russian Federation would at some point be required to give discovery as a result of its status as the real plaintiff. However, the terms on which it would do so were not at all clear. The only order made by Edmonds J on 25 July 2006 was the order foreshadowed at 158 [37]:

1.    The motion be stood over to a date to be fixed to hear the parties on the categories of discovery that might be given by the Russian Federation and how the orders to give effect to these reasons for judgment might be formulated.

 2.    The costs of the motion be reserved.

26    What happened thereafter is not clear but on 5 September 2006 the following orders were made:

1.    Unless the Russian Federation provides discovery of all documents falling within the categories to be agreed or failing agreement determined by the Court, by filing and serving a verified list by such date as the Court may order, the Cross-Claim be stayed on that date until further order.

2.    The Cross-Claimants pay the First Cross-Respondent’s costs of the First Cross-Respondent’s Motion (including as amended) dated 23 November 2005.

3.    The Cross-Claimants have leave to appeal from Orders 1 and 2.

27    At this point, the terms of these orders meant that there remained unresolved the categories which were to be discovered and also the mechanism by which the Russian Federation was to give discovery. Order 1, when closely read, did not actually require anyone to do anything. Read in the light of the grant of leave to appeal in Order 3, it is likely that the purpose of the orders of 5 September 2006 was merely to allow the Cross-Claimants to test on appeal the correctness of the conclusion that the Russian Federation was the real plaintiff and therefore obliged in principle to give discovery.

28    The appeal was heard on 16 November 2006 and decided on 28 March 2007. The Full Court decided the appeal on a basis not considered by Edmonds J. It concluded that Order 1 should not have been made without first inviting the Russian Federation to give discovery voluntarily: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International NV [2007] FCAFC 43; 157 FCR 558 (Black CJ, Allsop and Middleton JJ). Their Honours explained their view this way at 562-563 [22]:

In all the circumstances of this case, it was not necessary for the fair conduct of the proceedings for the learned primary judge to make the order of which the appellants complain without first giving the Russian Federation the opportunity to provide the discovery sought voluntarily and in cooperation with the appellants.

29    The consequence was that the Full Court set aside Order 1 of 5 September 2006 and in lieu thereof dismissed the notice of motion filed on 23 November 2005. A special leave application was then pursued in the High Court which was heard on 5 October 2007. At the hearing of the special leave application counsel for the Cross-Claimants was asked by the High Court how the invitation envisaged by the Full Court might be delivered. Counsel answered in part:

They would direct it the entity they call the Russian Federation and presumably say “Here is our litigation, here is our need for documents. Can you tell us whether you will give us anything voluntarily? If you will not, can you tell us what difficulties there may be by reason of practice or immunity or privilege in Russia in producing documents?”

30    The special leave application was dismissed. The anterior reasons of Edmonds J nevertheless contemplated that it would still be necessary to determine the actual discovery categories. The question of what form any discovery order against the Russian Federation might take appears, in light of the Full Court’s reasoning, not to have been necessary to answer until such time as the Russian Federation was first invited to give discovery voluntarily. Also left unarticulated at this stage was the issue raised by Edmonds J at 154 [17] and 157 [32] as to what was encompassed in the concept of the Russian Federation.

31    In 2008 the proceedings as a whole went into a long hibernation whilst the parties pursued international settlement negotiations. On 23 December 2008 Edmonds J granted the Spirits Applicants leave to discontinue their proceeding against Diageo and they filed a notice of discontinuance pursuant to that grant of leave on 6 January 2009. This left on foot the Cross-Claimants proceeding against the Cross-Respondent, Spirits International BV. Settlement negotiations nevertheless continued.

32    The long truce which had existed since 2008 was broken in 2010. Thereafter the parties engaged in a number of interlocutory skirmishes:

    The Cross-Claimants sought an order that there be determined prior to trial a number of separate questions. This application was granted by Edmonds J on 26 November 2010: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. [2010] FCA 1293.

    On 4 March 2011 the Full Court heard an application by the Cross-Respondent for leave to appeal from that determination. This was refused on 20 May 2011: Spirits International BV v Federal Treasury Enterprise (FKP) Sojuzplodoimport [2011] FCAFC 69; 91 IPR 438.

    On 27 September 2011 Edmonds J heard several complex interlocutory applications by both parties. These related to pleadings and security for costs. A dispute about discovery categories in relation to the hearing of the separate questions was resolved consensually. Edmonds J decided the various applications on 25 January 2012: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 2) [2012] FCA 23.

    His Honour heard a further pleading dispute on 2 November 2012 which he resolved on 15 February 2013: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 3) [2013] FCA 85; 300 ALR 741.

    An appeal to the Full Court was upheld on 18 September 2013: Spirits International B.V. v Federal Treasury Enterprise (FKP) Sojuzplodoimport [2013] FCAFC 106.

    There was a subsequent costs debate decided by the Full Court on the papers on 29 October 2013: Spirits International B.V. v Federal Treasury Enterprise (FKP) Sojuzplodoimport (No 2) [2013] FCAFC 120.

33    On 4 December 2013 Edmonds J made orders for discovery by both sides. So far as the Cross-Claimants are concerned they were ordered to provide discovery in the following terms:

The Cross-Claimants provide discovery (by filing and serving a verified list) of documents falling within the categories specified in Annexure B to these orders, and any further categories agreed pursuant to order 5, by 30 April 2014.

34    There was further provision made in Orders 5-9 for the determination by consent or Court order for further possible categories of discovery. The categories in Annexure B were detailed and six pages in length. The possibility that additional categories might be agreed or ordered was never thereafter taken up. It is useful to refer to the categories in Annexure B as the Australian Discovery Categories (to contrast them with the US Discovery Categories discussed later in these reasons). The Australian Discovery Categories remain the categories presently the subject of the Cross-Respondent’s complaint.

35    The orders of 4 December 2013 did not deal with the Russian Federation at all and appear confined in their operation to the Cross-Claimants. Presumably, the reason for this was because both parties understood that the consequence of the Full Court’s earlier decision was that the Russian Federation first needed to be invited to give discovery voluntarily.

36    To those invitations it is now necessary to turn. The first was sent by the solicitors for the Cross-Respondent to the solicitors for the Cross-Claimants on 5 August 2014. The letter was as follows (so far as relevant):

We refer to your clients' discovery as provided pursuant to your clients’ Fourth and Fifth Lists of Documents dated 24 June 2014 and 2 July 2014 respectively.

We would be grateful if you could confirm whether your clients’ discovery includes all documents within the possession, custody or power of the Russian Federation which fall within categories set out at Annexure B to the orders made on 4 December 2013 in this proceeding.

As your clients will be aware, our client’s position is that the Russian Federation, as the party on whose behalf this proceeding is brought and maintained by your clients, should provide discovery of relevant documents within its control in this proceeding. If the discovery already provided by your clients does not already encompass all such documents, please confirm whether your clients are willing and able to provide discovery of documents within the possession, custody or power of the Russian Federation which fall within the categories specified in the 4 December orders, and the timeframe in which they are able to provide such discovery.

Please provide us with your response by Friday 15 August 2014.

37    Of course, Edmonds J had already concluded that the Russian Federation was the real plaintiff and that determination had not been reversed on appeal. On 27 August 2014 the solicitors for the Cross-Claimants replied in these terms:

We refer to your letter dated 5 August 2014.

We note your client's position. Our clients' position, on the other hand, is and has always been that they are economic entities organised and existing under the laws of the Russian Federation. While the FKP acts in the interests of the Russian Federation and ultimately in its benefit, it does so as a commercial enterprise in accordance with the provisions of its charter.

Our clients are not the Russian Federation, nor do they have any right to any documents held by the Russian Federation.

Our clients are only required to produce documents that are within their possession, custody or power, which they have done by way of their fourth and fifth lists of documents.

Notwithstanding, our clients have prepared requests to be sent to each of the Russian Federation State bodies named in schedule B of your client's motion dated 23 November 2005 for documents in their possession, custody or power that fall within the agreed categories of documents for discovery by the cross-claimants. All of the requests will be delivered by the end of this week, at the very latest. We have been instructed that it may take between two and six months to receive a response from each state body.

We will keep you informed of any developments.

38    This was an important development for three reasons. First, it was the first time, so far as the evidence discloses, that the Russian Federation came to be identified for the purpose of the invitation to give voluntary discovery by reference to the 13 State entities who were listed in Schedule B to the notice of motion of 23 November 2005. This does not appear to have been something required either by Edmonds J or by the Cross-Respondent up to this point. Whilst it is true that the Notice of Motion of 23 November 2005 had sought to define the Russian Federation to include the 13 State entities there is no evidence before the Court that the Cross-Respondent had suggested that the voluntary discovery to be given by the Russian Federation should be seen as requiring only discovery from the 13 State entities. And, indeed, in its amended notice of motion the Cross-Respondent appeared to have abandoned the 13 State entities.

39    Secondly, it is of importance to understand that the proposal to alight upon the 13 State entities appears to have emerged from the Cross-Claimants’ side of the ledger. Even if there is correspondence of which the Court is unaware which predates the letter of 27 August 2014, that letter certainly shows that at that time the Cross-Claimants were not concerned about the breadth or burden of the task of contacting the 13 State entities. Indeed, it shows that they would be shortly undertaking that task without complaint. I mention this because in its most recent evidence to this Court the Cross-Claimants suggest themselves surprised in 2017 that they had to seek discovery from such a broad range of entities. I cannot accept this in light of the letter of 27 August 2014.

40    Thirdly, it is significant that as at 27 August 2014 the Cross-Claimants were suggesting that it might take two to six months to obtain responses from the entities. I return later in these reasons to the adequacy of what has taken place, but it may be noted by way of preliminary observation, that as at the date that the present application was heard before me (14 March 2019) discovery was still not complete. This is just over four and a half years after it was first volunteered that it would be done in six months.

