Inchcape Liquor Marketing P/L v Goulburn Wine Beer and Spirit Supply P/L

[1993] FCA 532

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY	No VG 8 of 1993
GENERAL DIVISION
B E T W E E N :

INCHCAPE LIOUOR MARKETING PTY LIMITED

(ACN 004 197 264)

Applicant

A N D :

GOULBURN WINE BEER & SPIRIT SUPPLY PTY LIMITED

(ACN 000 279 309)

Respondent

A N D :

GOULBURN WINE BEER & SPIRIT SUPPLY PTY. LIMITED

Cross Claimant

A N D :

INCHCAPE LIOUOR MARKETING PTY. LIMITED

First Cross Respondent

A N D :

VAO "SOJUXPLODOIMPORT"

(Sometimes referred to as W O "Sojuzplodoimport")

Second Cross Res

m: NORTHROP J

PLACE :  MELBOURNE

11 AUG 1993

m:  24 JUNE 1993 FEDERAL COURT OF

issue. It appears that paragraph 8 of the cross claim alleges facts which are relevant to the claim based upon s22 of the

AUSTRALIA

EX TEMPORE REASONS FOR JUDGMENT

Paragraph 1 of the applicant/first cross respondent's motion, notice of which is dated 18 June 1993, seeks an order that paragraphs 8 and 9 of the cross claim be struck out. Paragraph 11 of its defence to the cross claim raises the

L

Trade Marks Act. The first cross respondent should plead to those facts. Paragraph 9, on the other hand, comes into a different category. Paragraph 9(a) reads:

"9. (aj The conduct of:

(i) the first cross-respondent pleaded in paragraph 8;

(ii)the second cross-respondent, pleaded in paragraphs 7 and 8;

was conduct in the course of trade which was calculated to be and was misleading and deceptive."

Particulars are given which, essentially, are similar to the allegations contained in paragraph 8 .	Paragraph 9(b) then
reads :

"(b) Further or in the alternative:

(i) The conduct of the first cross-respondent pleaded and particularised in paragraph 9(a) contravened s.52 of the Trade Practices Act

1974. "

Sub-paragraph 9(b)(ii) alleges damage arising from that

contravention.

Paragraph 11 of the defence to cross claim states, in substance, that the applicant/first cross respondent does not plead to paragraphs 8 and 9 by reason of the direction of the Court given on 21 April 1993 that the cross claimant not raise in its cross claim any claim under $52 of the Trade Practices

During the course of submissions on behalf of the first cross respondent, it was made clear that if paragraph 8 stood alone without paragraph 9, it could take no objection to the existence of paragraph 8 to which it should plead, but that, in its current form, it can be read as the basis for a claim under the Trade Practices Act against the first cross respondent. Counsel submitted that in view of the reasons given orally on 21 April 1993 for granting leave to the respondent/cross claimant to make a cross claim against the first and second cross respondents, the cross claimant was not granted leave to include a claim based upon s52 of the Trade Practices-. It was further argued that in any event this was a case where there should not be such a claim.

Having considered the allegations contained in paragraph
8 , I am satisfied that they contain facts relevant to a claim

based upon s22 of the Trade Marks Act. However, despite what counsel for the cross claimant has said, sub-paragraph 9(a) of the cross claim, in my opinion, has as its sole purpose the laying of a foundation for a claim under the Trade Practices

