Ayoub v Bradana Pty Ltd
[2002] FCA 597
•10 MAY 2002
FEDERAL COURT OF AUSTRALIA
Ayoub v Bradana Pty Ltd [2002] FCA 597
COSTS – whether delay caused by party’s conduct – whether motion was necessitated by conduct of party
MALCOLM HANNA AYOUB v
BRADANA PTY LTD, UNITED PETROLEUM PTY LTD AND VIEWLINK PTY LTDN1466 OF 2001
TAMBERLIN J
SYDNEY
10 MAY 2002
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N1466 OF 2001
BETWEEN:
MALCOLM HANNA AYOUB
APPLICANTAND:
BRADANA PTY LTD (ACN 074 937 956)
FIRST RESPONDENTUNITED PETROLEUM PTY LTD (ACN 085 779 255)
SECOND RESPONDENTVIEWLINK PTY LTD (ACN 062 233 210)
THIRD RESPONDENTBRADANA PTY LTD (ACN 074 937 956)
FIRST CROSS-CLAIMANTUNITED PETROLEUM PTY LTD (ACN 085 779 255)
SECOND CROSS-CLAIMANTVIEWLINK PTY LTD (ACN 062 233 210)
THIRD CROSS-CLAIMANTMALCOLM HANNA AYOUB
CROSS-RESPONDENTJUDGE:
TAMBERLIN J
DATE OF ORDER:
10 MAY 2002
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.Orders are made in accordance with the draft Consent Orders submitted by the parties annexed to these reasons.
2.Costs in relation to each Notice of Motion should be awarded in accordance with the outcome of the proceeding.
3. The matter is stood over for further directions on 26 July 2002 at 9.30 am.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
N1466 OF 2001
BETWEEN:
MALCOLM HANNA AYOUB
APPLICANTAND:
BRADANA PTY LTD (ACN 074 937 956)
FIRST RESPONDENTUNITED PETROLEUM PTY LTD (ACN 085 779 255)
SECOND RESPONDENTVIEWLINK PTY LTD (ACN 062 233 210)
THIRD RESPONDENTBRADANA PTY LTD (ACN 074 937 956)
FIRST CROSS-CLAIMANTUNITED PETROLEUM PTY LTD (ACN 085 779 255)
SECOND CROSS-CLAIMANTVIEWLINK PTY LTD (ACN 062 233 210)
THIRD CROSS-CLAIMANTMALCOLM HANNA AYOUB
CROSS-RESPONDENT
JUDGE:
TAMBERLIN J
DATE:
10 MAY 2002
PLACE:
SYDNEY
REASONS FOR JUDGMENT
Before me are two Notices of Motion brought by the applicant and the respondents in relation to the seeking of further and better discovery and particulars concerning allegations of infringement of trade mark and of misleading and deceptive conduct. The respondents’ Notice of Motion was filed on 9 April 2002 and the applicant’s was filed on 11 April 2002.
After the hearing of the applications commenced, the parties engaged in constructive discussions with the consequence that they have now reached agreement on appropriate orders and I propose to make orders in accordance with that agreement.
The outstanding issue between the parties concerns the question of costs. Counsel for the applicant submits that the costs of each application should be reserved because the matter has been resolved by subsequent negotiation. He submits that the respondents’ application was premature in that at the time it was made, the applicant was in the course of complying with requests for particulars by the respondents for further discovery in a bona fide and co-operative manner. This is not a case, it is said, where the applicant was seeking to avoid or delay compliance with his obligations, but rather one in which there was extensive interchange of communication between the parties with a view to meeting their respective discovery obligations.
Counsel for the respondents submits that it was necessary and appropriate for the respondents to institute the motion for further and better discovery having regard to the fact that the dead-line fixed for the making of such an application was 11 April 2002. She submits that the applicant had been dilatory in providing proper discovery in compliance with the Court’s directions and that it should not have been necessary for the respondents to spell out to the applicant the requirements in order to comply with discovery obligations and in effect to “educate” the applicant as to what was necessary.
