Matthews v Doctrieve Corporation Pty Ltd - [2003] FCA 459

FEDERAL COURT OF AUSTRALIA
Matthews v Doctrieve Corporation Pty Ltd [2003] FCA 459
CORRIGENDUM
JEFFREY GEORGE MATTHEWS v DOCTRIEVE CORPORATION PTY LTD,
EARL ERIC WOOLLEY, AFSHIN BAKTASHI, ANTHONY GLASS,
PETER NICHOLAS RAMENSKY and CLIVE DONNER
V 1270 of 2001
FINKELSTEIN J
15 MAY 2003 (CORRIGENDUM 20 MAY 2003)
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V1270 of 2001

BETWEEN:

JEFFREY GEORGE MATTHEWS
Applicant

AND:

DOCTRIEVE CORPORATION PTY LTD,
EARL ERIC WOOLLEY,
AFSHIN BAKTASHI,
ANTHONY GLASS,
PETER NICHOLAS RAMENSKY
and CLIVE DONNER
Respondents

JUDGE:

FINKELSTEIN J

DATE:

15 MAY 2003

PLACE:

MELBOURNE

CORRIGENDUM
1.   On page 15, paragraph 21, line 5 insert “Steamships” after “(West Indies)” and amend the list of cases on the catchwords page accordingly.
2.   On page 16, paragraph 23, line 5 replace “Morgate” with “Moorgate” and amend the list of cases on the catchwords page accordingly.
3.   On page 20, paragraph 32, line 5 replace “Rights” with “Right” and amend the list of cases n the catchwords page accordingly.
4.   On page 20, paragraph 33, line 1 insert “to” after “effect”.

I certify that the preceding four (4) numbered paragraphs are a true copy of the Corrigendum to the Reasons for Judgment of his Honour Justice Finkelstein.
Associate:
Dated: 20 May 2003

FEDERAL COURT OF AUSTRALIA
Matthews v Doctrieve Corporation Pty Ltd [2003] FCA 459
INTELLECTUAL PROPERTY – trade mark – passing off whether estopped from alleging breach of trademark and passing off – representation by silence – nature of detriment
PRACTICE AND PROCEDURE – parties – equitable assignment - equitable assignees of chose in action wishing to sue – whether assignor must be joined.
Corporations Act 2001 (Cth) ss 601AA, 601AB, 601AD(2)
Trade Practices Act 1974 (Cth) s52
Ballarat Products Limited v Farmers Smallgoods Co Pty Ltd [1957] VR 104 cited
Baytur SA v Finagro Holdings SA [1992] 1 QB 610 cited
Bute (Marquess) v Barclays Bank Limited [1955] 1 QB 202 cited
Canada and Dominion Sugar Company Limited v Canadian National (West Indies) Limited [1947] AC 46 cited
Commercial Factors Ltd v Maxwell Printing Ltd [1994] 1 NZLR 724 cited
Commonwealth v Verwayen (1990) 170 CLR 394 considered
Douglas Valley Finance Co Ltd v S Hughes (Hirers) Ltd [1969] 1 QB 738 cited
Foran v Wight (1989) 168 CLR 385 cited
Hollins v Fowler (1875) LR 7 HL 757 cited
Jennings v Credit Corp Australia Pty Ltd (2000) 48 NSWLR 709 cited
Kark (Norman) Publications Ltd v Odhams Press Ltd [1962] RPC 163 referred to
Low v Bouverie [1891] 3 Ch 82 cited
Martindale v Smith (1841) 1 QB 389 cited
Morgate Mercantile Co Ltd v Twitchings [1977] AC 890 applied
Olga Investments Pty Ltd v City Power Limited [1998] 3 VR 485 cited
Pacol Limited v Trade Lines Limited (the ‘Henrik Sif’) [1982] 1 Lloyd’s Report 456 cited
Performing Rights Society Limited v London Theatre of Varieties Limited [1924] AC 1 cited
Poiret v Jules Poiret Ltd (1920) 37…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2003] FCA 459
Decision Date: 15 MAY 2003

CaseChat Overview and Summary

The case of Matthews v Doctrieve Corporation Pty Ltd [2003] FCA 459 was heard in the Federal Court of Australia by Justice Finkelstein. The Applicant, Mr Matthews, sued Doctrieve Corporation Pty Ltd, and other respondents, for trade mark infringement, passing off, misleading conduct, and conversion. The respondents defended the claims by arguing that Mr Matthews was estopped from alleging that they breached his trade mark and passing off rights and that there was no evidence that any stock purchased by Mr Matthews was ever in the possession of Doctrieve Corporation or was converted by that company. The court found that Mr Matthews was estopped from contending that Doctrieve Corporation did not have his permission to conduct the IDR business and sell software under the Doctrieve name, as he had a duty to inform Doctrieve Corporation that it did not have his permission to continue to conduct the business and use the Doctrieve mark. The court also found that the conversion claim was unsuccessful as Mr Matthews failed to lead any evidence to establish the identity of any goods taken by Doctrieve Corporation or Mr Woolley, or that any of his goods had been converted. The court granted Mr Matthews leave to amend his statement of claim to bring in a new cause of action for $24,322 as money had and received from Doctrieve Corporation or Mr Woolley. The final orders of the court will be determined at a later date.

Orders