Bodum v DKSH Australia Pty Ltd
[2008] FCA 1854
•5 December 2008
FEDERAL COURT OF AUSTRALIA
Bodum v DKSH Australia Pty Ltd [2008] FCA 1854
PETER BODUM A/S, BODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672) and PI-DESIGN AG v DKSH AUSTRALIA PTY LTD (ACN 005 059 307)
NSD 472 of 2008
PLAYCORP GROUP OF COMPANIES PTY LTD (ACN 115 163 025) and PLAYCORP PTY LTD (ACN 006 277 363) v PETER BODUM A/S, BODUM (AUSTRALIA) PTY LTD (ACN 104 809 672) and PI-DESIGN AG
VID 423 of 2008
MIDDLETON J
5 DECEMBER 2008
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 472 of 2008
BETWEEN: PETER BODUM A/S
First ApplicantBODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672)
Second ApplicantPI-DESIGN AG
Third ApplicantAND: DKSH AUSTRALIA PTY LTD (ACN 005 059 307)
Respondent
JUDGE:
MIDDLETON J
DATE OF ORDER:
5 DECEMBER 2008
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.This proceeding be heard together with proceeding VID 423 of 2008, Playcorp Group of Companies Pty Ltd v Peter Bodum A/S, on a date to be fixed.
2.The costs of the preparation and filing of submissions on whether this proceeding should be heard together with proceeding VID 423 of 2008, Playcorp Group of Companies Pty Ltd v Peter Bodum A/S, be reserved.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 423 of 2008
BETWEEN: PLAYCORP GROUP OF COMPANIES PTY LTD
(ACN 115 163 025)
First ApplicantPLAYCORP PTY LTD (ACN 006 277 363)
Second ApplicantAND: PETER BODUM A/S
First RespondentBODUM (AUSTRALIA) PTY LTD (ACN 104 809 672)
Second RespondentPI-DESIGN AG
Third Respondent
JUDGE:
MIDDLETON J
DATE OF ORDER:
5 DECEMBER 2008
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.This proceeding be heard together with proceeding NSD 472 of 2008, Peter Bodum A/S v DKSH Australia Pty Ltd, on a date to be fixed.
2.The costs of the preparation and filing of submissions on whether this proceeding should be heard together with proceeding NSD 472 of 2008, Peter Bodum A/S & Ors v DKSH Australia Pty Ltd, be reserved.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
NSD 472 of 2008
BETWEEN: PETER BODUM A/S
First ApplicantBODUM (AUSTRALIA) PTY LIMITED (ACN 104 809 672)
Second ApplicantPI-DESIGN AG
Third ApplicantAND: DKSH AUSTRALIA PTY LTD (ACN 005 059 307)
Respondent
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 423 of 2008
BETWEEN: PLAYCORP GROUP OF COMPANIES PTY LTD
(ACN 115 163 025)
First ApplicantPLAYCORP PTY LTD (ACN 006 277 363)
Second ApplicantAND: PETER BODUM A/S
First RespondentBODUM (AUSTRALIA) PTY LTD (ACN 104 809 672)
Second RespondentPI-DESIGN AG
Third Respondent
JUDGE:
MIDDLETON J
DATE:
5 DECEMBER 2008
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
I have considered whether the above proceedings should be heard together. A decision needed to be made to allow the parties to prepare for the trial. I came to the view that both proceedings should be heard together, and advised the parties accordingly on 24 November 2008. I now provide my reasons for this view.
Opposing the hearing of the proceedings being heard together, Bodum submitted that:
(a)the differences between the proceedings outweighed the issues in common, so that there would be little if any saving in time or costs, and considerable added complexity;
(b)the DKSH proceeding was quickly approaching readiness for trial; and
(c)there were specific issues of confidentiality which, under the rule in Harman v Secretary of State for the Home Department [1983] 1 AC 280, would make a joint trial inappropriate.
Common Issues
Reputation is in issue in relation to one product, the Chambord Coffee Plunger.
Obviously reputation dates may be different by reference to different parties, but in my view that does not mean that there may not be a substantial overlap of common evidence even to the extent of this reputation issue.