41    The next step appears to have been a letter sent by the Cross-Respondent’s solicitors to the Cross-Claimants solicitors on 19 September 2014. This letter does not appear to be in evidence. However, the Cross-Claimants’ solicitor’s letter in response dated 16 October 2014 is in evidence. It is apparent from the last paragraph of that letter that the letter of 19 September 2014 had suggested that if certain discovery steps were not taken then the Cross-Respondent would apply for a stay. The letter set out in some detail the steps which had been taken to obtain discovery from the 13 State entities. The last two paragraphs of the letter were as follows:

You have advised us that you will be writing to the Embassy of the Russian Federation in Australia in relation to the production of documents by the Russian Federation for the purpose of this proceeding. Please provide us with a copy of your letter to the Embassy, and any response you have received.

In all the circumstances set out above, it would appear that the relevant State bodies are voluntarily, and in co-operation with your client, undertaking the discovery process. We can see no prejudice being caused to the parties as a result of the delay in obtaining responses from the remaining State bodies, who have indicated that a response will be forthcoming in the coming weeks. Therefore, our view/position is that it would be premature for your client to file an interlocutory application in relation to the production of these documents by the Russian Federation.

42    So it seems that as at 16 October 2014 the Cross-Claimants’ position was that it was making inquiries of the 13 State entities and that the process would soon be finished. This may be contrasted with its present position which is that it is surprised to find out that it is required to inquire from such a range of entities about such a broad range of discovery topics.

43    Between October 2014 and November 2015, documents were produced by the Cross-Claimants from some of the 13 State entities. However, there were gaps. Much correspondence passed between the solicitors about the completeness of the process.

44    On 18 November 2015 the solicitors for the Cross-Respondent wrote to His Excellency the Ambassador of the Russian Federation to the Commonwealth of Australia. The letter was long but for present purposes it made these points. First, the Cross-Respondent had sought to obtain the discovery through the Cross-Claimants from the 13 State entities but, after a year, only a small number of documents had been produced. A number of deficiencies were identified (for completeness, in the First Stay Decision I accepted most of these deficiencies). Secondly, the Ambassador was asked to request each of the 13 State entities to provide documents in their possession, custody or control which fell within the discovery categories ordered by Edmonds J on 4 December 2013. Thirdly, a response was sought by 18 December 2015. A copy of the letter to His Excellency was also sent to the solicitors for the Cross-Claimants.

45    On the same day, an identical letter was sent to the Trade Mission of the Russian Federation in Australia also seeking a response in a similar timeframe. No response was ever received from His Excellency the Ambassador. This may be explicable on the basis that the matter seems, at least in the first instance, to have been handled by the Trade Mission. So much is apparent from an email sent by Mr Alex Kuznetsov, Consultant of the Trade Representation of the Russian Federation in Australia, on 18 November 2015 in which he said that his office ‘will assist you in this matter’. However, nothing further emerged from his office. A follow up email from the Cross-Respondent dated 12 February 2016 went unanswered. I was not taken to any other evidence that the letter to the Ambassador has ever been replied to. Nor was I taken to any evidence of the Russian Federation ever indicating an awareness that the request had been made or taking any step to respond to the invitation (apart from the actions of the Cross-Claimants).

46    The solicitors for the Cross-Respondent and the Cross-Claimants then engaged in further correspondence. Without dwelling on all of its rich detail, these points were made: the Cross-Respondent asserted that the Russian Federation had failed to give proper discovery; this was denied by the Cross-Claimants who suggested that perhaps there were no documents; the Cross-Respondent suggested that if that were so the persons in charge of the 13 State entities might swear an affidavit to that effect; the Cross-Claimants countered that that would not be possible but that it could provide an affidavit explaining why it could not obtain such affidavits. This unrewarding exchange extended over the period between 3 December 2015 and 27 April 2016. On that last day, the Cross-Claimants indicated that the foreshadowed affidavit was being settled by counsel.

47    By 19 August 2016 no such affidavit had been provided. It was at this time that the Cross-Respondent applied to stay the proceeding until such time as proper discovery was given by the Russian Federation. I heard that application on 2 November 2016. On 20 November 2017 I granted the stay sought in the First Stay Decision. At [60] I accepted that there had been a failure by the Russian Federation to produce documents falling within the discovery categories ordered by Edmonds J on 4 December 2013, that the inquiries made on its behalf to find relevant documents were insufficient and that no proper explanation had been given as to how it was approaching the task. At [65] I explained what seemed to be the context of the situation:

65    What should the Court do? One option would be for the Court now to make the order originally made by Edmonds J on 5 September 2006. That would involve requiring the cross-claimants to give proper discovery, including by the Russian Federation, by a given date in default of which the proceeding would then be stayed. However, it seems to me that this has, in effect, already happened once. The invitation has been sent but not really responded to. It is difficult to justify putting Spirits to the inconvenience and expense of making this application a second time. In the extraordinary circumstances which this case throws up, I propose to stay the cross-claim until further order. I am fully cognisant of the gravity of that exceptional step. However, I can see no other way of ensuring that these proceedings are conducted fairly. To whet the appetite of the cross-claimants for the process, I will indicate that I will entertain an application by the cross-respondent after 30 November 2018 to dismiss the entire proceeding if proper discovery has not been given by then.

48    The formal orders made to give effect to this were as follows:

1.    The proceeding be stayed until further order.

2.    The Cross-Claimants pay the Cross-Respondent’s costs of the application for the stay.

3.    The stay in Order 1 does not prevent the Cross-Claimants from applying to lift the stay on the basis that they have caused proper discovery to be given by the Russian Federation.

4.    In the event that proper discovery has not been given by 30 November 2018, the Cross-Respondent be granted leave to file an interlocutory application seeking the dismissal of the Cross-Claim.

49    It will be seen that the effect of the orders was not to dismiss the proceeding automatically on 30 November 2018 but instead merely to provide that the Cross-Respondent could apply for a dismissal at that time. The import of [65] and the leave granted to the Cross-Respondent to apply to dismiss the proceeding was plainly that if discovery was not adequately provided by the Russian Federation by 30 November 2018 dismissal of the proceeding was something which would be under active consideration.

50    As it happens, there was some activity going on within the Cross-Claimants’ camp in the period between 20 November 2017 when the interim stay was put in place and 30 November 2018 after which the Cross-Respondent would then have leave to seek to dismiss the proceeding. Until 30 November 2018, however, these activities were communicated neither to the Cross-Respondents solicitors nor to the Court. From the Cross-Respondent’s perspective the Cross-Claimants (and the Russian Federation) went entirely silent for a year (though there was correspondence on unrelated topics).

51    At the end of that long silence, on 30 November 2018 at 2.31 pm the Cross-Claimants informed the Cross-Respondent’s solicitors that they were in receipt of more than 40,000 pages of documents and were in the process of putting in place document management procedures. As will be seen the number of 40,000 has turned out to be incorrect. The Cross-Claimants intended to provide further documents to the Cross-Respondent and to deliver a first tranche in mid to late January 2019 and thereafter in tranches every two to three weeks. No discovery was itself given on 30 November 2018. The Cross-Claimants now say that the solicitors were wrong to refer to 40,000 documents and that the true number of documents produced in the US Proceeding was closer to 13,000. At other times, the number has been suggested to be 10,000.

52    On 7 December 2018 the Cross-Respondent filed an interlocutory application to dismiss the cross-claim. The application was returnable for directions on 14 December 2018 at which time it was fixed for hearing on 14 March 2019. No discovery was given on this day either. In fact, a first tranche of 7,427 pages of documents was not delivered to the solicitors for the Cross-Respondents until 7 March 2019, a week before the present hearing. Those documents were received by Mr Swinson, the solicitor for the Cross-Respondents at 3.38 pm (22 minutes before the Cross-Respondent’s evidence and submissions were due). According to him, the documents were in Russian (at least the ones he inspected) and in many cases redacted. The hearing of the application for the dismissal of the Cross-Claim took place on 14 March 2019.

53    A number of factual submissions which were made at that hearing involved contentions about the processes of discovery which have occurred in the United States. For that reason, it is necessary to take a diversion through the proceeding presently pending in the United States District Court for the Southern District of New York and the discovery orders made therein.

THE UNITED STATES PROCEEDING

54    At around the same time as the Australian proceeding was commenced FKP commenced a corresponding proceeding in the United States District Court for the Southern District of New York relating to the ownership of equivalent trademarks in the United States. The essential allegation was that FKP was the lawful successor in title to the Stolichnaya trademarks used in relation to vodka. However, that suit encountered the same issue that had led Edmonds J to conclude that the real plaintiff in the Australian proceeding was the Russian Federation, namely, that the trademarks were owned by the Russian Federation. On 1 September 2011 the US District Court dismissed the suit prior to discovery because FKP lacked standing to pursue the proceeding. This decision was affirmed on appeal by the US Court of Appeals for the Second Circuit on 5 August 2013: Federal Treasury Enterprise Sojuzplodoimport v SPI Spirits Limited 726 F3d 62 (2d Cir 2013). A petition to the Supreme Court of the United States for a writ of certiorari was denied on 24 February 2014.

55    The response of the Russian Federation was swift. On 1 February 2014 it issued Decree 69 which directed the Federal Agency for State Property Management to transfer to FKP the Russian Federation’s entire right, title and interest in and to the US and Russian marks. On 3 February 2014 the Russian Federation transferred its title in those marks to FKP in obedience to Decree 69. The speed with which the Russian Federation appears to have moved on that occasion may be noted. In February 2014 FKP filed a second proceeding in the United States District Court for the Southern District of New York (‘the US Proceeding’). The US Proceeding was dismissed by the US District Court on the basis that FKP lacked standing since Decree 69 was invalid under Russian law. This conclusion was reversed by the Court of Appeals for the Second Circuit on act of state grounds: Federal Treasury Enterprise Sojuzplodoimport v Spirits International BV 809 F3d 737 (2d Cir 2016).

