Karlsson v Griffith University

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FEDERAL COURT OF AUSTRALIA

Karlsson v Griffith University [2022] FCA 591

File number: NSD 1102 of 2021
Judgment of: KATZMANN J
Date of judgment: 24 May 2022
Catchwords:

PRACTICE AND PROCEDURE — application by applicant for default judgment — where respondent failed to file a defence within the time permitted by the rules but later excused from doing so until further order — whether judgment in favour of applicant should be entered

PRACTICE AND PROCEDURE — application by respondent for summary judgment — where applicant had sued respondent in the Supreme Court of New South Wales based on the same factual matrix as the proceeding in this Court and raising substantially the same allegations — where the Supreme Court action was summarily dismissed on the basis that they were frivolous, vexatious and involved an abuse of process, whether the proceeding in this Court should be summarily dismissed as an abuse of process — alternatively, where applicant’s pleading defective in numerous respects, whether it should be struck out and leave to replead refused
Legislation:

Competition and Consumer Act 2010 (Cth) s 137C(1)(b), Schedule 2 ss 18, 29, 151(1)(a), 236(1), (2)

Federal Court of Australia Act 1976 (Cth) ss 31A(2), 37M

Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth) s 7(5)

Trade Marks Act 1995 (Cth) ss 120, 124, 126, 127, 195

Federal Court Rules 2011 (Cth) ss 1.34, 1.40, 1.41, 16.02(1)(d), 16.21(1), 16.32, 16.42, 26.01

Limitation of Actions Act 1974 (Qld) s 12(1)

Cases cited:

Batistatos v Roads and Traffic Authority of New South Wales (2006) 226 CLR 256

Campomar Sociedad Limitada v Nike International Ltd (2000) 202 CLR 45

Do Carmo v Ford Excavation Proprietary Limited (1984) 154 CLR 234

Field v Perpetual Ltd [2010] FCA 1001

Idoport Pty Ltd v National Australia Bank Ltd [2006] NSWCA

Karlsson v Griffith University (2020) 103 NSWLR 131

Karlsson v Griffith University [2019] NSWSC 1335

Karlsson v Griffith University [2020] NSWSC 365

Karlsson v Griffith University [2021] HCASL 12

Meckiff v Simpson [1968] VR 62

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191

PNJ v The Queen [2009] HCA 6; 83 ALJR 384; 252 ALR 612; 193 A Crim R 54

Polar Aviation Pty Ltd v Civil Aviation Authority (2012) 203 FCR 325

Rogers v The Queen (1994) 181 CLR 251

Spencer v Commonwealth of Australia (2010) 241 CLR 118

Stewart v Deputy Commissioner of Taxation [2010] FCA 402; 76 ATR 66

Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177

Tang v Minister for Immigration and Multicultural and Indigenous Affairs [2004] FCA 1042

Tomlinson v Ramsey Food Processing Pty Ltd (2015) 256 CLR 507

Trade Practices Commission v David Jones (Australia) Pty Ltd (1985) 7 FCR 109

Turner v Bulletin Newspaper Co Pty Ltd (1974) 131 CLR 69

UBS AG v Tyne as Trustee of the Argo Trust (2018) 265 CLR 77

Walton v Gardiner (1993) 177 CLR 378

Williams v Spautz (1992) 174 CLR 509
Division: General…
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Details
Case
[2022] FCA 591
Decision Date

CaseChat Overview and Summary

The case of Karlsson v Griffith University involved a dispute over the use of the trade mark "know more. do more." The applicant, Ms Karlsson, sought to register the trade mark for her business, which was an immigration and education agency. The respondent, Griffith University, argued that Ms Karlsson's use of the trade mark would cause confusion among consumers and sought summary judgment against her claim. The court was required to decide whether Ms Karlsson's application for default judgment should be dismissed and whether the University's application for summary judgment should be allowed.

The court found that Ms Karlsson's application for default judgment was misconceived and should be dismissed. The court also found that the University's interlocutory application for summary judgment was well-founded and should be allowed. The court was satisfied that, without professional legal assistance, Ms Karlsson would never be able to plead a case that complies with the Rules and serves the purpose of informing the University of the case it has to meet. The court found that there was no real prospect that Ms Karlsson would ever obtain that assistance and that it would be futile to give her yet another opportunity to replead.

The court concluded that Ms Karlsson's application for default judgment was misconceived and should be dismissed. The court also found that the University's interlocutory application for summary judgment was well-founded and should be allowed. Had the court not been persuaded to give summary judgment, it would have ordered that Ms Karlsson's statement of claim be struck out and refused her leave to replead. The court ordered that costs should follow the event. The proceeding was dismissed, and summary judgment was entered in favour of the respondent against the applicant. The applicant was ordered to pay the respondent's costs.

