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

[1993] FCA 533

dUDGMENT NO. ...x2.3. ,,,.., 1 ,,,a,aae

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

B E T W E E N :

INCHCAPE LIOUOR MARKETING PTY LIMITED

Applicant

A N D :

GOULBURN WINE BEER & SPIRIT SUPPLY PTY LIMITED

Respondent

m: NORTHROP J

PLACE: MELBOURNE

DATE :  21 APRIL 1993 11 AUG 5993

FEDERAL CC)URT OF

AUSTRALIA

EX TEMPORE REASONS FOR JUDGMENT PRINCIPAL REGISTRY

The question argued today in this matter js whether an order should be made in the form of paragraph 6 of the motion,

notice of which was filed on 23 March 1993. By that motion

'SO juzpiodoimport , outside the Commonwealth and that service be effected as directed in the motion.

the respondent is seeking leave, pursuant to 08 r2 of the applicant and a Russian company VAO Sojuzplodoimport, previously known as W O

vodka, and the respondent was, I think it can be accepted,

The proceeding as commenced appeared very simple and

straightforward. The applicant was seeking relief under the Trade Marks Act for infringement of a trade mark of which it was the registered proprietor. The trade mark related to

selling vodka in bottles bearing a mark similar to that

claimed by the applicant as its registered trade mark. The

respondent desired to defend the action, relying essentially

i

on the allegation that the registration of the mark is

i

invalid. It seeks to cross-claim against the applicant for
rectification of the re ister under s22 of the Trade Marks Act
and is seeking an order that the trade mark be expunged on the
ground that it is wrong remaining in the register. There is
nothing unusual about t S. But here the complications
commence.

It appears that for many, many years an institution in the USSR by the name Vessojuno Objinenjay Sojuzplodoimport, being an organisation existing under the laws of the USSR,

located and doing business at a given address in Moscow, was
the registered owner of the trade mark and associated marks as
set out in the certificate of registration of a trade mark.
That registration was for a period of seven years from the

16th day of July 1976 but has been renewed. The certificate

of registration shows that there was a transfer of the

registration to the present applicant, a company incorporated assignment which on its face, raises questions as to whether the assignor in that deed of assignment was, in fact, the same person as the registered proprietor appearing in the register of trade marks. Among other things, the assignment is said to be made by W O Sojuzplodoimport, a company incorporated under the laws of the Russian Federation, the address of which is the same as the other institution in Moscow. But Russia is no longer part the USSR. Russia is but one of the former Soviets

under the laws of the State of Victoria, by deed of assignment
dated 21 February 1992. The assignment was registered on 23

of the USSR. It is suggested also that there may be other

companies in the various states of the former USSR which may still be using the rele ant narks, but I treat that as being irrelevant for present urposes.

There are a number of other features in that deed of

assignment which, on th ir face, do give rise to a basis of a

valid, with the result that questicns arise as to whether the	serious issue arlsing as to whether the deed of assignment is l	register of trade marks should be rectified as sought by the respondent.
Normally one would expect there wauld be a defence alleging invalidity of the assignment and a cross-claim seeking revocation of the registration of the trade mark. But
in this case the respondent desires to join the Russian
company which purports to have assigned the trade mark to the
applicant and to do this by serving the Russian company outside Australia. The respondent relies upon the provisions of 08 of the Federal Court Rules.

Before dealing with that matter, attention is directed to

the question of whether, in a case where an applicant seeks the rectification of a register of trade marks on the basis that the current registration is based upon an assignment

which is invalid, it is necessary or desirable to join the

original assignor, being the original registered proprietor of

the trade mark, as a party. This is an issue on which there

seems to be a surprisingly small amount of authority. The

issue before the Court is whether the regrstration wrongly

8

remains on the register, and if it can be shown, for various
reasons, that the assig' ent was invalid, of necessity the

register should be corr cted. Prima facie one would expect

that it would not be ne essary to join the assignor in those l

proceedings. This does not deny, however, the possibility of

litigation between the ssignor and assignee arising from that

assignment and whether remedies can be obtained by the i

assignee. Much might depend upon the basis of invalidity of particular paragraphs 11-64.
the assignment. Over the luncheon adjournment counsel
discovered and referred the Court to a reference in Kerly's

This passage seems to suggest that it is not necessary to join the assignor, although reference is made to the case of

Sinclair (1932) 49 RPC 123, where the Court of Appeal held

that although the proceedings were properly constituted
without making the assignor a party, the court, in the absence
of notice to the assignor, would only order that the entry of
change of proprietorship should be expunged, thus leaving the

assignor on the register as proprietor.