56    There has been extensive debate about discovery in that proceeding which remains ongoing. Before descending into its detail it is useful to note at the outset that the discovery debate in the US Proceeding postdates by nearly two years the categories ordered by Edmonds J on 4 December 2013 in the Australian Proceeding. Further, by their solicitors’ letter of 8 August 2014 the Cross-Claimants indicated in the Australian Proceeding that they would be making inquiries of the 13 State entities in relation to the categories specified on 4 December 2013. As I have noted above, this makes it difficult to accept that more recently they have been taken by surprise by the breadth of the categories or the range of Russian Federation entities to be contacted. The fact is that the Australian Discovery Categories and the entities to be interrogated were settled before the US Proceeding was even commenced.

57    On 16 October 2014, Spirits International BV issued discovery requests to FKP in the US Proceeding. Documents were produced under these requests. The requests had included a specific request for documents in the possession of the Russian Federation. Pursuant to that request some 3,400 documents from the Russian Federation were produced. On 9 November 2017 the District Court’s Discovery Master, Master Brodsky, issued an amended order that FKP produce a number of documents in the possession of the Russian Federation akin to a Sabre order pending the production of which all discovery proceedings would be stayed. This decision is under review but had not been reviewed at the time of the hearing before me. The parties referred to the Discovery Master’s order as the ‘Brodsky Order’ and I will adopt the same convention.

58    On 6 March 2019 FKP sent the Cross-Respondent’s New York attorneys a CD containing 10,000 pages apparently collected from 5 Russian State entities (it will be recalled that 7,427 documents were produced in the Australian at around the same time). The relationship between these 10,000 documents and the 40,000 referred to in their solicitors letter of 30 November 2018 is obscure.

THE SHAPE OF THE DEBATE

59    It is useful to say something of the broad outline of the debate between the parties. The basic position of the Cross-Claimants is that they have given to the Cross-Respondent the documents produced under the Brodsky Order. The categories ordered under the Brodsky Order on 9 November 2017 are then said overall to be broader than those ordered by Edmonds J on 4 December 2013. It followed, so the argument ran, that production in the Australian Proceeding of the documents discovered in the US Proceeding would satisfy the requirements of the Australian discovery order. It was true, the Cross-Claimants accepted, that the Brodsky Order was directed to a smaller number of Russian Federation entities than the 13 State entities which the Cross-Claimants volunteered they would seek production from in the Australian Proceeding (by means of their letter of 8 August 2014). However, this was not to be seen as an obstacle since the Cross-Claimants had pursued further inquiries with the entities the subject of the Australian discovery orders. These inquiries had resulted in one of three outcomes:

(i)    Documents had been produced from the entities and these had been handed over to the Cross-Respondent very recently; or

(ii)    There were no further documents held by the relevant entity; or

(iii)    There were further documents but it was unlawful for them to be produced.

60    Based on these propositions, the Cross-Claimants then submitted that they had done all that could reasonably be asked of them. They pointed to r 20.14(1)(b) of the Federal Court Rules 2011 (Cth) and submitted that the obligation resting on a party giving discovery was only to perform reasonable searches. Next they contended that the evidence showed that they had performed reasonable searches and hence must now be taken to have given adequate discovery.

61    For the reasons which follow, I do not accept this argument. In summary: first, as a matter of principle the argument is unsound because it asks the wrong question. The present issue is not whether the Cross-Claimants have given proper discovery; rather, the question is whether the Russian Federation has given proper discovery. Secondly, the evidence does not establish that the Russian Federation has given proper discovery. Indeed, it demonstrates that it has ignored the invitation. Even now, there remain substantial searches which have not been conducted and which will not be conducted in the foreseeable future. Thirdly, even if the appropriate inquiry was whether the Cross-Claimants had themselves given discovery (which it is not), my conclusion is that they have not yet done so either. On their own evidence, they were still conducting searches at the time of the hearing and would be doing so for the foreseeable future. The Cross-Claimants did not give any estimate of when this process would be concluded. I do not think it will be soon.

THE CORRECT QUESTION

62    It has been apparent since the beginning of the discovery process before Edmonds J that both the Court and the parties have understood the distinction between discovery by the Cross-Claimants and discovery by the Russian Federation. It is therefore not to the point that the Cross-Claimants have themselves carried out what are alleged to be reasonable searches or that that such searches have run into bureaucratic obstacles when particular Russian Federation agencies have refused to disgorge documents. Indeed, it was because the Cross-Claimants might encounter that precise problem that Edmonds J thought that a Sabre order would be inappropriate (‘there must be a real likelihood that the party, in this case FKP and FGUP, who is to take steps to obtain access to and discover the documents which are in the possession, power or control of a third party, would be given access to the documents upon request’: S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2) [2006] FCA 931; 155 FCR 150 at 157 [31]). Were this not so, the Russian Federation would be able to throw up road blocks in the path of the Cross-Claimants and then claim those self-imposed obstacles in its own aid.

63    In this case, the focus must be on what the Russian Federation has done as the recipient of the invitation sent to its Ambassador. This is more so when two facts establish that the pursuit of these proceedings is being sanctioned at the very highest levels of the Russian Federation. I referred to one of these in my previous judgment: see First Stay Decision at [2]. It was that then Acting President Vladimir Putin had, on 13 March 2000, issued this instruction to officials including the Prime Minister and the Minister of the Interior:

I request urgently to take measures directed to restoration and protection of the rights of the state concerning intellectual property in the sphere of production and turnover of vodka products, and also for detection and bringing to account of the persons involved in violation of these rights.

Report on the results monthly.

64    The second is the fact I have explained above that when the United States Court of Appeals for the Second Circuit upheld the conclusion that FKP lacked standing to pursue trademark proceedings before the United States District Court for the Southern District of New York, the Russian Federation swiftly responded by passing Decree 69 instructing the Federal Agency for State Property Management to transfer to FKP the Russian Federation’s right, title and interest in and to the US and Russian marks. Two days later that assignment took place. This shows that when the Russian Federation wishes to get something done in this litigation which is to its advantage it is able to bring this about promptly. It will be noted in that regard that the Court of Appeals delivered its judgment on 5 August 2013 and Decree 69 came into effect on 1 February 2014, a period of just 5 months. By contrast, five years into the process of extracting documents from the Russian Federation the process is by no means complete. The contrast is instructive.

65    That contrast allows one to be sure that there is no reason to think that the Russian Federation is incapable of responding to the invitation to its Ambassador. There is also, therefore, no reason to depart from the conclusion that the question to be answered is whether the Russian Federation has taken reasonable steps to give discovery in the Australian Proceeding.

THE ADEQUACY OF DISCOVERY GIVEN SO FAR

66    That observation inevitably requires one to descend into a consideration of what has been provided from the US Proceedings and what has been provided by the 13 State entities. Although the conclusion I have reached is that this consideration is to occur by asking whether what has happened is reasonable from the perspective of the Russian Federation, should that conclusion prove erroneous on appeal, I will also examine the question of whether what has happened is reasonable from the perspective of the Cross-Claimants.

67    It is useful to begin with the tranche of 7,427 documents provided by the Cross-Claimants to the Cross-Respondent in the Australian Proceeding on 7 March 2019. After some initial uncertainty it became apparent on 7 March 2019 that these documents emerged as a result of searches which had been conducted by the Cross-Claimants pursuant to the Brodsky Order. Those searches resulted in the production in the US Proceeding of some 13,000 further documents. These had been obtained from 7 Russian State entities. These were:

i.    The Federal Agency for the Management of State Property;

ii.    Rosalcohol;

iii.    The Ministry for Agriculture;

iv.    The Ministry of Property Relations of the Russian Federation;

v.    The Russian Agency on Patents and Trademarks;

vi.    The Apparatus; and

vii.    The Administration of the President.

68    By contrast, the entities involved in the Australian Proceeding are the 12 State entities set out above at [15] with the addition of the Investigation Committee. The entities which are on the Australian list but which are not subject to the Brodsky Order are these eight:

i.    Accounting Chambers of the Russian Federation;

ii.    Federal Security Service;

iii.    Federal Service on Financial Markets;

iv.    Ministry of Economic Development;

v.    Ministry of Finance;

vi.    Ministry of Internal Affairs;

vii.    State Archive of the Russian Federation; and

viii.    Investigation Committee for the Russian Federation.

69    Although the State Archive only appears as a designated entity in the Australian discovery regime, it is clear that it has also been involved, as a matter of practical reality, in the searches conducted for the entities required for the US Proceeding. I return in more detail below to the particular position of the State Archive.

70    Leaving the State Archive to one side, the fact that each of those entities was not subject to the Brodsky Order would suggest that producing documents from the discovery given in the US Proceeding would not be adequate for the purposes of the Australian discovery eight of the thirteen Russian entities were not searched for the purpose of the US Proceeding.

71    The Cross-Claimants endeavoured to deal with this problem at a factual level by showing that independently of the Brodsky Order adequate searches had in fact been made of these eight entities. The evidence for this came from Ms Semenova who is the head of International Division of the Law and Intellectual Property Department of FKP. She has been responsible for the administration of the US Proceeding and the Australian Proceeding since September 2009.

72    There was, however, a problem with Ms Semenova’s affidavit evidence. Exhibit NS-3 to her affidavit was not tendered. This exhibit appears to have contained a large amount of correspondence. Ms Semenova refers throughout her affidavit to this correspondence usually (although not invariably) by cross-reference to the relevant tab of Exhibit NS-3 (there are 181 such tabs). On occasion Ms Semenova has paraphrased a part of the document or summarised it to an extent but this is not the usual approach that she has taken. The fact that Exhibit NS-3 never made its way into evidence has resulted in her affidavit evidence having a certain Delphic quality at various points. For example, at [59] Ms Semenova says this:

On 19 October 2018, FKP received a letter addressed to the Accounting Chamber dated 18 October 2018 which had been drafted by Agility. A copy of that letter is behind Tab 22 [of Exhibit NS-3].

