Louis Vuitton Malletier SA v Knierum

[2004] FCA 1168

FEDERAL COURT OF AUSTRALIA

Louis Vuitton Malletier SA v Knierum [2004] FCA 1168

PRACTICE AND PROCEDURE – whether proceeding or part of proceeding should be conducted in the New South Wales Registry – relevant factors

Federal Court of Australia Act 1976 (Cth) s 48
Federal Court Rules, O 10 r 1(2)(f), O 30 r 6

National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155 cited

LOUIS VUITTON MALLETIER SA v JASON LEIGH KNIERUM, STEVEN ROWLES and LILLIAN JANNIGJE ROWLES

V 651 OF 2004

KENNY J
MELBOURNE
9 SEPTEMBER 2004

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 651 OF 2004

BETWEEN:	LOUIS VUITTON MALLETIER SA APPLICANT
JASON LEIGH KNIERUM FIRST RESPONDENT
STEVEN ROWLES SECOND RESPONDENT
LILLIAN JANNIGJE ROWLES THIRD RESPONDENT
JUDGE:	KENNY J
DATE OF ORDER:	9 SEPTEMBER 2004
WHERE MADE:	MELBOURNE

THE COURT ORDERS BY CONSENT THAT:

1.The matter be referred to a Registrar of this Court for mediation, in Melbourne on a date to be fixed, in accordance with O 72 of the Federal Court Rules.

THE COURT FURTHER ORDERS THAT:

2. The motion, notice of which was filed on 9 June 2004, be adjourned to a date to be fixed.
3. The first respondent file and serve an amended notice of appearance stating his proper address for service forthwith.
4. In the event that mediation is unsuccessful, proceeding V 651 of 2004 be transferred to the New South Wales Registry of the Federal Court of Australia and continued there.
5. There be no order as to the costs of the hearing on 8 September 2004.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	V 651 OF 2004

BETWEEN:	LOUIS VUITTON MALLETIER SA APPLICANT
JASON LEIGH KNIERUM FIRST RESPONDENT
STEVEN ROWLES SECOND RESPONDENT
AND:	LILLIAN JANNIGJE ROWLES THIRD RESPONDENT

JUDGE:	KENNY J
DATE:	9 SEPTEMBER 2004
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. The applicant and first respondent appeared before me yesterday afternoon for the hearing of a notice of motion filed on 9 June 2004 and for further directions.  At the hearing, I ordered that, in the event that a proposed mediation were unsuccessful, the proceeding be transferred to the New South Wales Registry of the Court and I indicated that I would give reasons for this order. 

2. By its notice of motion, the applicant seeks summary judgment against the first respondent.  Amongst other things, the applicant seeks, by way of summary judgment, an injunction restraining the first respondent from infringing certain of its registered trade marks.  The applicant’s motion is supported by numerous affidavits.  They were sworn by Stephen Marcus Stern on 8 June 2004 and 11 June 2004 (correcting an error in his previous affidavit), Katrina Ann Bailey on 8 June 2004, Joel Brady Masterson on 13 August 2004, Laura-Jane Maher on 13 August 2004 and Sam Dakanalis on 16 August 2004 and 6 September 2004.  The respondent relies on his own affidavit sworn on 2 August 2004. 

3. At the last directions hearing, arrangements were made for the first respondent, who resides in Erskineville in New South Wales, to appear in Sydney by way of video link.  On 6 September 2004, the applicant gave the first respondent informal notice that it wished to cross-examine him on his affidavit and that it did not wish to do so by way of video link.  The applicant was unable to serve a notice for cross-examination on the first respondent until 7 September 2004.  The applicant wishes to have its counsel cross-examine the first respondent in her immediate presence, in Sydney.  I accept that it is undesirable that cross-examination designed to impugn credit (such as is proposed in this case) take place by way of video link.  Yesterday, the applicant sought an adjournment of the hearing of its motion, to afford its counsel an opportunity to travel to Sydney. 

4. Prior to yesterday’s hearing, I indicated to the parties, through my associate, that I intended to raise the possibility of transferring the proceeding to the New South Wales Registry.  When I raised the matter with the applicant’s counsel, she stated that the part of the firm of the applicant’s solicitors that was especially knowledgeable about proceedings of this kind was based in Melbourne and, principally for this reason, the applicant preferred that the proceeding remain in Melbourne.  Counsel indicated that the applicant had no real opposition to the transfer of the motion to Sydney.  The respondent, on the other hand, specifically sought that the matter be transferred to the New South Wales Registry.  He has also indicated that he wishes to cross-examine Mr Masterson, who is a deponent to an affidavit filed on the applicant’s behalf.