Orders

Orders of the court

1. The interlocutory application filed by the applicant on 2 February 2022 be dismissed.

2. The proceeding be dismissed.

3. Summary judgment be entered in favour of the respondent against the applicant.

4. The applicant pay the respondent’s costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

The fifth affidavit was also filed in support of Ms Karlsson’s application for default judgment and duplicated some of the material annexed to the fourth affidavit. It was 213 pages long. It contained evidence of her attempts to serve her submissions on the application and the fourth affidavit on the University. In addition to these documents, the affidavit annexed receipts from Officeworks, extracts from the Australia Post website; correspondence between Ms Karlsson and the registry of this Court; and correspondence from the University’s solicitors and Legal Vision. It also annexed a certificate apparently issued by the Local Court of NSW on 19 July 2019 under s 309A of the Criminal Procedure Act 1986 (NSW) stating that Ms Karlsson’s driving licence and credit card were stolen and that the offender had used the identification information taken from these items to commit offences “in relation to the victim’s personal or business affairs”.Background The following matters are apparently uncontentious. On or about 14 August 2011 the University started to use the trade mark, know more. do more. The University used the trade mark in marketing its courses on the internet and elsewhere. On 10 May 2013, it applied to register the trade mark in class 41 (education services). The Registrar of Trade Marks accepted the University’s application on 21 November 2014, with a priority date of 10 May 2013. The acceptance was advertised on 27 November 2014 and the mark was entered on the Register on 4 February 2015. In 2016 the University embarked on a new marketing campaign, using the slogan “Be Remarkable”. On 3 August 2014 Ms Karlsson applied to register know more. do more in the same class. By August 2018 she had received at least six adverse reports explaining that her application was unsuitable for registration. On 7 August 2018 Baxter IP, a firm of patent and trade mark attorneys, wrote to the University on Ms Karlsson’s behalf seeking its consent to her use of the mark. In that letter Baxter IP acknowledged that the University was the owner of Australian Trade Mark 1556369 for know more. do more. in class 41 and noted that Ms Karlsson had filed an application for registration of the same mark in the same class. They advised:Our client intends to start a new business and use the trade mark know more. do more. as a slogan for her new business. The nature of the business of our client will be an immigration and education agency, which will provide services in relation to studying in Australia and immigrating to Australia. The business will also provide language training classes for clients who need to meet language requirements of visas.…Taking into consideration the different industries which our client and you operate in, we believe that our client’s use of the trade mark will not conflict with Griffith University, nor would it cause confusion to consumers. Due to the similarity of the trade marks, however, your registration has been cited against our client’s application. As such our client has instructed us to seek a letter of consent from you in relation to their application.…Should you not agree to sign the letter of consent an alternative approach for our client to overcome the citation is a non-use action against your trade mark under section 92 of the Trade Marks Act 1995.

Evidence

Evidence Before The Court

Throughout the litigation in and arising out of the Supreme Court action and in the instant proceeding, Ms Karlsson appeared in person. It has not served her well.The evidence The University relied on three affidavits sworn by Elise Brooke Allcock on 23 November 2021, 4 March 2022 and 19 April 2022. Among other things, the affidavits set out the relevant history concerning the use and registration of the respective trade marks, and included a chronology of the Supreme Court action and annexed relevant correspondence. Ms Karlsson relied on five affidavits affirmed on 22 November 2021 (1), 6 December 2021 (2), 2 February 2022 (3), 25 March 2022 (4), and 12 April 2022 (5). With the exception of the affidavit of 2 February 2022, in which Ms Karlsson pointed to the University’s failure to file a defence in accordance with the Federal Court Rules 2011 (Cth) (Rules), none of this evidence was of assistance in resolving the issues raised by either application. The relevance of many of the documents either to the present applications or to Ms Karlsson’s substantive case is obscure. The first of Ms Karlsson’s affidavits was filed in support of the first interlocutory application. It identified the national practice areas and sub-areas to which Ms Karlsson apparently believed the application could be allocated and advised of her intention to serve the University by serving its solicitors. It annexed the results of an internet search for “Griffith [U]niversity Know more. Do more.”, which appears to have been carried out on 16 September 2021. So far as I can tell, to the extent that the search results revealed material linking the University to the slogan, they do not disclose the use by the University of the slogan after it ceased to be the registered owner of the trade mark. The second affidavit was said to have been filed “in support of Reply for plead a matter of fact or point of law”. It appears to be directed at challenging the orders made in the Supreme Court action. In para 4, Ms Karlsson purported to apply for an order disallowing any costs “improperly, unreasonably, or negligently incurred”. Annexed to the affidavit were copies of the transcript of the hearings before Wright J and the Court of Appeal; correspondence from the University’s solicitors debunking her allegations but offering to settle on terms which would excuse her from paying costs; the “Registration of Cost Assessment Certificate”; and a letter from a firm of accountants dated 16 March 2016, advising her that records were only kept for five years. The third affidavit was filed in support of Ms Karlsson’s interlocutory application for default judgment. In it she stated, in essence, that the University had failed to file a defence and that she was seeking orders for summary judgment in the amount of $5,371,258.18. Annexed to the affidavit were correspondence between Ms Karlsson and the University’s solicitors; receipts and invoices for legal services which Ms Karlsson said amounted to over $16,000; correspondence with a translation service; a business plan and other marketing materials from Ms Karlsson’s business featuring the mark “Know more. Do more”; the profiles of various employees of Ms Karlsson’s business; information relating to international student numbers; a hospital discharge summary; and copies of prescriptions in Ms Karlsson’s name.

Decision

Reasons for decision

Like Wright J, I am satisfied that, without professional legal assistance, Ms Karlsson will never be able to plead a case that complies with the Rules and serves the purpose of informing the University of the case it has to meet. Based on the information she provided to the Court, there is no real prospect that she will ever obtain that assistance. In these circumstances it would be futile to give her yet another opportunity to replead.Conclusion Ms Karlsson’s application for default judgment was misconceived and should be dismissed. The University’s interlocutory application for summary judgment is well-founded and should be allowed. Had I not been persuaded to give summary judgment, I would have ordered that Ms Karlsson’s statement of claim be struck out and refused her leave to replead. Costs should follow the event. There will be orders accordingly.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.