73    Sometimes one can tell from Ms Semenova’s evidence, even without the benefit of Exhibit NS-3, that the parties were involved in writing a lot of letters to each of other although the extent to which that fact advances any of the current issues may be doubted. I have done my best to make the most extensive findings about her evidence that I can, however, the situation is far from ideal. I raised this matter with the parties via my associate to be clear, if at all possible, that the Cross-Claimants had not tendered Exhibit NS-3. The email exchange was as follows:

Sent: Thursday, 21 March 2019 12:44 PM

Dear Practitioners

I refer to the above matter.

May the Cross-Claimants confirm (by reference to the transcript) whether Exhibit NS-3 to the affidavit of Natalia Semenova sworn 14 February 2019 and referred to at para [5] of the affidavit was tendered at the interlocutory hearing on 14 March 2019?

I note that various documents produced pursuant to the notices to produce served on 21 February 2019 were tendered and marked Exhibit 1.

Kind regards

[Associate]

--

Sent: Thursday, 21 March 2019 1:55 PM

Dear Associate

The Cross-Claimants have checked the index to Exhibit 1 against the documents referred to in Exhibit NS-3. The tab references to each of the relevant documents in Exhibit NS-3 are correctly reflected in the final column of the index to Exhibit 1 (titled “Comments”).

Should the Court require further clarification, please let us know.

Kind regards

[Solicitor for the Cross-Claimants]

--

Sent: 22 March 2019 12:16 PM

Dear Practitioners

Thank you for your confirmation below.

It would assist the Court if the Cross-Claimants would provide an updated index to Exhibit 1 which cross-references the documents in Exhibit 1 to the tab numbers in Exhibit NS-3.

Kind regards

[Associate]

--

Sent: 25 March 2019 12:27 PM

Dear Associate

The Cross-Claimants have checked the index to Exhibit 1 against the documents referred to in Exhibit NS-3. The tab references to each of the relevant documents in Exhibit NS-3 are correctly reflected in the final column of the index to Exhibit 1 (titled “Comments”).

Should the Court require further clarification, please let us know.

Kind regards

[Solicitor for the Cross-Claimants]

--

Sent: 25 March 2019 12:44 PM

Dear Practitioners

Thank you for your confirmation below.

I confirm that, of the 181 tabs in Exhibit NS-3 to the affidavit of Natalia Semenova of 14 February 2019 which was read without objection, only the following tabs were tendered at the hearing: Tabs 1, 2, 3, 5, 5a, 5b, 5d, 5e.

I confirm that none of the remaining tabs are in evidence.

Kind regards

[Associate]

74    In those circumstances, I must proceed on the basis that the vast bulk of Exhibit NS-3 is not in evidence. With that limitation in mind, it is necessary to turn to the position of each entity. I start with the State Archive because many of the other entities appear to have lodged their historical records with it. As will be seen in many instances, the relevant entity referred the Cross-Claimants to the State Archive.

The State Archive

75    The State Archive is a legal entity established by the Russian Government in the form of what is known under Russian law as a federal treasury establishment. It has a separate legal personality from the Russian Federation but is under the supervision of the Federal Archive Agency. It is a non-commercial entity and is not intended to make profits. It receives deposits of document of various documents from Russian agencies across different historical periods (i.e. the Russian Empire, the USSR and the Russian Federation).

76    A number of the Russian entities with which this case is concerned did lodge archival documents with the State Archive. Ms Semenova gave evidence that the State Archive stores the archival documents of the following agencies:

    The Apparatus of the Government;

    The Ministry of Agriculture;

    The Chamber of Accounts;

    The Ministry of Economics;

    The Ministry of Finance; and

    The Ministry of Property.

77    In the Australian Proceeding the State Archive was an explicit entity which was to be searched. In the US Proceeding it does not appear to have been an explicit entity. However, in the course of making inquiries of the entities required for the US Proceeding the Cross-Claimants were pointed in the direction of the State Archive and in fact searched it.

78    Pursuant the Order for the Use of Archival Documents in State and Municipal Archives of the Russian Federation dated 1 September 2017, No. 143, making copies of materials from the Archive costs $0.50 (which I assume has been converted from roubles). This therefore required the Cross-Claimants to conclude a contract with the State Archive. They did so 5 June 2018 for the 2018 year. On 6 February 2019 a fresh contract was negotiated for the 2019 year.

79    Between June and October 2018 a team of nine employees of the Cross-Claimants attended the State Archive. This occurred on at least 30 days. Typically the employees came in teams of three. These employees spent in excess of 280 hours searching for documents in the archive. They searched approximately 1,800 document folders. Each folder contained on average about 200 pages. It follows that around 360,000 pages have been inspected.

80    From those 360,000 about 1,100 pages have been isolated which are responsive to both the Australian and US discovery categories. However, these searches are not complete and are ongoing. There is no evidence that any part of the Russian Federation apart from the Cross-Claimants has taken any step to assist in the searching of the State Archive. To the contrary, my impression is that the Russian Federation has left the Cross-Claimants to do this work. There is no evidence of:

    any direction from the Russian Federation to assist the Cross-Claimants in their searches;

    the grant to the Cross-Claimants of additional resources in order to permit more timely searches; or

    any suggestion to the State Archive that it might assist the Cross-Claimants by waiving its fees.

81    The bottom line is that the searches of the State Archive are not complete.

Accounting Chamber of the Russian Federation

82    The Accounting Chamber of the Russian Federation is a permanent standalone supreme body that performs an independent external audit of the use of federal budget funds. The Accounting Chamber is accountable to the Federal Assembly.

83    At [44] in the First Stay Decision I noted that the Accounting Chamber had been contacted by the Cross-Claimants’ solicitors and requested to produce documents but had not done so. Yet it was apparent that such documents existed. In her most recent evidence, Ms Semenova said that after the stay application had been argued the Accounting Chamber had been asked to produce documents. It had produced some documents relating to the audit of FKP but otherwise said that it held no other documents and that documents from the period 1995 to 2002 were deposited in the State Archive. More importantly, Ms Semenova said that FKP had identified that there were other documents of the Accounting Chamber which were now held in the State Archive but that FKP had ‘not yet been able to start these searches of the State Archive as a result of the limited resources of [FKP]’.

84    I take from this evidence that although the Cross-Claimants have had sufficient resources to do some searches at the State Archive (as detailed above) they have not had sufficient resources to search its records for as many entities as they might have liked. However, the detail of this probably does not matter too much for present purposes. Regardless of how one views the matter, the fact is that the Cross-Claimants have not searched the State Archive for the records of the Accounting Chamber.

85    I conclude therefore that neither the Russian Federation nor the Cross-Claimants have conducted reasonable searches for documents of the Accounting Chamber. No adequate reason is proffered for why the State Archive has not been searched for the Accounting Chamber’s documents beyond the Cross-Claimants lack of resources. As with the State Archive itself, there is no evidence of the Russian Federation taking any step to produce the Accounting Chamber’s documents.

Federal Security Service of the Russian Federation

86    The Federal Security Service is the federal executive body responsible for the provision of security in the Russian Federation. According to Mr Muranov, ‘the President guides activity of the Federal Security Service’ which I take to mean that the President can direct the Federal Security Service to take particular steps. I see no reason to infer these might not include directing the Federal Security Service to disgorge to FKP/FKUP documents relevant to the Australian Discovery Categories.

87    Nevertheless, it is apparent from the evidence of Ms Semenova that the Cross-Claimants have repeatedly asked the Federal Security Service for the production of documents relating to the dispute and have been told more than once that there are no documents. An effort by Ms Semenova to have someone at the Security Service swear an affidavit to that effect was unsuccessful, eliciting the response ‘the issue of providing an affidavit of the employee who had searched for the requested documents lies beyond the scope of the FSS [Federal Security Service] of Russia’.

88    I conclude that the Cross-Claimants have made adequate searches. Ms Semenova appears to have done all that she can (noting particularly that the Cross-Claimants lack the ability under Russian law to compel other entities within the Russian Federation to produce documents). Insofar as the Russian Federation is concerned, I conclude that it has not taken any step to cause an affidavit to be produced from the Federal Security Service showing that it has no documents. As will be seen later, however, I propose to proceed on the basis that the discovery regime in place did not require the Russian Federation to produce affidavits. This assumption is probably incorrect but there is to a degree a lack of clarity about what discovery in the present context actually required from the Russian Federation.

Federal Service on Financial Markets

89    According to Ms Semenova this service was liquidated and its documents sent to the State Archive. Ms Semenova said ‘FKP is searching the State Archive for documents of the Federal Service’ but did provide any evidence as to how far these searches had progressed. Whilst it is apparent that FKP has conducted extensive searches at the State Archive it is not possible for me to say how complete the searches on this service are. I conclude that it is not shown that either the Russian Federation or the Cross-Claimants have completed the search for the documents of this service.

Ministry of Economic Development of the Russian Federation

90    Following correspondence commencing in 2014 the position of this Ministry was that any relevant documents it had were in the State Archive. As I have explained above, the searches of the State Archive are not complete. It is impossible in that circumstance to say either that the Russian Federation or the Cross-Claimants have completed giving discovery.

Ministry of Finance of the Russian Federation

91    Ms Semenova’s evidence established that the Cross-Claimants had requested the Ministry of Finance to produce documents relevant to the Australian Proceeding on 3 October 2014 and that the Ministry had produced 12 pages on 22 October 2014. In September 2016, the Cross-Claimants sought confirmation of the search processes which had been undertaken by the Ministry and they received such an explanation on 4 October 2016. Further inquiries were made in the period 2016-2018 which resulted in the Ministry stating on 13 November 2018 that it had nothing in addition to the 12 pages produced on 22 October 2014.