Reference is made also to New South Wales Dairy

Corporation v Murrav Goulburn Co-operative Com~anv Limited &

(1989) 86 ALR 549, where the assignor was in fact joined

proceedings, the person concerned gave evidence. There appears to be no hard and fast rule in this matter. The absence of the assignor is not a bar. The giving of notice to the assignor may be nec ssary in appropriate cases as

as a party pursuant to a direction of the judge, Gummow J.

suggested in Sinclair. In some cases it might be desirable	t
for the assignor to be ade a party. This might be such a	1
case.
1

In the present case, counsel for the respondent relies upon 08, rl, and in particular paragraph (g), (h), (1) and

(m) :

"1. Subject to rule 2, originating process may be served

outside the Commonwealth in the following cases:

(a)	. . .
(g)	where the proceeding is properly brought against a

person served or to be served in the Commonwealth

and the person to be served outside the Commonwealth

is properly joined as a party to the proceeding;
(h)	where the subject matter of the proceeding, so far as concerns the person to be served is property in the Commonwealth; ...

(1) where the proceeding concerns the construction,

effect or enforcement of an Act or a regulation or
other instrument having or purporting to have effect

under an Act;

(m) where the proceeding concerns the effect or enforcement of an executive, ministerial or administrative act done or purporting to be done under an Act or regulation or other instrument having or purporting to have effect under an Act;"

The rule then goes on to deal with the mechanics of how

service is to be effected if an order is made.	It appears
within Australia and a necessary party, or a party to be served outside the Commonwealth, is properly joined as a party in the proceedings, then leave should be granted to serve outside the jurisdictio provided there is sufficient material before the court to jus ify the establishment of a sufficiently arguable c se to show that the joinder is proper.	that where an application is commenced against a person who is has the right to challe ge the order for service, and, in
particular, reference is made to 09, r7, whlch provides: I

"7. (1) The Court may, on application made by a

respondent to any originating process on notice of motion

filed in the time fixed by subrule ( 2 ) , by order:

(a) set aside the originating process;

set aside the service of the originating process on

(b)	the respondent;
(c)	declare that the originating process has not been duly served on the respondent;
(d)	discharge any order giving leave to serve the

originating process outside Australia or confiming

service of the originating process outside

Australia.

(2) Notice of a motion under subrule (1) may be filed by
a respondent before he enters an appearance or within
fourteen days after the date of entry of a conditional

appearance by him."

Most of the authorities dealing with the question of

service outside Australia are cases where a person so served
has moved the Court to have that service set aside. A number
of those authorities were referred to during the course of the
arguments. But in my opinion it is sufficient initially to
show that there is an arguable ground for making the order
since this does not prevent the person so served from applying
to have the service set aside. That is the time when the real
issue can be determined in much more detail where service is
challenged.

service outside Austral a is a respondent and seeks to serve

that person outside Aus ralia in a cross claim which includes i

a claim against the app icant, who is the assignee and the

registered proprietor of the trade mark, as well as the

assignor, the company in Russia. In my opinion, in

proceedings of this kind the cross claim is to be treated as
an originating process. in these circumstances the present
case comes within paragraph l(g) of 09, since the person in

Russia is a person properly joined as a party to the

proceedings. I come to this view on the ground that the

joinder of that company is necessary, and, having regard to

the unusual features of this case, is properly a party.

Counsel for the applicant opposed the making of an order

for leave to serve outside Australian on a number of grouilds,
the chief one of which would be the extra delay and expense
incurred in adopting such a course. I accept, for the
purposes of the present decision, that there would be greater
delay and greater expense in this course. But that of itself
is not a sufficient reason to refrain from making the order
sought.

