FEDERAL COURT OF AUSTRALIA
John Brodel v Telstra Corporation [2004] FCA 505
practice and procedure – application to review decision of Registrar – motion for summary judgment – whether proceeding discloses no reasonable cause of action – application refused
Federal Court of Australia Act 1976 (Cth), s 35A
Copyright Act 1968 (Cth), ss 32(1), 134
Trade Marks Act 1995 (Cth), ss 20, 120
Limitation of Actions Act 1958 (Vic), s 5(1)
Federal Court Rules, O 20, r 2Re Kwiatek and Kwiatek; Ex parte Big J Ltd v Pattison (1989) 21 FCR 374 followed
Martin v Commonwealth Bank of Australia [2001] FCA 87 applied
Cottrell v Wilcox [2001] FCA 866 applied
General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 applied
Dey v Victorian Railways Commissioners (1949) 78 CLR 62 applied
Webster v Lampard (1993) 177 CLR 598 applied
Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd [1940] AC 112 considered
Exxon Corporation v Exxon Insurance Consultants International Ltd [1982] Ch 119 considered
Green v Broadcasting Corporation of New Zealand (1983) 2 IPR 191 considered
Sullivan v FNH Investments Pty Ltd (2003) 57 IPR 63 considered
Brodel v Farnsworth (unreported, Finkelstein J, 1 August 2003) considered
ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 referred to
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1980] 2 NSWLR 851 referred toJOHN BRODEL v TELSTRA CORPORATION LIMITED ABN 33 051 77
V 615 of 2003KENNY J
26 APRIL 2004
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V615 OF 2003
BETWEEN:
JOHN BRODEL
APPLICANTAND:
TELSTRA CORPORATION LIMITED ABN 33 051 77
RESPONDENTJUDGE:
KENNY J
DATE OF ORDER:
26 APRIL 2004
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The application to review the decision of the Registrar made 17 December 2003 be refused.
2.The proceeding be dismissed pursuant to O 20 r 2 of the Federal Court Rules.
3.The applicant pay the respondent’s costs of the proceeding, including the costs of the motion before the Registrar and the costs of the application to review the decision of the Registrar.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
V615 OF 2003
BETWEEN:
JOHN BRODEL
APPLICANTAND:
TELSTRA CORPORATION LIMITED ABN 33 051 77
RESPONDENT
JUDGE:
KENNY J
DATE:
26 APRIL 2004
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
application
This is an application under subs 35A(5) of the Federal Court of Australia Act 1976 (Cth) to review a Registrar’s decision made on 17 December 2003. Subsection 35A(6) provides as follows:
The Court may, on application under subsection (5) or of its own motion, review an exercise of power by a Registrar pursuant to this section and may make such order or orders as it thinks fit with respect to the matter with respect to which the power was exercised.
A review under subs 35A(6) on an application under…
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- AGLC
- John Brodel v Telstra Corporation [2004] FCA 505
- Case
- [2004] FCA 505
- Decision Date
CaseChat Overview and Summary
The court was required to decide whether Mr Brodel's claims of trade mark infringement, copyright infringement, and passing off were valid. The court examined the timeline and events surrounding the use of "SMART FAX", including Mr Brodel's use of the term in early 1991, his agreement with Telstra to brand goods with a Telecom sticker and not compete as a competitor, and Telstra's marketing of a product under "SMART FAX" in July 1994. Additionally, the court considered whether Mr Brodel's trade mark rights were sufficiently established to support his claims.
In reaching its decision, the court held that Mr Brodel had not established a valid cause of action. The court found that Mr Brodel's trade mark rights were not in place until his successful registration in May 2001, and thus any alleged infringement by Telstra prior to this date could not be substantiated. The court further determined that Mr Brodel's claims did not meet the threshold for summary judgment as they were not clear and definite. Consequently, the court dismissed the proceeding and ordered Mr Brodel to pay Telstra's costs.
Orders
Orders of the court
1. The application to review the decision of the Registrar made 17 December 2003 be refused.
2. The proceeding be dismissed pursuant to O 20 r 2 of the Federal Court Rules.
3. The applicant pay the respondent’s costs of the proceeding, including the costs of the motion before the Registrar and the costs of the application to review the decision of the Registrar.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Established by: KENNY J
Mr Brodel did not contest the accuracy of this chronology. Having regard to what I am about say, I draw attention to the following matters:-In early 1991, Mr Brodel was apparently using the word “Smart FAX”. For example, the words appeared on the letterhead of The Australian Fax Company in January 1991. This is consistent with Mr Brodel’s statement that he commenced using the words “Smart FAX” when he tendered for a contract with the respondent.-In early 1991, in the course of negotiating the sale of facsimile machines to the respondent, Mr Brodel apparently agreed with the respondent that he would “brand the goods with a Telecom sticker and that [he] would not compete in the market place as a competitor using [his] trade mark “Smartfax”: see letter dated 24 August 2000 from Mr Brodel to Mr Kelson, attached to Mr Brodel’s affidavit of 6 August 2003.-The respondent marketed a product using “SMART FAX” in July 1994, and possibly “for a number of years”: see Mr Brodel’s affidavit of 22 September 2003 and his statutory declaration of 10 June 1998, which is exhibit NJH4 to Ms Hickey’s affidavit. Mr Brodel alleges that the infringing acts or passing off occurred in July 1994.-Mr Brodel believed that he was “inhibited from using the trade mark SMART FAX” by the respondent’s trade mark application No 652986 (filed 14 February 1995) until the application was withdrawn in May 2000: see Mr Brodel’s statutory declaration of 26 May 2000, which is attached to his affidavit of 6 August 2003.consideration of summary judgment application The Court will only dismiss or stay a proceeding under O 20 r 2 in a very clear case. In General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 (“General Steel”) at 128-129, Barwick CJ accepted that:[T]he jurisdiction summarily to terminate an action is to be sparingly employed and is not to be used except in a clear case where the Court is satisfied that it has the requisite material and the necessary assistance from the parties to reach a definite and certain conclusion.The standard of satisfaction required for summary judgment is that stated in General Steel at 129-130: see also Dey v Victorian Railways Commissioners (1949) 78 CLR 62 at 91 per Dixon J and Webster v Lampard (1993) 177 CLR 598 at 602-603 per Mason CJ, Deane and Dawson JJ. By his application, Mr Brodel raises three possible causes of action: infringement of trade mark, infringement of copyright and passing off. I examine below each cause of action.(a) Infringement of trade mark The material before the Court indicates that Mr Brodel applied to register the trade mark “SmartFAX” in class 38 on 9 March 1990 and that this application lapsed on 1 November 1991. He subsequently applied to register the trade mark “SMARTFAX” in class 9 on 17 October 1996, and this application was withdrawn on 16 January 2001. On 11 May 2001, Mr Brodel successfully applied to register a composite trade mark in class 9. This registration was advertised on 11 April 2002. Having regard to these facts, the respondent submits that the applicant acquired exclusive rights under the Trade Marks Act 1995 (Cth) only in relation to the trade mark, which was the subject of application in May 2001. It further submits that those rights first accrued on the date the registration of the mark was deemed to have taken effect, namely, 11 May 2001.