To resolve this issue it is not necessary to examine the lengthy history of this matter. I consider briefly what has occurred over the period shortly prior to the institution of the respondents’ application for further discovery.
On 8 February 2002, directions were made in accordance with orders consented to by both parties requiring both sides to serve any request for further particulars by 28 February 2002, with responses to be furnished by 14 March 2002. Inspection of any further documents if required was to occur by 8 April 2002. Applications for further discovery were at that point to be served by 28 March 2002 and the matter was stood over to 8 April. These dates were varied by consent, so that any application for further discovery was to be brought by 11 April 2002.
The respondents, on 9 April 2002, filed a motion seeking a further list of documents from the applicant which was in compliance with the Federal Court Rules (“FCR”) and which would make available further documents and furnish further and better particulars. The applicant on 11 April, essentially in response, filed a motion seeking copies of certain documents and a further list of documents.
The respondents submit that they were reasonably entitled as at 9 April 2002 to institute the proceedings and that this is evidenced by correspondence and communications prior to and after that date.
The respondent wrote to the applicant on 15 March 2002 and indicated that if a satisfactory response was not provided an application for further discovery would be filed in Court. The sequence of events relied on by the respondents is set out in the affidavits by Mr Brown and others.
Because a direction had been made that any application for further and better discovery should be made by 11 April 2002 the respondents concluded that there was an urgent need to bring the matter to a head and this was the intent behind the application.
On 7 April 2002 the applicant’s solicitor wrote to the solicitor for the respondents seeking further documents and information.
This was received by the respondents on 8 April 2002 and a reply was sent by the respondents’ solicitor on 10 April 2002 from which it is apparent that the respondents acknowledged a substantial body of documents described as “extremely voluminous” had not been made available. There was also an issue raised as to whether the hearing should be split so that issues of liability were be resolved prior to the matter of quantum.
This is not a case where each party had fully complied with their respective obligations to make discovery and supplemental discovery as required by O 15 rr 2 and 7A of the FCR prior to the institution of the applications for further and better discovery. In view of the unsatisfactory nature of the discovery on each side as at 9-11 April 2002 an appropriate course would have been to approach the Court prior to that date for an extension of time for the making of an application for further discovery until after that date.
Although there is some cogency in the submissions made on behalf of the respondents in relation to the question of costs, I am satisfied that the applicant, both before and after 9 April 2002, was taking reasonable measures to meet his obligations pursuant to the respondents’ request and the directions made by the Court. There were shortfalls on both sides. Having regard to the overall conduct of both parties in relation to discovery and particulars, I am not satisfied that non-compliance was sufficient to warrant awarding costs against the applicant.
In the circumstances, bearing in mind the co-operative approach taken by both parties to the issues of discovery and particulars to date and to the complexity and extensive nature of the discovery process in this matter, I consider the appropriate course is that the costs in relation to each of the Notices of Motion should be awarded in accordance with the outcome of the hearing in this matter.
I therefore make the orders contained in the draft Consent Orders provided to me by the parties. As indicated, I order that the costs of each application should be in accordance with the outcome of the hearing.
I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Tamberlin. Associate:
Dated: 10 May 2002
Counsel for the Applicant: Mr Greg Burton Solicitor for the Applicant: Navado Legal Counsel for the Respondents: Ms Julia Baird Solicitor for the Respondents: Kliger Partners Date of Hearing: 30 April 2002 Date of Judgment: 10 May 2002 ANNEXURE
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. 1466 of 2001MALCOLM HANNA AYOUB
ApplicantBRADANA PTY LTD
(ACN 074 937 956)
UNITED PETROLEUM PTY LTD
(ACN 085 779 255)
VIEWLINK PTY LTD
(ACN 062 233 210)
Respondents/Cross ClaimantsMALCOLM HANNA AYOUB
Cross RespondentSHORT MINUTES OF ORDER
THE COURT ORDERS:
1.All issues of liability, validity of trade mark and rectification of the Trade Marks Register be heard and determined separately from and prior to all issues of quantum.
