Apple Computer Inc v Apple Corps S.A

[1989] FCA 682

Re: APPLE COMPUTER INC and APPLE COMPUTER AUSTRALIA PTY LIMITED
And: APPLE CORPS SA
No. NG528 of 1989
FED No. 682
Practice and Procedure

(1990) AIPC para 90-630/16 IPR 329

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Wilcox J.(1)

CATCHWORDS

Practice and Procedure - Service of originating process - Proceeding seeking removal from Australian register of trade marks of trade marks registered in name of respondent - Respondent a Swiss company having no address in Australia other than an address for service of expiry notices care of Melbourne patent attorneys - Service of process effected on patent attorneys, although at new address - Documents in fact reached respondent - Application for order setting aside service, with purpose of compelling applicant to demonstrate prima facie case - Whether service on patent attorneys would have been effective if made at address shown on register - Case for dispensation with rules.

Trade Marks Act 1955 ss.23, 70.

Trade Marks Regulations reg.74(4).

Federal Court Rules O.1 r.8, O.8 r.2.

HEARING

SYDNEY

#DATE 28:9:1989

Counsel for the Applicants: Mr A.J.L. Bannon

Solicitors for the Applicants: Abbott Tout Russell Kennedy

Counsel for the Respondent: Mr P.N. Argy

Solicitors for the Respondent: Mallesons Stephen Jaques

ORDER

Proof of a prima facie case be dispensed with.

The service of the originating process already made shall be good service of that process.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. (See also Order 37 rule 2(3)).

JUDGE1

This is an application made pursuant to O.9 r.7(1)(c) of the Federal Court Rules for a declaration that the originating process which has been filed in the matter has not been duly served on the respondent.

1. The applicants are companies who claim relief under s.23 of the Trade Marks Act 1955, whereby they seek the removal from the register of certain trade marks registered in the name of the respondent. The material which is before the Court shows a deal of information about the registration. I find this information somewhat confusing because part of it is an extract from the registration and part of it appears to be a computer print-out. It is not clear to me what one would find if one actually searched the register as it exists today. However, so far as I can make out, the respondent has had various trade marks registered for a considerable number of years, apparently going back to 1968.

2. When the various applications were made in 1968 and 1970, they showed an address for service of Callinan and Newton, 171 William Street, Melbourne, Victoria 3000. According to the computer print-out, the details for registration of the relevant trade marks show as the postal name and address of the proprietor, Apple Corps SA, 17 Avenue de Villamont, Lausanne, Switzerland. This is the same address as was shown on the original registration as the address of the owner.

3. The registration details show as the agent for expiry notice, Callinans. It appears that Callinan and Newton were a firm of patent attorneys. They appear to have changed both their name and their address at some stage between 1970 and the present time. In fact, service of the application was effected by posting the relevant material to Messrs Callinan at their present address at 48 Bridge Road, Richmond, Victoria. There is evidence from the solicitor for the applicant that he has been informed by Mr Keith Callinan of that firm that the material was in fact received.

4. The respondent is aware of the proceeding. It has instructed Sydney solicitors to act in the matter. Those solicitors filed a notice of conditional appearance and they now appear to move to set aside the service. It might therefore be thought that the present application has little merit, in the sense of going to the ultimate disposal of the proceeding. However, it is said that a substantial point is raised as to the position of patent attorneys on the question whether or not they may be served with documents, such as an application under s.23 of the Trade Marks Act.

5. The real point of the application, it appears to me, is to force the applicants to show a prima facie case, as a prelude to obtaining leave to serve the originating process in Switzerland. Order 8 r.2 of the Federal Court Rules provides that service outside the Commonwealth of originating process is not valid unless effected in accordance with the prior leave of the Court, given under subrule (2), the Court confirms that service under subrule (4), or the person served waives objection by entering an appearance. Subrule (2) conditions the grant of leave upon the Court being satisfied the Court has jurisdiction in the matter, that the proceeding is one to which r.1 applies and that the applicant has a prima facie case for the relief which he seeks. There is no question about the first two of those three requirements, but there is presently no material before the Court to indicate whether or not the applicant has a prima facie case.