92    However, it also indicated that the Ministry’s documents for the period 1997-2000 were held in the State Archive. The position of the State Archive is that any member of the public including the Cross-Claimants can search its records. It declined an invitation itself to search for the documents falling within the Australian Discovery Categories. Consequently, FKP has been searching the State Archive itself. As explained above, Ms Semenova said that she had put together a team of persons to search the State Archive. These searches were not yet complete. FKP had concluded a contract with the State Archive so that the searches could continue through 2019. It was implicit in Ms Semenova’s evidence that those searches are not yet complete.

93    I do not think that one can say that the Russian Federation has given proper discovery at this stage. The search for the Ministry of Finance’s documents is not yet complete. There may yet be further documents of the Ministry in the State Archive. For the same reason, it is clear that the Cross-Claimants have not completed the task of providing discovery of the same documents.

Ministry of Internal Affairs of the Russian Federation

94    After a long correspondence, the position of the Ministry of Internal Affairs was that any of its documents would be held by the Investigation Committee. I discuss the position of the Investigation Committee below. The conclusion I reach is that reasonable searches of the Investigation Committee are not near being complete. I conclude therefore that neither the Russian Federation nor the Cross-Claimants have concluded the searches necessary for the Ministry of Internal Affairs.

Investigation Committee of the Russian Federation

95    The evidence about this Committee was more complex. In part this is because it appears to encompass a number of entities which Ms Semenova’s evidence does not clearly explain (although Mr Muranov threw some light on the issues). These entities are (a) the Investigation Committee of the Russian Federation; (b) the Main Investigation Department of the Investigation Committee of the Russian Federation for Moscow; and, (c) the Investigation Department for the Central Administrative District of the Main Investigation Department of the Investigation Committee of the Russian Federation for Moscow. Although it is not altogether clear Ms Semonova’s evidence tended to suggest that (b) and (c) were parts of (a) and that proposition is to some extent supported by the expert evidence of Mr Muranov who referred to ‘subordinate investigative departments of the constituent units (regions) of the Russian Federation. At the risk of some lack of precision, I propose to treat the evidence about (a)-(c) under the simple rubric of the Investigation Committee.

96    The evidence shows that the Cross-Claimants have been in correspondence with the Investigation Committee since 17 March 2015 right up until very recently. The correspondence seems to have had two phases. In the first phase, which lasted from 17 March 2015 to 21 November 2018, the Cross-Claimants sought to have the Committee give voluntary disclosure of documents. Understanding what Ms Semenova’s evidence about this means has been hampered somewhat by the omission of Exhibit NS-3 from the evidence. Doing the best that one can, the Investigation Committee (which supervises certain kinds of criminal inquiries) appears to have had on foot two criminal investigations. These were:

(a)    Criminal Case No 18/432807-07 (against a Mr Sorochkin); and

(b)    Criminal Case No 18/432808-07 (against Mr Shefler and Mr Skurikhin).

97    Doing the best one can, it appears that the Cross-Claimants issued several requests to the Investigation Committee to produce documents voluntarily. Nothing seems to have come from this enterprise. On 18 November 2018, after several years of comparative silence, the Investigation Committee told the Cross-Claimants that there were in fact a lot of documents and that the Cross-Claimants should attend and inspect them.

98    On 27 November 2018, the Investigation Committee informed the Cross-Claimants that the Investigation Committee had at its disposal the materials relating to Criminal Case No 18/432808-07 (against Mr Shefler and Mr Skurikhin). The Cross-Claimants were invited to inspect around 350 folders containing on average 300 pages each (i.e. around 105,000 pages). Because one of the cases was on-going the Investigation Committee insisted that it would need to inspect any documents selected by the Cross-Claimants to be disclosed to the Cross-Respondent to ensure that the integrity of the criminal case was not compromised.

99    The Cross-Claimants attended the Investigation Committee on 30 November 2018 and inspected two folders from which their employee identified around 400 documents. When the Cross-Claimants have finished inspecting the 350 folders the Investigation Committee will then review what the Cross-Claimants have inspected to determine what is to be released. So far the Cross-Claimants have inspected around 25 folders. There remain 325 still to be inspected.

100    A similar position has resulted in the case of the criminal case against Mr Sorochkin being Criminal Case No 18/432807-07. There are 74 folders to be inspected and so far the Cross-Claimants have reviewed five folders from which 1,252 pages have been abstracted.

101    Plainly the process of extracting documents from the Investigation Committee is not remotely close to being finished, indeed, it has scarcely commenced. Further, it seems that the process of extracting the documents from the Investigation Committee only began in earnest (at least from the Committee’s perspective) late last year. Again, there is no evidence to suggest that the Russian Federation has provided any assistance in relation to obtaining the documents of the Investigation Committee.

Conclusions on Russian State entities subject to the Australian discovery regime but not subject to the Brodsky Order

102    It follows readily from the above that neither the Russian Federation nor the Cross-Claimants have completed the discovery process. The Russian Federation has taken no steps at all to respond to the invitation. Everything has been left to the Cross-Claimants. There was no evidence of any effort by the Russian Federation itself to respond to the invitation. Even the proposition that the Cross-Claimants efforts on the discovery front are being done on behalf of the Russian Federation is a mere surmise on my part.

103    Out of deference to Ms Semenova, I would accept that since the First Stay Decision (i.e. from 20 November 2017) her efforts to extract materials from various agencies has become more extensive. Unfortunately, that process is not close to finished. Further, the process seems only to have begun in earnest many years after the original discovery orders against the Cross-Claimants were made.

Russian State entities subject to the Brodsky Order

104    I now turn to the position of the documents produced from the US Discovery from the perspective of the entities who are common to the discovery processes in both jurisdictions. These are:

i.    The Federal Agency for the State Property Management;

ii.    The Ministry for Agriculture;

iii.    The Russian Agency on Patents and Trademarks;

iv.    The Apparatus; and

v.    The Administration of the President.

105    In order to be satisfied that production of the documents discovered in the US Proceeding would satisfy the discovery requirements in the Australian Proceeding would be necessary to be satisfied of two matters. These are, first, that the Australian Discovery Categories are a subset (not necessarily a proper subset) of the discovery categories in the US Proceeding. Secondly, that the searches done in the pursuit of the US Proceeding are complete.

106    Mr Swinson, the solicitor for the Cross-Respondent, gave evidence that he had inspected both the categories disclosed in the Brodsky Order and also the categories the subject of the orders made by Edmonds J on 4 December 2013. He thought that four of the Australian Discovery Categories were not encompassed within the Brodsky Order. He also thought there were at least four classes of documents referred to by me in the First Stay Decision which would not have been captured by the Brodsky Order.

107    Dealing first with the four discovery categories, the first was Category 2. Category 2 of the Australian Discovery Categories was ‘Documents dated between 20 January 1992 and November 2004 recording or evidencing the ownership of or title to the Australian Trade Marks’. In their written submissions the Cross-Claimants submitted that that category was encompassed in Requests for Production 4 and 5 in the US Discovery. It is unclear to me whether these US Requests for Production were translated into actual discovery obligations. However, I will assume in favour of the Cross-Claimants that they were.

108    US Request for Production 4 was ‘All documents relating to your purported chain of title to the Trademarks’ but ‘Trademarks’ was defined to mean, summarising, various US trademarks. I reject therefore the submission that US Request for Production 4 included any documents caught by Category 2. US Request for Production 5 is as follows:

REQUEST FOR PRODUCTION NO. 5:

All documents on which you rely, to which you have referred, or that you have used to form any opinion or understanding about whether or not SPI has any interest in the Trademarks or any of the Foreign Trademarks, or about whether or not PepsiCo, Allied Domecq, or William Grant previously had any interest in the Trademarks or any of the Foreign Trademarks.

109    ‘Foreign Trademarks’ is defined in a way which would include the Australian trademarks. However, US Request for Production 5 is concerned with documents which have been used by the Cross-Claimants to form an opinion as to whether SPI has any interest in the Foreign Trademarks. Category 2, by contrast, is not subject to any such limitation. I therefore reject the submission that Category 2 is fully encompassed in US Requests for Production 4 and 5.

110    The next category was Category 8. It is the following terms:

Documents relating to the consideration of drafting and making of the following orders and resolutions:

(a)    Resolution No.590 of the Council of Ministers of the USSR dated 19 June 1990;

(b)    Resolution No.835 of the Council of Ministers of the USSR dated 16 August 1990;

(c)    Resolution No.601 of the Council of Ministers of the RSFSR dated 25 December 1990;

(d)    Disposition No.896-r of the Cabinet of Ministers dated 14 August 1991;

(e)    Order 3a (Schedule 2) of the State Committee of Food of the USSR dated 16 August 191; and

(f)    Decree of the President of the RSFSR dated 20 August 1991.

111    The Cross-Claimants submitted that Category 8 sought documents relating to the particulars to ¶4(f) of the Third Further Amended Cross-Claim. Paragraph 4(f) together with its particulars are as follows:

4.    From 1966 to date, the entity Sojuzplodoimport (Sojuzplodoimport) has been named an organised as follows under the laws of the former Union of the Soviet Socialist Republics (USSR) and subsequently the Russian Federation:

(f)    from 1990 to 2001, as the State Enterprise All-Union Foreign Trade Association (VVO) Sojuzplodoimport;

Particulars

(i)    Resolution No 590 of the Council of Ministers of the USSR dated 19 June 1990.

(ii)    Resolution No 835 of the Council of Ministers of the USSR dated 16 August 1990.

(iii)    Resolution No 601 of the Council of Ministers of the RSFSR dated 25 December 1990.

(iv)    Disposition No 896-r of the Cabinet of Ministers dated 14 August 1991.

(v)    Order 3a (Schedule 2) of the State Committee of Food of the USSR dated 16 August 1991.

(vi)    Decree of the President of the RSFSR dated 20 August 1991.

(vii)    The cross-claimants refer to the particulars to paragraph 14 below.

(viii)    The cross-claimants reserve the right to provide further particulars.

