Federal Court of Australia

Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323

ORDERS

THE COURT ORDERS THAT:

1.    The appellant’s service of the Notice of Appeal on the respondent in Singapore on 5 February 2021 be confirmed pursuant to r 10.44(3) of the Federal Court Rules 2011.

2.    On or before 2 April 2021, the appellant serve a copy of these orders on the respondent by process server to the respondent’s registered corporate address in Singapore.

3.    If the respondent has not taken any steps in the proceeding by 16 April 2021 then the Registrar of Trade Marks be joined as a party to the proceeding under r 34.23(2).

4.    The costs of and incidental to the appellant’s service of the Notice of Appeal on the respondent including the appellant’s application to the Court confirming service under r 10.44(3) be reserved.

5.    The matter be listed for a further case management hearing at 9.00am on 4 May 2021.

6.    Liberty is reserved to any party or future party to apply on two days’ notice.

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

REASONS FOR JUDGMENT

(Revised from transcript)

THAWLEY J:

Introduction

1    This proceeding was commenced by the appellant filing a notice of appeal on 29 January 2021 pursuant to s 104 of the Trade Marks Act 1995 (Cth) (TMA). The appellant appeals from a decision of a delegate of the Registrar of Trade Marks: Pablo Enterprise Pty Ltd v Freshfood Holdings Pte Ltd [2020] ATMO 195 (the Decision). The Decision concerned an application filed by the respondent, a Singapore-based company, pursuant to s 96 of the TMA to remove the appellant’s Australian Registered Trade Mark No. 170010 for the word PABLO filed on 25 October 1961 in class 30: coffee (the PABLO Mark). The delegate held pursuant to s 101 of the TMA that the PABLO mark should be removed for non-use pursuant to s 92(4)(b) of the TMA and, therefore, that the respondent succeeded in its non-use application (the Non-Use Application).

Factual background

2    The respondent’s Non-Use Application was filed on 25 October 2017. The “Address for Service in Australia” nominated by the respondent in its Non-Use Application pursuant to s 215 of the TMA was as follows (the Address for Service):

Pizzeys Patent and Trade Mark Attorneys Pty Ltd

GPO Box 1374

Brisbane, QLD 4001

Phone:    (07) 3221 9955

Fax:    (07) 3221 8077

Email:    jmsimpson@pizzeys.com.au

3    The appellant opposed the Non-Use Application, filing a Notice of Intention to Oppose removal on 23 July 2019 and a Statement of Grounds and Particulars on 16 August 2019.

4    The respondent filed a Notice of Intention to Defend the opposition on 30 September 2019. In this document, the respondent restated the Address for Service as the relevant address for service.

5    On 19 October 2020, an oral hearing by way of video conference was conducted before a delegate of the Registrar of Trade Marks. Mr Jeremy Herz of Herbert Smith Freehills appeared on behalf of the appellant and Ms Julie Simpson of Pizzeys Patent and Trade Mark Attorneys (Pizzeys) appeared on behalf of the respondent.

6    The delegate’s Decision was delivered on 17 December 2020. The delegate determined that the respondent’s Non-Use Application succeeded in respect of the ground contained in s 92(4)(b) but not in respect of the ground contained in s 92(4)(a) of the TMA. The delegate directed that the PABLO Mark be removed from the Register, subject to any appeal.

7    On 23 December 2020, IP Australia notified the respondent of the Decision by way of the respondent’s Address for Service. In that notification, IP Australia specifically drew attention to the parties’ rights to appeal the Decision to the Federal Court or the Federal Circuit Court and the various procedural requirements (including the relevant forms and time limits for filing) as set out in Div 34.3 of the Federal Court Rules 2011 (Cth) (FCR).

8    The appellant’s notice of appeal under r 34.24 of the FCR was filed on 29 January 2021. A sealed copy of the notice of appeal was made available via the Federal Court eLodgment portal on 1 February 2021.

9    On 29 January 2021, the appellant’s solicitor, Mr Jordan, caused an unsealed copy of the notice of appeal to be served on the respondent’s Address for Service by way of letter attached to an email to Ms Simpson at Pizzeys. In this letter, Mr Jordan indicated that he was writing to Ms Simpson “as the attorney on record in relation to [the respondent’s] Application for Removal of a Trade Mark from Register for Non-Use filed in relation to [the PABLO Mark]”. On 2 February 2021, Mr Jordan then caused a sealed copy of the notice of appeal to be served on the respondent’s Address for Service by way of further email to Ms Simpson.