2.The applicant on or before 30 June 2002 give further verified discovery, not including discovery of documents as to quantum, of:
(a) all documents described in paragraph D(1)(a) of letter dated 15 March 2002 from Kliger Partners to Nevado Legal (the 'Kliger Letter');
(b) further to the explanation provided in paragraph 3 of the applicant's further amended list of documents dated 29 April 2002, all documents of the type described in each of paragraphs D(1)(b), D(1)(c), D(1)(d), D(1)(e), D(2), D(3)(a), D(3)(b), D(3)(c), D(3)(d), D(3)(e), D(4)(a), D(4)(b), D(4)(c), D(4)(d), D(5), D(6), D(7), D(9) and D(10) of the Kliger Letter;
(c) the taxation returns, financial statements (including profit and loss and balance sheets), Taxation Office notices of assessment and accounting records of each of the applicant and all of the companies in the applicant's group of companies for the financial years ended 30 June 1992 to date;
(d) all documents described in paragraphs 10 and 14(e) of the affidavit of David Stuart Brown sworn 24 April 2002 filed in support of the respondents' notice of motion dated 9 April 2002, subject to such confidentiality undertakings concerning the Mobil dispute and settlement as are agreed between the parties or, failing agreement, as are determined by the Court.
3.The respondents on or before 30 June 2002 give verified discovery, not including discovery of documents as to quantum, of:
(a) all documents described in paragraphs (i) and (ii) of the facsimile dated 7 April 2002 from Nevado Legal to Kliger Partners (the 'Nevado Letter'), such paragraphs varied to provide that the time periods and geographic extent of discovery be as follows:
(i)in respect of service stations in Victoria and South Australia, for the period 23 December 1991 up to 28 July 1997;
(ii)in respect of service stations outside the states of Victoria and South Australia, for the period 23 December 1991 to date;
(b) all documents described in paragraphs numbered (iv), (vi) and (vii) in the Nevado Letter;
(c) all documents evidencing or recording agreements or permissions for the use of registered trade mark no. 740086 at each service station site operated by, or that falls under the management of, the respondents:
(i)in relation to service stations in Victoria and South Australia, in the period 23 December 1991 to 28 July 1997;
(ii)in relation to service stations outside the states of Victoria and South Australia, in the period 23 December 1991 to date.
4.The applicant on or before 30 June 2002 provide an affidavit:
(a) attesting to the instructions given by him as to the matters attested to by Peter George Zada in the affidavits sworn by Mr Zada on each of 29 and 30 April 2002;
(b) attesting that:
(i)he has given full and complete discovery of all documents (other than as relate to issues of quantum) within each of the categories described in paragraphs D1 to D10 of the Kliger Letter and paragraphs 10 and 14(e) of the affidavit of David Stuart Brown sworn 24 April 2002; and
(ii)there are no other documents in his possession, custody or control within the categories described in paragraphs D1 to D10 of the Kliger Letter and paragraphs 10 and 14(e) of the affidavit of David Stuart Brown sworn 24 April 2002, other than are listed in the applicant's list of documents dated 29 April 2002 and the applicant's further list of documents made in compliance with the order in paragraph 2 of these short minutes of order.
5.The applicant on or before 31 May 2002 provide the following further and better particulars of the declarations of trust referred to in the document entitled 'Reply to Request for Particulars of Reply to Amended Defence Dated 29 April 2002':
(a) the dates on which it is alleged each of the declarations of trust were made;
(b) specifying where each of the declarations of trust were made;
(c) identifying each of the circumstances in which it is alleged each of the declarations of trust were made.
6.The proceedings be stood over for further directions to 9:30 am on 26 July 2002.
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