5. Section 48 of the Federal Court of Australia Act 1976 (Cth) provides that:

   The Court or a judge may, at any stage of a proceeding in the Court, direct that the proceeding or a part of the proceeding be conducted or continued at a place specified in the order, subject to such conditions (if any) that the Court or judge imposes.

   Order 10 r 1(2)(f) of the Federal Court Rules is also relevant, although it does not really take the matter much further.  At present the proper place of the proceeding, and therefore the place where any interlocutory application will be heard, is in Melbourne.  Subject to any order to the contrary, any trial will be in Melbourne too: see O 30 r 6(2).

6. There is no dispute as to the principles that apply in relation to a transfer application.  In National Mutual Holdings Pty Ltd v The Sentry Corporation (1988) 19 FCR 155 at 162, a Full Court (Bowen CJ, Woodward and Lockhart JJ) said that:

   The power conferred on the Court or a judge by s 48 is in terms wholly unfettered.  It should be exercised flexibly having regard to the circumstances of the particular case.

   Their Honours observed that the power conferred by s 48 recognises the national character of the Court. The Court added, at 162:

   The factors which the Court is entitled to take into account in considering whether one city is more appropriate than another for interlocutory hearings or for the trial itself are numerous.  The Court must weigh those factors in each case.  Residence of parties and of witnesses, expense to parties, the place
   where the cause of action arose and the convenience of the Court itself are some of the factors that may be relevant in particular circumstances.

   ...

   Ultimately the test is: where can the case be conducted or continued most suitably bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the Court.  It cannot and should not, in our opinion, be defined more closely or precisely.

7. This proceeding has been commenced in the Victorian Registry of the Court.  The relevant question is why should it be changed?  I note, in this connection, that there is no onus of proof as such to be discharged by a party seeking to conduct or continue the proceeding elsewhere. 

8. The applicant is incorporated in and pursuant to the laws of France.  It is not said that the applicant chose this registry capriciously, although the case has clear and distinct connections with New South Wales.  The first respondent is an individual resident in New South Wales.  He is unrepresented and has limited means.  The proceedings against the second and third respondents are at an end.

9. The applicant commenced this proceeding on 21 May 2004.  Its claim is for the infringement of its Australian registered trade marks.  The applicant’s case is that, without its licence or authority, the first respondent imported counterfeit goods into Australia.  The alleged importation was into Sydney.  The applicant’s deponents are: (1) its legal representatives, who reside in Melbourne; (2) an employee of a company related to the applicant (Ms Bailey) who resides in Sydney; and (3) an inquiry agent licensed in New South Wales (who apparently resides in Queensland).  Much of the evidence to be given by the applicant’s legal representatives is formal or unlikely to be contentious.  On the summary judgment application, as it presently stands, the most significant witnesses are likely to be the first respondent and Ms Bailey.  I note too that the officers of the Australian Customs Service who were involved in events relevant to the proceeding were based at Mascot, New South Wales, at the relevant time.  At the hearing yesterday, the first respondent indicated that he proposed to call these officers to give evidence.

10. One reason for the proceeding remaining here is that it was begun here.  As already indicated, the applicant also referred to the fact that its solicitors, who are knowledgeable about proceedings of this kind, have their offices in Melbourne.  The applicant’s solicitors belong, however, to a national firm and, in any event, there is no reason why they cannot instruct counsel to represent the applicant in Sydney.  This is made manifest by the applicant’s proposal that its counsel travel to Sydney for the purposes of its motion for summary judgment.  In such as case as this, it does not appear to me to be appropriate to transfer merely the motion.

11. Bearing in mind the matters referred to above, it seems to me that the better course, in the interests of the parties, the nature of the case and the fair and orderly administration of justice, is to transfer the whole of the proceeding, including the motion for summary judgment, to the New South Wales Registry of the Court.  By consent I have referred the matter to a Registrar of this Court for mediation, in Melbourne.  If, however, this mediation proves unsuccessful, then proceeding V 651 of 2004 will be transferred to the New South Wales Registry of the Court and continued there.

I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Kenny

Associate:
Dated:             9 September 2004

Counsel for the Applicant:	Marianne Barker
Solicitor for the Applicant:	Corrs Chambers Westgarth
The respondent appeared for himself
Date of Hearing:	8 September 2004
Date of Judgment:	9 September 2004