I also accept that there are different issues in both proceedings, but I do not regard that as significant. I do not view them as individually taking up much court time. Rather, I am of the view that considerable additional court time and resources would be needed to hear the trials separately, not only as to hearing the evidence, but in the hearing of submissions.
There may well be mechanical difficulties, particularly in relation to instructing solicitors who may need to give evidence, but these matters can be procedurally dealt with prior to, and at, trial. In any event, if a solicitor is giving evidence, then the parties may need to properly consider the position of that solicitor taking an otherwise active part in the proceedings.
As to the representation necessary at trial, while non-relevant issues of one party are raised, this again can be dealt with prior to or at trial, so that unnecessary costs are not incurred.
Bodum submitted that there will be a significant part of the evidence, including expert evidence, which will be wholly irrelevant to any issue in DKSH proceeding. If this is so, then at that part of trial those who have no interest in that evidence can be excused, and can return on a later day on resumption of relevant evidence involving that party. Prior to trial, a timetable can be prepared setting out the scheduling of witnesses, so each party will be able to organise itself accordingly. I do not intend to make any pre-emptive order as to costs now, but the parties will be aware of the difficulty of recovering costs at any distinct part of the trial to which that party has no interest.
In my view, all of the difficulties now perceived by Bodum can be overcome by proper co-operation between the parties, or by the application of appropriate case management principles, and otherwise by ‘getting on’ with the hearing.
Finally on this aspect of Bodum’s submission, the fact that the proceedings are in different lists causes no difficulty. Assuming that the Playcorp proceedings are removed from the Fast Track List, that proceeding still remains docketed so that it can be case managed effectively in preparation of a joint hearing.
Same issue determined twice
I agree with Bodum that I should not be concerned about the possibility that the same issue of fact may be determined twice. However, this does not mean that this is a matter to be encouraged if other considerations favour its avoidance and which favour a joint trial.
Prejudice
I am not persuaded that there will be the prejudice alleged by Bodum, which either exists in itself, or will be made worse by the joint trial. I am not persuaded that the DKSH proceeding is closer to being ready for trial than the Playcorp proceeding, so I see no delay arising from the point of view of the DKSH proceeding if a joint trial is to proceed. After all, the timetable agreed to by the parties for both proceedings remains the same.
I have already alluded to the position of the legal representatives who may be witnesses. If Bodum wishes to make any application in respect of this matter, and the possible implications of Harman 1 AC 280, it should do so promptly. Similarly, issues of confidentiality should be determined promptly. I consider it more than likely that an order that evidence in one proceeding stand in the other will be eventually acceptable to the parties. I am not convinced now that Bodum would be ‘unfairly disadvantaged’ by such an order. I accept that, without such an order, a joint trial offers little advantage, but the use of evidence in the proceedings is a matter which can be considered at a later time, prior to trial, when I have considered the submissions of Bodum and the other parties on this issue.
Therefore, I am of the view that a joint trial should be held, and the case management of the two proceedings should proceed on this basis. If procedural or interlocutory orders need to be made to facilitate this, then such orders should be applied for promptly. I would expect the parties and their legal advisers to consult and seek to agree on matters such as confidentiality, commonality of issues, appropriate release from any implied undertakings arising from Harman 1 AC 280 (subject to the Court’s acceptance), and preparing both proceedings for trial.
I propose to reserve the costs of the preparation and filing of submissions on whether the proceedings should be heard together, and order that the proceedings be heard together on a date to be fixed.
I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Middleton. Associate:
Dated: 8 December 2008
Counsel for the Applicants in NSD 472 of 2008: M R Hall Counsel for the Applicants in VID 423of 2008: David Shavin QC Solicitor for the Applicants in NSD 472 of 2008: Mallesons Stephen Jaques Solicitor for the Applicants in VID 423 of 2008: Corrs Chambers Westgarth Counsel for the Respondent in NSD 472 of 2008: G Dalton Counsel for the Respondents in VID 423 of 2008: M R Hall Solicitor for the Respondent NSD 472 of 2008: Arnold Bloch Leibler Solicitor for the Respondents VID 423 of 2008: Mallesons Stephen Jaques
Date of Hearing: 5 December 2008 Date of Judgment: 5 December 2008
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