112    The reference to ¶14 is as follows:

In fact:

(a)    VAO-SPI was formed as a new entity and not by transformation of Sojuzplodoimport;

(b)    the provision in the Charter of VAO-SPI to the effect that it was the legal successor to Sojuzplodoimport was invalid according to Russian law;

(c)    VAO-SPI was not the legal successor to Sojuzplodoimport;

(d)    Sojuzplodoimport continued to exist as a separate legal entity following the formation of VAO-SPI.

Particulars

(i)    Ruling of the Court of Arbitration of Moscow dated 21 December 2000.

(ii)    Decision of the Presidium of the Supreme Court of Arbitration of the Russian Federation Order of 16 October 2007.

(iii)    Decision of the European Court of Human Rights in respect of the judgment referred to in particular (ii) above in OAO Plodovaya Kompaniya v Russia, 7 June 2007, which became final on 12 November 2007.

(iv)    Decision of the District Court of Rotterdam dated 14 June 2006.

(v)    Ruling of the Court of Appeal in the Hague dated 24 July 2012.

(vi)    Ruling of the Supreme Court of the Netherlands dated 20 December 2013.

113    It was then submitted that the documents sought related to FGUP and therefore fell within US Requests for Production 10 and 11. Those requests were as follows:

REQUEST FOR PRODUCTION NO. 10:

All communications and documents relating to the formation, organization, operation, or governance of FGUP VO-SPI, including but not limited to documents relating to or demonstrating (i) the involvement of the Russian Federation in its operations and decisions, (ii) any business it conducted, and (iii) any obligations it assumed.

REQUEST FOR PRODUCTION NO. 11:

All documents and communications constituting or relating to FGUP VO-SPI’s financial records, including but not limited to those relating to its assets, liabilities, or contractual obligations.

114    The definition of FGUP VO-SPI in the US Requests for Production includes any predecessor entity, which would include the entity referred to in ¶4(f) of the Third Further Amended Cross-Claim. So the question becomes whether the documents referred to in the particulars to ¶4(f) are discoverable under US Requests for Production 10 and 11. I accept that these documents are caught by US Request for Production 10 (although probably not US Request for Production 11 which only deals with financial records).

115    The next category was Category 18. It was in these terms:

Documents evidencing or relating to the involvement of the Russian Federation in this proceeding (Federal Court Proceeding (NSD1816 of 2004) and in the conduct of this proceeding.

116    The Cross-Claimants did not submit that Category 2 was encompassed in the requirements of the Brodsky Order. Instead, they submitted that they had already given discovery of this category of documents. There were two aspects to this. The first was that they relied upon a finding by me at [15] of the First Stay Decision. The second was a contention that they had conducted reasonable searches for these documents.

117    I do not accept either submission. Paragraph [15] of the First Stay Decision says this:

The present application for a stay represents the end-point of the drawn-out process commenced by the Full Court’s decision. On 4 December 2013, the parties were able to agree what the relevant categories for this discovery process should be and, on that day, Edmonds J made further orders giving effect to that agreement. As I understood it, there was no substantive complaint about FKP/FGUP’s own compliance with those orders. The difficulty instead lay in FKP/FGUP’s efforts to have the Russian Federation give discovery of the same matters.

118    This says nothing about the primary question here which is whether the Russian Federation has given discovery. For the same reason, it is not to the point that the Cross-Claimants allege they have made reasonable searches.

119    The last category was Category 19 which was in these terms:

Documents relating to the negotiation, drafting and grant of the Power of Attorney from FGUP to FKPS dated 8 December 2003.

120    The Cross-Claimants submitted that Category 19 fell within US Requests for Production 10 and 11. These are set out above; they appear to me to have nothing to do with Category 19.

121    In light of these matters, it appears to me that Mr Swinson is correct. Categories 2, 8, 18 and 19 of the Australian Discovery Categories are not necessarily encompassed under the Brodsky Order. It is not necessary in that circumstance to assess the correctness of his claims in relation to particular classes of documents.

122    This means that the Cross-Claimants argument must fail. It is not enough to satisfy the categories of discovery approved by Edmonds J that documents have been produced in compliance with the Brodsky Order.

123    It is not strictly necessary in that circumstance to assess how complete, in fact, the searches made under the Brodsky Order are. However, in the interests of completion the following short remarks may be made:

The Federal Agency for the State Property Management

124    8,000 pages have been located but they have not yet been provided to the Cross-Respondent. Production is therefore incomplete.

The Ministry for Agriculture

125    Searches of this Ministry are not complete. The Ministry informed the Cross-Claimants that it would collate the documents for the period 2004-2009 after which they will be permitted to inspect them. Plainly, this process is not complete.

126    Certain documents of the Ministry of Agriculture are deposited with the State Archive. Ms Semenova has deposed that the State Archive searches are complete resulting in 100 pages of documents. Nevertheless, the continuing searches at the Ministry itself demonstrate that discovery is not complete.

The Russian Agency on Patents and Trademarks

127    It appears as though 1,000 pages of documents have been identified as relevant to the Australian Proceeding, I am unable to fully determine the position in relation to this agency as the evidence is too unclear.

The Apparatus

128    Although 1,000 pages of documents have been produced from the Apparatus this process is not yet complete as FKP is continuing searches of the electronic database.

The Administration of the President

129    The President’s office does not send documents to the State Archive and destroys documents after 5 years unless they are important. Nevertheless, the Cross-Claimants were permitted to search and found 18 pages of reports.

CONCLUSIONS ON DISCOVERY

130    It is clear that the Russian Federation has itself taken no step to respond to the invitation issued to its Ambassador. However, I will assume in its favour that I should proceed on the basis that all of the steps taken by the Cross-Claimants to obtain documents from different entities of the Russian Federation are to be counted as efforts on its part. I do so notwithstanding that there is no evidence that the Russian Federation has done anything at all in response to the invitation to its Ambassador. But even so, the evidence I have referred to above shows that the Cross-Claimants’ efforts to search for documents are not close to being complete.

131    The following remain uncompleted:

    The searches of the State Archive, including for documents of other Russian State entities held by the State Archive, are not complete and Ms Semenova does not say when they will be complete.

    The searches of the State Archive for the documents of the Accounting Chambers have not even been commenced due to a lack of resources. There is no indication from Ms Semenova when resources will become available or when the Archive will be searched for these materials.

    The searches for the documents of the Federal Service on Financial Markets are not complete.

    The searches for the documents of Ministry of Economic Development of the Russian Federation are not complete.

    The searches for the documents of Ministry of Finance of the Russian Federation are not complete.

    The searches for the documents of Ministry of Internal Affairs of the Russian Federation and the Investigation Committee are not complete.

    The searches of the documents of the Federal Agency for the State Property Management are not complete.

    The searches of the documents of the Ministry for Agriculture are not complete.

    It is not shown that the searches of the documents of the Russian Agency on Patents and Trademarks are complete. The position with respect to this agency is entirely unclear but the Cross-Claimants bear the forensic burden in making good their assertion, repeated at the hearing several times, that they had completed giving discovery.

    The searches for the documents of the Apparatus are not complete.

132    Further, like the 9th Legion, there remains the mystery of what has happened to the balance of the 13,000 (or perhaps 10,000) documents produced in the US discovery after the first tranche of 7,427 pages were delivered in the Australian Proceeding even assuming, as was orally submitted, a further 1,250 pages were to be delivered the day after the hearing of these interlocutory applications.

133    It is true that the last year reveals increased activity on the part of the Cross-Claimants. However, where the invitation was issued in 2014 and the proceeding stayed in November 2017 on the explicit basis that the Russian Federation had failed to give adequate discovery, this will not do. I conclude that the Russian Federation has not made reasonable efforts to give discovery and that this failure is on-going.

134    I do not draw that conclusion about the Cross-Claimants. Although they have not succeeded in discharging the invitation issued to the Russian Federation, in their case it can at least be said that they are making reasonable efforts.

135    In reaching these conclusions I have not taken into account any failure on the part of the Russian Federation to produce affidavits of discovery. It was not sufficiently clear that the original invitation suggested that that should be done.

THE CROSS-CLAIMANTS’ STEPS IN 2018

136    Much of the evidence at the hearing of the present applications was taken up with an analysis of what the Cross-Claimants were doing in 2018 to deal with the issue of discovery. The point of this evidence was to rebut the proposition that the Cross-Claimants did nothing between the date on which the stay was put in place on 20 November 2017 and 30 November 2018 when the Cross-Respondent was thereafter given leave to file an application for dismissal.

137    Ms Semenova’s evidence suggests that during that year in fact the Cross-Claimants were busy making inquiries of various Russian entities and it was not the case that they were doing nothing. It was accepted on the Cross-Claimants’ part that they had not informed the Cross-Respondent that documents were being unearthed or inquiries made. Indeed, it was not in dispute that the Cross-Claimants made no contact with the Cross-Respondent in relation to discovery until the very last day, 30 November 2018, or that at no time did they seek to apply to the Court to extend the date of 30 November 2018.

138    The Cross-Claimants sought to justify this silence on the basis that they were acting on legal advice. I have not found it is necessary to deal with this issue which is, I think, a false one. However, I do reject Ms Semenova’s evidence that she was concerned on 20 November 2017 about the number of entities which needed to be contacted for the purposes of the Australian discovery or the breadth of the categories involved. Ms Semenova was in charge of the Australian litigation in 2013 and it was then that these entities and categories were put forward. The Cross-Claimants’ own lawyers volunteered in their letter of 27 August 2014 to search those entities in relation to those categories. I do not therefore accept Ms Semenova’s suggestion that she was somehow surprised by either on 20 November 2017.

139    However, whether Ms Semenova was surprised or not and whether the Cross-Claimants were hard at work in 2018 or not is immaterial in my opinion. The matter is instead to be decided by reference to whether discovery is now complete; if it is not now complete, when it will be complete; and, finally, when it was that the Russian Federation and/or the Cross-Claimants began the process of giving discovery. I assume in their favour that the steps they took (or more precisely did not take) in the Australian Proceeding in 2018 were reasonable. By this I mean that they are not to be criticised for failing to produce documents as they became available during 2018 and likewise that no criticism may be levelled at them for failing to apply to this Court to extend the deadline which had been put in place.