6. It is relevant, however, to note the provisions of O.1 r.8 of the rules of the Court. This rule simply states that the Court may dispense with compliance with any of the requirements of the Rules, either before or after the occasion for compliance arises.

7. The question whether or not the service which has been effected is a good service depends upon two matters. The first is whether it was legitimate for the applicant to serve the documents upon Messrs Callinan. That question depends upon a determination whether the document may be served under reg.74(4) of the Trade Marks Regulations. That subregulation says:
   

"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."

1. The argument on behalf of the applicants is that the address for service which was shown on the original application for registration remains the address for service. Counsel points out that there is an opportunity for that address to be varied from time to time under subreg.(2). He contends that, at any time while the registration is current, documents under the Act or under the regulations may be served at that address.

2. Notice of expiry may be served upon an agent at that address: see s.70 of the Trade Marks Act. I see no reason why an application to the Court under s.23 may not properly be described as a document under the Act. Consequently, reg.74(4) operates so as to allow service at the address shown on the register. It was suggested on behalf of the applicant that this would lead to a most unfortunate position in that a patent attorney, whose name appears as the address for service on the register, would have to keep in contact with his or her clients and keep addresses updated, etc. But it seems to me that, in any event, this necessity is the result of the expiry notice being capable of being served upon a patent attorney.

3. My reaction, therefore, to the question of the validity of the service, in terms of principle, is that service upon Messrs Callinan at the address shown in the register would be effective. However, there is the problem that the service which was effected was not effected at the address shown on the register. As I have said, that address was 171 William Street, Melbourne, whereas service was effected at the current address in Richmond. This was no doubt very sensible. The solicitors for the applicants thought that it was desirable that the patent attorneys actually receive the documents, so that they could pass them on to their client. But the point is taken that this was not a service at the address shown in the register. I think that this is technically correct and that the view ought to be taken that there has not yet been service pursuant to s.74(4).

4. However, the point has absolutely no merit, bearing in mind that the respondent is in fact aware of the proceeding. Accordingly, the appropriate way to resolve the problem is by resort to O.1 r.8. I note the dictum from Clune v Watson (1882) Tarl 175: "... rules must be the servant not the master of the Court". This is an appropriate case in which to apply that dictum. The reality is that the respondent knows about the proceeding and is represented by Sydney solicitors.

5. In many cases there is a good reason for requiring the demonstration of a prima facie case before allowing process to be served overseas. I have in mind, firstly, that it may be harsh to require persons who are not in Australia to have to answer process initiated out of a court in Australia. Secondly, questions, perhaps of some nicety, in relation to the jurisdiction of an Australian court over nationals of another country may arise. But in this case the proceeding involves the entitlement of the respondent to maintain the registration of its trade marks on an Australian register. The respondent has come to Australia. It has taken advantage of an Australian statute in order to procure registration and it takes the position that it is entitled to maintain that advantage. There can be no question of the jurisdiction of the Court. Nor can there be any element of harshness in requiring the respondent to litigate in Australia its entitlement to maintain its Australian registration. There can be no question of unwarranted intrusion into the affairs of a national of a foreign country.

6. In these circumstances, to require the production of a prima facie case is to impose a burden on an applicant in this type of case which would not be present were the respondent an Australian proprietor of a registered trade mark. I can see no justification for a discriminatory rule such as that.

7. Having in mind all of those matters, the course that I propose to take is to dispense with the requirement of proof of a prima facie case. Bearing in mind the fact that the respondent does in fact know of the proceeding and has copies of the documents, there is no virtue in requiring the applicants to serve them yet again by posting them to Lausanne. The course that I will take is to order that, notwithstanding any provision of the rules, the service which has been effected shall be deemed good service.