10    On 2 February 2021, Mr Jordan received an email from Ms Simpson indicating that Pizzeys had not received instructions from the respondent to accept service of the notice of appeal. Ms Simpson indicated in her email that she was “ascertaining from [the respondent] who its Australian litigation lawyers are” and that she would “accordingly pass these details onto [Davis Collison Cave Law] upon receipt”.

11    Mr Jordan emailed Ms Simpson on 4 February 2021 requesting, as a matter of urgency, details of the respondent's litigation lawyers, stating: “We understand from your email that these proceedings have been brought to the attention of your client. Please let us know, however, if this is not the case.”

12    Mr Jordan received an additional email from Ms Simpson on 4 February 2021, stating that she was “unable to clarify at this point in time [the respondent’s] litigation lawyers” and that “[a] follow up email has been sent to [the respondent] to ascertain the name of their Australian litigation lawyers”. Mr Jordan understood from the context of this email, and the lack of response to the previous question, that Ms Simpson was in contact with the respondent and that they had been made aware of the notice of appeal.

13    Out of an abundance of caution, Mr Jordan then caused a copy of the sealed notice of appeal to be served on the respondent on 5 February 2021 at its registered corporate address in Singapore, by way of an authorised Singaporean process server, Mr Abdul Rahman bin Suleiman. This method of service conformed with Singaporean law according to the affidavit of Mr Kang, a solicitor of Bird & Bird Singapore. Mr Jordan informed Ms Simpson of this additional service on the respondent by way of email dated 8 February 2021.

14    On 15 March 2021, Mr Jordan sent a further letter to Ms Simpson, restating the aspects of his previous correspondence and informing her of the date and time of the first case management hearing, which was then scheduled for 26 March 2021. Ms Simpson responded to this correspondence by stating that: “Pizzeys is not acting in respect of this proceeding and not authorised to accept service of any documents related to the Federal Court Appeal from [the Decision].”

15    On 22 March 2021, Mr Jordan realised that no regulations had been enacted implementing s 215(8) of the TMA allowing documents to be served on an electronic address. Accordingly, he then caused a further sealed copy of the notice of appeal to be mailed by Express Post to Pizzeys at GPO Box 1374, Brisbane QLD 4001 (being the physical address for the respondent’s Address for Service), under cover of letter dated 22 March 2021.

Service at the respondent’s address for service DID NOT constitute effective service

16    The appellant submits that the service of the notice of appeal of the delegate’s Decision on the Address for Service which had been provided by the respondent pursuant to s 215 of the TMA constitutes effective service.

17    Section 215 of the TMA relevantly provides:

215 Address for service

(1)    The address for service of a person who has filed an application, notice or request is:

(a)    the address for service stated in the application, notice or request; or

…

(5)    An address for service must be an address in Australia or New Zealand.

(6)    If this Act provides that a document is to be served on, or given or sent to, a person:

(a)    if the person has an address for service—the document may be served on, or given or sent to, the person by a prescribed means to that address; …

18    Sub-regulation 17A.74(7) of the Trade Marks Regulations 1995 (Cth) provides:

(7)     If the Act provides, or these Regulations provide, that a document is to be served on, or given or sent to, the person, the document may be left at, or sent by post to, the address for service of the person.

Note: Section 29 of the Acts Interpretation Act 1901 and section 160 of the Evidence Act 1995 may govern when service on an address in Australia is taken to be effected.

19    Section 104 of the TMA relevantly provides that:

An appeal lies to the Federal Court … from a decision of the Registrar under section 101…

20    The appellant submits that an appeal to the Federal Court pursuant to s 104 of the TMA (which by necessity requires the filing of a notice of appeal under r 34.24 of the FCR) may be properly described as a document served under the TMA and consequently that s 215(6) operated so as to allow service on the respondent’s Address for Service stated in the respondent’s Non-Use Application pursuant to s 215(1) of the TMA.

21    The appellant relies in this regard on the decision of Wilcox J in Apple Computer Inc v Apple Corporations SA (1989) 16 IPR 329. That decision concerned s 23 of the Trade Marks Act 1955 (Cth) and sub-reg 74(4) of the Trade Marks Regulations 1958 (Cth). Sub-regulation 74(4) provided:

Service of a document under the Act or these Regulations may be effected on a person by delivering the document to, or serving the document by post to, the address for service notified by that person.

