E I Du Pont De Nemours and Company v Imperial Chemical Industries Plc

[2006] FCA 874

FEDERAL COURT OF AUSTRALIA

E I Du Pont De Nemours and Company v Imperial Chemical Industries PLC [2006] FCA 874

Judiciary Act 1903 (Cth) s 39B

E I DU PONT DE NEMOURS AND COMPANY v IMPERIAL CHEMICAL INDUSTRIES PLC AND COMMISSIONER OF PATENTS
NSD 19 OF 2006

GYLES J
23 JUNE 2006
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 19 OF 2006

BETWEEN:

E I DU PONT DE NEMOURS AND COMPANY
APPLICANT

AND:

IMPERIAL CHEMICAL INDUSTRIES PLC
FIRST RESPONDENT

COMMISSIONER OF PATENTS
SECOND RESPONDENT

JUDGE:

GYLES J

DATE OF ORDER:

23 JUNE 2006

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.   The applicant have leave to amend the application forthwith.

2.   Costs be reserved.

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	NSD 19 OF 2006

BETWEEN:

E I DU PONT DE NEMOURS AND COMPANY
APPLICANT

AND:

IMPERIAL CHEMICAL INDUSTRIES PLC
FIRST RESPONDENT

COMMISSIONER OF PATENTS
SECOND RESPONDENT

JUDGE:	GYLES J
DATE:	23 JUNE 2006
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. Counsel for the applicant has sought leave to amend the application to seek injunctive relief against the Commissioner. Prior to that only declaratory relief was sought. The significance of the amendment is that it would bring the case squarely within s 39B(1) of the Judiciary Act 1903 (Cth) and therefore clearly within the jurisdiction of the Court. Counsel for the first respondent objects to the amendment. It is said firstly that the amendment is futile because no matter how the proceeding is constituted there is no ‘matter’ to be determined. It is also said that this is a colourable amendment in that it is designed to create what counsel called a federal ‘hook’ in the absence of any ‘matter’.

2. In my opinion, the amendment should be allowed.  It follows naturally from the relief which has already been sought.  It relates directly to the right alleged to be capable of being vindicated.  If the relief which is presently sought were obtained, then injunctions of this kind would be appropriate in any event.  Counsel for the first respondent sought leave to adjourn so that he could consult the authorities as to colourable proceedings.  I have taken the responsibility of making a decision on the footing that the cases that I have mentioned to him in the course of argument (Burgundy Royale Investments Pty Ltd v Westpac Banking Corporation (1987) 18 FCR 212; Johnson Tiles Pty Ltd v Esso Australia Ltd (2000) 104 FCR 564) are those which would govern the matter in any event.

3. Counsel for the second respondent does not put any objection to the amendment but reserves all grounds of opposition to the amended application. 

4. I will reserve costs. I indicate that I will make an order in due course that costs thrown away should be paid. I am not prepared to pre-judge any further than that, because Mr Gleeson presses his argument that there always was jurisdiction pursuant to s 39B(1A)(c).

I certify that the preceding four (4) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Gyles.

Associate:

Dated:             6 July 2006

Counsel for the Applicant:	Mr JT Gleeson SC, Mr PW Flynn
Solicitor for the Applicant:	Addisons
Counsel for the First Respondent:	Mr DK Catterns QC, Mr C Dimitriadis
Solicitor for the First Respondent:	Phillips Ormonde & Fitzpatrick Lawyers
Counsel for the Second Respondent:	Ms K Howard
Solicitor for the Second Respondent:	Australian Government Solicitor
Date of Hearing:	23 June 2006
Date of Judgment:	23 June 2006