A FINAL ARGUMENT: REVISITING THE REAL PLAINTIFF ISSUE

140    It will be recalled from above that a significant part of the reasoning of Edmonds J in making the determination in 2006 that the Russian Federation was the real plaintiff rested upon the fact that it was the Russian Federation which owned the trademarks: see S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd (No 2) [2006] FCA 931; 155 FCR 150 at 154 [19]. This had the consequence that the Cross-Claimants were to be seen as suing on behalf of the Russian Federation.

141    A similar problem had led the United States District Court for the Southern District of New York to conclude that FKP lacked standing, a conclusion upheld by the US Court of Appeals for the Second Circuit. This resulted in the assignment to FKP by the Russian Federation of the Russian and United States trademarks. In relation to the trademarks in Australia (and the rest of the world), the matter was governed by Resolution 117 dated 12 February 2015 which required the Russian Federation to assign them to the Cross-Claimants. An assignment in obedience to Resolution 117 took place on 15 May 2015.

142    Although that assignment occurred nearly eighteen months before the hearing of the stay application on 2 November 2016, it was not brought to my attention. Further, the Cross-Claimants never sought to amend the Cross-Claim prior to the First Stay Decision as they could easily have done.

143    Neither the submissions of the Cross-Claimants nor their evidence went quite so far as to suggest that they were unaware of the fact that the interests of the Russian Federation in the trademarks had been assigned to them on 15 May 2015. Rather, Ms Fox deposed to the fact that in preparing for the hearing of the current applications (i.e. in 2019) ‘it became apparent that… for reasons unclear to me, the cross-claim on the court file (being the third amended cross-claim filed on 8 May 2014) was not updated to reflect the effect of Resolution 117 and the agreement that gave effect to it’. Although it is not strictly necessary to speculate, one reason may be that one of the government orders relied upon, that being ‘Order of the Government of the Russian Federation No. 355-r’ which amended FKP’s charter to remove certain references to the Russian Federation such as ‘FKPS internationally promotes Genuine Russian Vodka on behalf of the Government of the Russian Federation’, was only made on 2 March 2019, i.e. 12 days before the hearing of the current interlocutory applications.

144    It was then submitted that there had been a sufficient change in circumstances to warrant a departure from the conclusion of Edmonds J that the Russian Federation was the real plaintiff. It will be recalled that a significant part of his Honour’s reasoning had rested on the fact that it was the Russian Federation which was suggested to have title to the trademarks. The assignment of 15 May 2015 potentially degrades that reasoning.

145    There is no doubt that the Cross-Claimants could have put this material before me on 2 November 2016. It was available and I infer fully known to Ms Semenova. No explanation has been put before me as to why it was not raised at that time. Although all sorts of en passant suggestions have made about what Ms Fox’s predecessors were doing at the hearing on 2 November 2016, the simple fact it is not submitted that the failure to inform me of the assignment occurred other than in accordance with the Cross-Claimants instructions. Ms Semenova does not say anything about what instructions she gave the Cross-Claimants’ former solicitors about the assignment of 15 May 2015. Without such evidence I decline the invitation to speculate about the competence of the former lawyers. As the Full Court observed in Tamaya Resources Ltd v Deloitte Touche Tohmatsu [2016] FCAFC 2; 332 ALR 199 at 226 [155] per Gilmour, Perram and Beach JJ it must be borne in mind that the explanation required is that of the moving party and not merely that of their solicitor or counsel for ‘[t]he client may very well know matters relevant to the explanation for delay which are not known by the lawyers’. Although that comment was directed to the issue of delay, it is equally apposite in the current situation.

146    The Cross-Claimants allowed the whole issue of the first stay application to be conducted before the Court on the basis that the Russian Federation was the real plaintiff. I explicitly asked the Cross-Claimants counsel at the hearing of the first stay application whether there was any issue as to whether the Russian Federation was the real plaintiff. The following exchange took place:

MR PESMAN: Now, that submission requires some unpicking, and the first bit of unpicking – could I just deal with the “real plaintiff” issue and put that to bed. Over lunch, we managed to track down the original notice of appeal going back to 2006, and contrary to what my friend said, ground 5(b) was:

His Honour erred in holding that the Russian Federation was the real applicant.

But as we say in the submissions, that – for the – for your Honour’s resolution of the present application, it really doesn’t matter if that conclusion is correct or not.

HIS HONOUR: So I don’t need to resolve it?

MR PESMAN: No. We say your Honour can do it, and in any event, your Honour has got power to order third-party discovery.

HIS HONOUR: But I – you – you’re not going to complain if I proceed on the basis that Edmonds J’s conclusion that the Russian Federation was the substantive plaintiff wasn’t set aside on appeal?

MR PESMAN: No. I’m not – we don’t - - -

HIS HONOUR: And I’m not - - -

MR PESMAN: - - - concede, for present purposes, it’s correct, but your Honour can proceed on that basis.

HIS HONOUR: But I won’t err, from your perspective, if I decline to reopen that box?

MR PESMAN: We’ve made no submissions about it.

HIS HONOUR: All right. Okay.

MR PESMAN: Your Honour should proceed on that basis.

HIS HONOUR: Thank you, Mr Pesman.

MR PESMAN: And – however, that doesn’t involve any concession about the – what’s called the central relevance or the germane issue or the central issue, and that’s actually something that needs to be unpicked.

HIS HONOUR: The way you’ve just put the matter effectively reduces this to an ordinary kind of case about whether discovery has been - - -

MR PESMAN: Yes.

HIS HONOUR: - - - adequate - - -

MR PESMAN: And that - - -

HIS HONOUR: - - - which is just a factual question.

147    I read this as an unequivocal election that the question of the adequacy of discovery was to be conducted on the basis that the conclusion of Edmonds J that the Russian Federation was the real plaintiff was not to be overturned. The Cross-Claimants were aware of the assignment of 15 May 2015 through Ms Semenova and I infer, in the absence of any evidence to the contrary, that she perfectly knew that it was not being raised on 2 November 2016. The Cross-Claimants were confronted with a choice between conflicting legal pathways. They could put the assignment forward and suggest that Edmond J’s conclusions on the real plaintiff issue be revisited or they could accept it for discovery purposes. In my opinion, they must be taken to have elected not to put it in issue in relation to the failure of the Russian Federation to give proper discovery: Sargent v ASL Developments Ltd [1974] HCA 40; 131 CLR 634 at 646 per Stephen J; Immer (No 145) Pty Ltd v The Uniting Church in Australia Property Trust (NSW) [1993] HCA 27; 182 CLR 26 at 38-39 per Deane, Toohey, Gaudron and McHugh JJ; see also Commonwealth v Verwayen [1990] HCA 39; 170 CLR 394.

148    Another way of reaching the same conclusion is to observe that the hearing before me was conducted on the unchallenged assumption that the Russian Federation was the real plaintiff. There has neither been a change of circumstance since the hearing on 2 November 2016, nor the discovery of new material which could not reasonably have been put before the Court on that occasion since the Cross-Claimants had by then known of the assignment for more than a year. There is therefore no occasion to depart from that interlocutory conclusion: Brimaud v Honeysett Instant Print Pty Ltd (1988) 217 ALR 44 at 46-47 (‘Honeysett’) per McLelland J. Further, I would reach that conclusion regardless of whether Honeysett is a rule of law or a statement about general case management: cf Australian Competition and Consumer Commission v Adata (Vic) Pty Ltd (No 2) [2015] FCA 272 at [8]-[44] per Reeves J.

149    Even if I were minded to entertain the application I would dismiss it. The fact that any title to the trademarks was transferred to the Cross-Claimants does not have the consequence that the Russian Federation has ceased to be the real plaintiff. For example, there was no suggestion that the Cross-Claimants had purchased the trademarks from the Russian Federation nor that they were not pursuing the current proceeding on its behalf. All that has happened is an assignment to overcome a potential standing problem. There was no evidence before the Court which suggested that the Cross-Claimants were doing anything other than giving to effect to Acting President Putin’s direction to retrieve the trademarks. The assignment has not transformed the nature of the relationship between the Cross-Claimants and the Russian Federation.

150    I note for completeness that the Discovery Master in the United States District Court for the Southern District of New York rejected the same argument in the US litigation: Federal Treasury Enterprise Sojuzplodoimport v Spirits International BV (unreported, SD NY 9 November 2017) at 11:

Second, I find that an assignment effective under the Lanham Act, even if it is couched in terms of transferring the Russian Federation’s “entire right, title, and interest in and to the Trademarks” and “expressly relinquishes any and all right, title and interest” in the Marks, Supplemental Declaration of Jessica A. Rose, Ex. B at 3, is not the same as full, complete, and independent ownership and existence, where, as here, the agencies and entities, acting for the assignor, fundamentally control this litigation and, if it is successful, retain the fundamental ability to unwind the Assignment at the end of the Assignment’s useful life, regain control of the Trademark, and terminate, or at least materially alter, the existence of FTE.

FTE still does have the kind of relationship and affiliation with a limited number of entities within the Russian Federation -- Rosalcohol, the Ministry of Agriculture, the Ministry of Property Relations of the Russian Federation, the Russian agency on patents and trade marks, the Federal Agency for State Property Management, the Apparatus, and Administration of the President - such that, as the agent of these entities, FTE can be compelled to seek additional responsive documents from them.

I am not persuaded by the argument that the Russian Federation does not control the destiny of the Trademarks because the Russian government bodies have no authority to engage in commercial activities directly, which is why it was necessary to form a state enterprise to perform commercial activities involving the Marks, see Semenova Decl. ¶ 6; Krivelskaya Rpt. 16. The Russian Federation need not dissolve FTE to regain the control of the Marks, and obtain the benefits thereof, although the Russian Federation could, in fact, dissolve FTE. All the Russian Federation would have to do is create another federal treasury unitary enterprise to hold the Trademark and the State would derive the direct benefits thereof.