It was argued also that, having regard to what the Court of Appeal said in Sinclalr's case, this was an appropriate

case for the court to direct that notice be given to the company in Russia of the existence of the proceedings in Australia to enable that company, if so advised, to apply to

be added as a party. T this end counsel for the applicant

indicated he had instru tlons to give an undertaking to the
Court on behalf of the ppllcant to notify the company in P

Russia of the existence of these proceedings so that that company could, if so ad ised, apply to be joined. There is

force in this submission, but in my opinion the more apt l

course is to go through the formalities of giving leave to

serve the company in Russia to enable that company to decide

whether to take action or not. If the company in Russia does

not take steps to attend a directions hearing or to appear and

take any part in these proceedings, this is not a case where

the Court would aut~matically make an order against the

Russian company. It would need to be satisfied of the need to

do so. In the present case it appears that the only order sought against the Russian company is a declaration as to the

validity of the assignment, a purely equitable remedy which is
not really necessary but which in an appropriate case may be

made.

The substance of the order being sought is for the

rectification of the register. Having regard to the
differences in name of the company in Russia from its parent
predecessor in the USSR, the difference in name between the
original registered proprietor of the trademark and the

assignor of the trademark, this is a case where it is
appropriate, in my opinion, to have the Russian company at
least given notice of the proceedings. And this can best be
done by giving leave to serve the company in Russia. There is
also material before the court to indicate the type of order

that is being sought as to the method of service.

l

In this regard it s important that the nature of the cross claim should be 1' ited, and should be limited to the i

questlon of the validit4 of the assignment and nothing more. Y

Nothing is being challenged as far as any other trademark is concerned. Any actempt to raise in these proceedings claims in relation to other trademarks, except insofar as they may be

associated with that of the trademark in suit, should not be

permitted. The proposed cross ciaim does refer to a number of

those associated trademarks. That does give rise to another
argument going to the question of the validity of the
assignment itself. In particular, there should be no
reference in the cross claim to any allegations based upon the

question of the assignment and the Trade Marks Act itself.	Trade Practices*. The cross claim should be limited to the	The respondent seeks an order that it have leave to file draft, which is annexure 00 to the affidavit of R.L.
and serve a cross claim substantially in the form of the claims for relief against the first cross respondent as
counsel may advise. The first cross respondent is the
applicant. There may be a certain degree of latitude required
in relation to that person. But again I suggest it would be inappropriate to include in the cross claim any claim based
upon the Trade Practices Act. This case will be complex
enough in relation to the Trade Marks Act, and should not be made more complex by reference to the Trade Practices Act. Attention will need to e given to the form of the cross claim
to be served on the com any in Russla. The cross claim should 1 7
be in the form of Form of the Rules, requiring the cross
respondent in Russia to attend a directions hearing at a time
which I shall fix later4 but allowing ample time for service. 1 What is required to be served is a copy of the application and
statement of claim, a copy of the cross claim or an original of the cross claim signed by the cross claimant's solicitor and, of necessity, will need to be signed by the registrar as well, a copy of the defence, a copy of the orders I am about to make, a copy of the prescribed form of notice of appearance, and a copy of Orders 9 and 11, and a Form 15 of
the Federal Court Rules. They can be served on the company in
Russia by registered airmail addressed to it at its address,
32-34 Smolenskaya, Moscow, 121200, Russian Federation. In
addition, I direct that service be effected by delivering copies of the same documents to Messrs Spruissen and Ferguson, patent attorneys, by leaving them with some person apparently a principal or employee of theirs and apparently of or above the age of 16 years at level 33, 31 Market Street, Sydney, together with a letter from the respondent's solicitors requesting that they bring these proceedings and those documents to the attention of VAO, Sojuzplodimport. I also direct that service shall be deemed to have been effected on

the fourteenth day after the day on which the last of the

steps referred to has been taken.

I would ask counsel for the respondent to prepare minutes

of order in conformity with what I have said, much of which

has been taken from the short minutes of orders handed to me

this morning. There wi 1 need to be quite dramatic changes	I
i
made to orders 2(a)(i)	. I will make an order that

Yd (ii)

leave be granted to the respondent to issue and serve the
cross claim in the way 4 have indicated. If, in due course, i

an appearance is entered, the Russian company could move the Court to have the service set aside, or it could indicate it will take no part in the proceedings. But what happens after

that would depend upon material before the Court, having

regard to all the facts then known.

Orders made accordingly.

I certify that this and the preceding ten (10) pages are a

true copy of the Ex Tempore Reasons for Judgment of the

Honourable Mr Justice R.M. Northrop.

Associate: W+

Date: &va ( q q 3