22    At 331, Wilcox J held that an application to the Court under s 23 of the Trade Marks Act 1955 (Cth) for non-use of a trade mark may properly be described as a document “under” that legislation and consequently sub-reg 74(4) of the Trade Mark Regulations 1958 (Cth) (then in force) operated so as to allow service at the address shown in the Register.

23    The difficulty with the appellant’s submission is that the decision in Apple Computer turned on differently worded provisions. The question in terms of s 215(6) of the TMA is whether it can be said that the TMA “provides that a document is to be served on, or given or sent to, a person”. In my view it does not. It is the FCR which provides that the notice of appeal is to be served, not the TMA.

24    Since Apple Computer was decided, r 10.08 of the FCR was introduced. This occurred in 2011. Rule 10.08 provides:

10.08    Service in a proceeding under the Trade Marks Act 1995

In a proceeding brought against the owner of a registered trade mark (the respondent) in relation to a cause of action under the Trade Marks Act 1995, a document to be served on the respondent may be served:

(a)     if the respondent has an address for service under section 215 of the Trade Marks Act 1995, at that address for service;

(b)    by leaving the document with a person who is apparently an adult.

25    This provision does not assist the appellant because the appeal is not against the owner of a registered trade mark. It is an appeal by the registered owner. It may be that the terms of r 10.08 should be revisited and expanded.

order for confirmation of service pursuant to r 10.44(3) of the FCR

26    The appellant sought, in the alternative, an order confirming the appellant’s service of the notice of appeal on the respondent at its registered address in Singapore pursuant to r 10.44(3) of the FCR.

27    Rule 10.44 of the FCR provides:

10.44    Service of other documents

(1)    A party may apply to the Court for leave to serve a document filed in or issued by the Court, other than an originating application, on a person in a foreign country in accordance with a convention, the Hague Convention or the law of the foreign country.

(2)    An application under subrule (1) must be accompanied by an affidavit that includes the information mentioned in paragraphs 10.43 (3) (a) to (c).

(3)    If a document, other than an originating application, was served on a person in a foreign country without the leave of the Court, a party may apply to the Court for an order confirming the service.

(4)    For subrule (3), the party must satisfy the Court that:

 (a)     the service was permitted by:

(i)     if a convention applies—the convention; or

(ii)     if the Hague Convention applies—the Hague Convention; or

(iii)     in any other case—the law of the foreign country; and

(b)     there is a sufficient explanation for the failure to apply for leave.

28    The appellant submits that the conditions required by r 10.44 have been met, relying upon three affidavits: one from Mr Jordan, one from Mr Rahman bin Suleiman and one from Mr Kang.

29    The appellant submits that the notice of appeal is a document within the meaning of r 10.44(3) of the FCR. The reason for that is that it is a document filed in the Court other than an “originating application”. An “originating application” is defined in Sch 1 of the FCR in the following way: “an application starting a proceeding, including a cross-claim in the proceeding against a person who was not previously a party to the proceeding, but not a notice of appeal”. I accept this submission.

30    The appellant notes that Mr Jordan’s affidavit evidences that rr 10.44(4)(a)(i) and (ii) do not apply to service of Australian legal documents in Singapore. Annexed to Mr Jordan’s affidavit were relevant parts of the Attorney General’s Department website, in accordance with the Federal Court Overseas Service and Evidence Practice Note (GPN-OSE), identifying that Singapore is not a party to the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters and that there is no bilateral treaty between Singapore and Australia in respect of service of foreign proceedings.

31    The appellant refers to the affidavits of Mr Kang and Mr Rahman bin Suleiman, which evidence that the appellant’s service of the notice of appeal on the respondent at its registered address in Singapore complied with the laws of Singapore as required by r 10.44(4)(a)(iii). Mr Kang explains in his affidavit that service on a Singapore company of any process required in connection with a foreign proceeding which is “analogous” to an appeal from a decision of the Intellectual Property Office of Singapore (the equivalent of the Australian Trade Marks Office), as is the case here, may be effected by way of leaving all relevant documents at the registered office of that Singapore company. These steps were undertaken by Mr Rahman bin Suleiman on 5 February 2021.

32    I am satisfied that Mr Jordan’s affidavit provides an explanation for the appellant's failure to apply for leave before serving the notice of appeal in Singapore as required by r 10.44(4)(b).

33    I am, accordingly, satisfied that it is appropriate to make an order confirming service pursuant to r 10.44(3) of the FCR.

Costs

34    I reserve the costs of and incidental to the appellant’s service of the notice of appeal on the respondent including the appellant’s application to the Court confirming service under r 10.44(3).

Associate:

Dated:    1 April 2021