Here, while there may well be operational distinctions between how FTE relates to the Russian Federation as opposed to how, for example, the Civil Aeronautics Board or the Securities and Exchange Commission relate to the Executive Branch of the United States government, the fundamental and inescapable fact is that, in every practical way that matters in the commercial world, the Russian Federation ultimately controls the destiny of FTE, and, as a consequence, controls the disposition of the asset that is at the heart of this litigation, the Stolichnaya Trademark.

WHAT SHOULD HAPPEN?

151    I do not accept the Cross-Respondent’s submission that the proceeding should be dismissed for want of prosecution for it is evident that the Cross-Claimants are prosecuting the proceeding. In that regard it is to be noted that the Cross-Claimants have complied with their own discovery obligations as ordered by Edmonds J on 4 December 2013: see First Stay Decision at [15]. They have also been attempting, with more limited success, to respond on the Russian Federation’s behalf to the discovery invitation issued to the Russian Federation. As such I do not think that it can be said that the Cross-Claimants are not prosecuting the proceeding: cf Professional Administration Service Centres Pty Ltd v Commissioner of Taxation [2012] FCAFC 180; 295 ALR 52 at 62 [44].

152    On the other hand, it is a different question as to whether the Russian Federation’s failure to provide discovery has rendered the Cross-Claimants’ proceeding an abuse of process justifying the permanent stay of some or all of the Third Further Amended Cross-Claim. The power permanently to stay a proceeding as an abuse of process is enlivened by one of two conditions: where the use of the Court’s procedures occasions unjustifiable oppression to a party or where the use serves to bring the administration of justice into disrepute: UBS AG v Tyne [2018] HCA 45; 360 ALR 184 at 187 [1] per Kiefel CJ, Bell and Keane JJ; Tomlinson v Ramsey Food Processing Pty Ltd [2015] HCA 28; 256 CLR 507 at 518-519 [25] per French CJ, Bell, Gageler and Keane JJ. Whilst the categories of conduct that may give rise to an abuse of process are neither closed nor susceptible to strict classification, the failure by an applicant to produce evidence may amount to an abuse of process where it poses a not insignificant risk to a respondent’s ability to defend the proceedings: Palavi v Radio 2UE Sydney Pty Ltd [2011] NSWCA 264 at [95] per Allsop P. There is no reason to think that any different principle applies when a failure to give discovery is involved.

153    I accept that the proceeding is being prosecuted by the Cross-Claimants in circumstances which, at least in part, have now become a clear abuse of process. A proceeding is brought on behalf of the Russian Federation before this Court but the Russian Federation does not to any extent co-operate in providing discovery for the purposes of that proceeding. Further, its failure is not transitory but has persisted since 2015. Indeed, the proceeding has already been stayed for its failure to provide discovery so that the Russian Federation could ‘put its house in order’: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (No 5) [2018] FCA 19 at [15]. Even in the face of an application to dismiss the proceeding it has not in the least roused itself. It has been given more than a fair opportunity to give discovery.

154    It is unfair that the litigation should be conducted in this fashion, particularly in light of modern case management principles. In effect, the Russian Federation uses the Cross-Claimants as its cat’s paw. When it suits the Russian Federation the machinery of the state is readily enlivened (for example, by passing a law—Decree 69—to cure its standing problem in the US Proceeding) but when it does not suit its convenience it puts the Cross-Claimants out on the mat to plead the inefficiencies of the Russian bureaucracy. This is entirely unpersuasive. It is also intolerable.

155    I reject the Cross-Claimants’ submission that the Cross-Respondent is not prejudiced by the Russian Federation’s conduct. As I described in the First Stay Decision at [5]-[12], access to the documents held by the Russian Federation is significant to ensuring the Cross-Respondent’s ability fairly to propound its defence. Further, the delay since 2015 is in itself a substantial species of prejudice. The nature of that prejudice is exacerbated by the very age of the proceeding and the events to which they relate. I do not say that the protracted nature of this proceeding is to be sheeted home to the Cross-Claimants but it does make the Russian Federation’s subsequent delay more prejudicial. It is generally accepted that the strain that litigation imposes on litigants is a relevant matter to weigh in the balance: Aon Risk Services Australia Ltd v Australian National University [2009] HCA 27; 239 CLR 175 at 214 [100]-[101]; Carey v Freehills [2014] FCA 788 (‘Carey v Freehills’) at [66] per White J (‘It is reasonable to infer that the very continuation of this litigation is prejudicial to [the Respondent]’). Not every form of prejudice need be pecuniary or procedural. As in Carey v Freehills this is a case where the continuation of the litigation is itself a species of prejudice.

156    The Cross-Claimants sought to rely in this regard on the decision of the House of Lords in Birkett v James [1978] AC 297 and, in particular, a passage at 320-321 in the speech of Lord Diplock. However, that was concerned with the different question of whether it was worthwhile to strike out or dismiss a case for want of prosecution which was not statute-barred. Here the issue is whether the proceeding should be summarily dismissed or permanently stayed as an abuse of process.

157    It must be borne in mind that whilst a permanent stay is an exceptional remedy given that a litigant is entitled to invoke the jurisdiction of the court to seek a resolution of their dispute, a respondent is also entitled to a fair trial: Cox v Journeaux (No 2) [1935] HCA 48; 52 CLR 713 at 720 per Dixon J; Batistatos v Roads and Traffic Authority of New South Wales [2006] HCA 27; 226 CLR 256 at 281 [69] per Gleeson CJ, Gummow, Hayne and Crennan JJ. I am satisfied that the failure by the Russian Federation to provide the requested documents has created an abuse of process, if perhaps not because the Russian Federation’s disregard of the invitation to provide voluntary discovery is an affront to the administration of justice, then certainly because the non-production of the documents occasions unjustifiable oppression to the Cross-Respondent’s ability to propound a defence.

158    Nevertheless, it does not follow that the failure of the Russian Federation voluntarily to produce the documents in response to the invitation justifies the permanent stay of the Cross-Claimants’ entire proceeding. Where the abuse of process has arisen from the failure of a party to produce evidence, the appropriate response must be determined against the particular circumstances of the proceeding. For example, in Palavi v Radio 2UE Sydney Pty Ltd [2011] NSWCA 264, Allsop P (with Macfarlan JA agreeing) considered a strike out of the entire pleading in a defamation suit to be a disproportionate response to an abuse of process occasioned by the applicant’s destruction of evidence where the destroyed evidence only affected a limited number of the alleged imputations.

159    Whilst the major issues in this litigation are the so-called chain of title issues to which discovery by the Russian Federation appears to relate, there are other issues to be determined. In that regard I have in mind the observations made by Edmonds J in Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International BV [2010] FCA 1293 in ordering a trial of separate questions in this proceeding. The separate questions ordered related to whether certain foreign judgments establish, inter alia, issue estoppels binding on the Cross-Respondent. His Honour noted (at [95]) that a resolution of these separate questions may obviate the need to consider, inter alia, the chain of title issues and therefore the scope of documentation relevant for trial: cf First Stay Decision at [5]-[12]. A majority of the Full Court refused leave to appeal from that conclusion: Spirits International B.V. v Federal Treasury Enterprise (FKP) Sojuzplodoimport [2011] FCAFC 69. As noted by Buchanan J in refusing leave to appeal, ‘it was conceded by Spirits on the appeal that an affirmative answer to each of the [separate] questions would all but eliminate Spirits’ prospects of resisting the cross-claim’: at [129]. I draw upon these findings not to conclude that the abuse of process will abate if these issues are salvaged from the Cross-Claim but rather as an indication that it may.

160    I will therefore permit the Cross-Claimants to pursue so much of the proceeding as is unaffected by the failure of the Russian Federation voluntarily to give discovery, if there be such. I will hear from the parties as to whether this is possible. Subject to that carve-out, the balance of the Cross-Claim otherwise presents as a clear case for a permanent stay on the grounds of abuse of process. The Russian Federation has had its day on discovery.

161    I note for completeness that there is no time limit imposed on an application to rectify the Register of Trade Marks under s 88 of the Trade Marks Act 1995 (Cth). To dismiss the proceeding would therefore be pointless as it could simply be refiled (i.e. the issue in Birkett v James [1978] AC 297). I raised this at the hearing and the Cross-Respondent submitted that the proceeding should therefore be stayed permanently. This matters because no such prayer was sought in its interlocutory application (although Prayer 9 did seek any other order as the nature of the case required). No procedural objection was raised by the Cross-Claimants as to why the Court should not order a stay if it were otherwise of the view that there was an abuse of process.

CONCLUSIONS

162    I have already deployed one weapon in the Court’s armoury to ensure the production of the documents held by the Russian Federation (cf Arhill Pty Ltd v General Terminal Company Pty Ltd (1990) 23 NSWLR 545 at 555A per Rogers CJ Comm D) by staying the proceeding pending such production. I must now regrettably deploy another. I will stay permanently the Third Further Amended Cross-Claim as an abuse of process insofar as the allegations made in it are related to the topics in respect of which the Russian Federation has failed to give discovery.

163    What is left after that, if there is anything left, is not presently clear to me. The parties are to confer to see if they can agree a form of order to give effect to these reasons within 28 days. If, as is likely, they are unable to do so I will then list the matter for further argument on the form of order that the permanent stay should take.

164    There are four further matters. First, I will lift the stay ordered on 20 November 2017 to the extent necessary to allow this process to occur. Secondly, upon the order being finalised I will grant both parties leave to appeal. Thirdly, the orders will need to accommodate some alteration to the interim stay of 20 November 2017 and the final disposition of the Cross-Respondent’s interlocutory application dated 7 December 2018. Fourthly, the Cross-Claimants should pay the Cross-Respondent’s costs.

I certify that the preceding one hundred and sixty-four (164) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate:

Dated:    30 May 2019