m. There is nothing in paragraph 9(a) which either is not	or could not be included in paragraph 8.
It was argued on behalf of the cross claimant that it may well be that if it failed in its claim under s22 of the Trade Marks Act, it might be in a position to claim damages under
s52 of the Trade Practices Act, but that otherwise the issues
essentially were the same under the xade Marks Act and the Trade Practices Act. I am conscious of that, but in any event the question of the Trade Practices Act claims were raised and dealt with at the hearing on 21 April.
Looking at the oral reasons for judgment given on that occasion, and in particular, at pages 8 to 10 of the reasons, the Court expressed the view that the proposed cross claim was to be limited to claims under the Trade Marks Act and was not to include claims based upon the Trade Practices Act. T h e r e is very good reason for that. The complexities of the matters raised in the Trade Marks Act could only be added to by claims made under the Trade Practices Act. In reality, the main issues arise under the Trade Marks Act and nothing else. In any event, if I were to consider the matter again, I would come to the same view. Accordingly, paragraph 9 of the cross claim should be struck out pursuant to the motion of the cross respondent, first on the ground that it was not within the leave granted and in any event that it should not be included.
claim under the Trade Practices Act, they may well ba liable if the cross claimant's legal advisers did not include the It was suggested by counsel for the cross claimant that for professional negligence, having regard to the High Court judgment in Port of Melbourne Authoritv v Anshun Ptv Ltd
(1981) 147 CLR 589 where it was laid down that it is important
to include in the one claim all causes of action. Each case depends upon its own particular facts. In the present case there is nothing to stop the cross claimant from commencing an action against the first cross respondent based upon the Trade Practices Act. The time limitation has not yet passed. Apparently there is no similar claim being sought against the second cross respondent. If the legal advisers of the cross claimant want to protect themselves from any possible claims for negligence, they can do so by issuing separate proceedings.
This is a course which I have followed in the pasr: in at least two cases where there have been very complex intellectual property matters before the Court. In those cases, claims based upon the Trade Practices Act have been sought to be included which do not really go to the intellectual property matters and do not really add to them in any way at all, except possibly for damages. In those circumstances, I directed that the Trade Practices Act claims should not be included in the intellectual property claim action.
In all circumstances therefore, having regard to the fact will seek leave to replead to paragraph 8, I will strike out that if paragraph 9 is struck out, the first cross respondent
paragraph 9 of the cross claim. In the circumstances then, dealing with the motions by the cross claimant and the first respondent, I order that paragraph 9 of the cross claim be struck out, and that the first cross respondent have leave to replead to paragraphs 5, 7 and 8 of the cross claim.
Accordingly, it is ordered that paragraph 9 of the cross claim be struck out and that the first cross respondent have leave to replead to paragraphs 5, 7 and 8 of the cross claim.
I certify that this and the preceding five (5) pages are a true copy of the Ex Tempore Reasons for Judgment of the Honourable Mr Justice R.M. Northrop.
Associate: @@&$W
Date:  $4 AS3 \

JUDGES CHAMBERS,

FEDERAL COURT OF AUSTRALIA,

450 LIlTL,E BOURKE STREET,

MELBOURNE. 3000

4 August 1993

MS Elizabeth Harrison
Library and Information Services
Principal Registry
Federal Court of Australia
Level 16
Law Courts Building
Queens Square

SYDNEY NSW 2000

Dear Elizabeth

Re:  Computerised Leqal Information Retrieval Svstem

I enclose the following judgments for inclusion in the data base of Federal Court Judgments:

1.   Inchcape Liauor Marketina Ptv Limited v Goulburn Wine Beer & Spirit Supply Ptv Limited (VODKA1)

No VG 8 of 1993

1. Inchca~e Liquor Marketina Ptv Limited v Goulburn Wine Beer & Spirit Suo~lv Ptv Limited v Goulburn Wine Beer &

Spirit S u ~ ~ l v Ptv Limited v Inchca~e Liquor Marketina Pty

Limited v Vao " S O ~ U Z D ~ O ~ O ~ ~ D O ~ ~ " (VO KA2)

No VG 8 of 1993

3.   Rossi June Harris v Beverlev Moore, Deleaate of the Secretarv of the Department of Health. Housina and Communitv Services and Department of Health. Housina and Communitv Services

No TG 2 of 1993

The word processing disks containing the above judgments are
enclosed.
Also enclosed is the disk containing the judgment in the
following matter, a copy of which would have been forwarded to
you by Burchett J.

1. Effem Foods Ptv Ltd v Trawl Industries of Australia Pty Ltd (Receivers & Manaaers Appointed - In Liauidationl & Others

Please return the disks to me when appropriate.

Thank you i

Northrop

Enc