Myer Stores Ltd v Malloy, J.L

[1991] FCA 918

IN THE FEDERAL COURT OF 'AUSTRALIA )

1

VICTORIA DISTRICT REGISTRY	)	V No. G 363 of 1991
1
GENERAL DIVISION	)
B E T W E E N :

MYER STORES LIMITED

Applicant

A N D :

JOHN LEO M7iLLOY and ANOTHER

Respondent

COURT :	NORTHROP J.
PLACE :	MELBOURNE
DATE :	16 DECEMBER 1991
EX TEMPORE REASONS FOR JUDGMENT

This is the first directions hearing in a matter which was commenced in the Victoria District Registry by Application dated 29 November 1991. And the matter which has been argued was a motion by the respondents that the proceeding be transferred to the Western Australia District Registry, and that Perth be fixed as a proper place of the proceeding for the purposes of 0.30, r.6, of the Federal Court Rules. The motion is based upon s.48 of the Federal Court Act, and also on 0.10, r. l(2) (f) of the Rules. I do not propose to set out in any detail the material before the Court, but it is fair to say that there has been placed before the Court voluminous

material relating to the issues arising between the parties	and what has occurred between them. The application before
the Court is an application in which the applicant is seeking the removal from the register of trade marks a trade mark in respect of goods, and alternatively rectification of the trade mark and various other orders in relation to that trade mark and orders based upon threats of legal proceedings that have been made by the respondents which are said to be unjustifiable. Further an injunction is sought restraining the respondents from threatening the applicant with legal proceedings and damages pursuant to the provisions of s.124 of the Trade Marks Act and also a declaration pursuant to section 2.2 of the Copyright Act in relation to threats of legal proceedings and damages. The facts giving rise to the application involve the sale by the applicant of goods containing a mark in the form of a logo using the words, "Creatures of Leisure", and a depictron of those words and what might be said to be surf boards cut out from a globe of the world, and the words, "Product of Australia". The respondents, or one of them, claim to be registered as the proprietor of that mark, and to have the copyright in those marks. Correspondence relating to the dispute was commenced by letter dated 22 October 1991, when the patent attorney for
the respondents wrote to the applicant alleging infringement of trade mark, and seeking certain undertakings not to use or sell goods showing those logos. There was then further correspondence between the patent attorneys for the applicant and the respondents, relating to the matter. Eventually a long letter of demand from the solicitors for the respondents was sent requiring undertakings to be given by the applicant and indicating that unless they were given, legal proceedings would be commenced.
The applicant had withdrawn from sale the goods containing the alleged infringing marks but had not informed the respondents of that fact. Eventually, by letter dated 29 November, the solicitors for the applicant wrote to the solicitors for the respondents, referring to earlier correspondence, and stating for the first time, and I quote:

"We have received instructions to act as solicitors for Myer Stores Limited. In view of your client's persistent threats of infringement proceedings, we have been instructed to apply to the Federal Court of Australia for injunctive relief and damages in respect of unjustified threats, and for removal from the register of Mr Malloy's trade mark registrations. We enclose a copy of the documents filed on behalf of our client in the Victoria District Registry of the Federal Court today. Please advise whether you are accepting service on behalf of your clients."

To say the least of it, this is a rather strange letter.

First of all, it announces they have been instructed to apply

to the Federal Court for injunctive relief but at the same	time they have commenced proceedings without any prior warning
in circumstances where there had been a period of some 5 weeks during which correspondence between the interested parties had taken place, but no previous letter had been written by the solicitors for the applicant. The first letter stated the claim and sought to serve the application on the solicitors for the respondent at the same time. Thereafter, the respondents commenced proceedings in the Federal Court in the Western Australian District Registry. The first directions hearing in that matter is due to come before the Court in Perth on Wednesday 18 December.
A lot of the material placed before the Court is directed to the history of the matter, and so the issues arising between the parties. It seems fairly clear that the essential issues are the question of the trade mark, the existence of the copyright, whether there has been non-use of the trade mark, whether the registration of the trade mark should be rectified, and matters of that kind. In addition, the questions arise as to where does the convenience lie as far as the witnesses are concerned.
It appears that the action involves persons throughout the whole of Australia. If the matter comes to trial, it could well be that witnesses will be required to be called from various parts of Australia, particularly from the eastern coastline, from Brisbane to Melbourne. Myer purchased the
goods from a source in Melbourne, and in all probability issues will arise as to the right of the supplier to Myer to
supply goods displaying these marks.
The respondents carry on their business some 300 kilometres south of Perth, and even getting to Perth, I suppose, from their point of view, is quite a long distance compared to distances in Victoria. But here you have an Australia-wide series of incidents involving trade mark and copyright, which are federal matters in which state borders do not have much bearing. Although the question of the conveniences of witnesses is a matter to be considered, of itself it is not definitive in any way whatsoever.
It must be remembered that the applicant has the right to instigate proceedings in the registry of its choice. The present law has been stated quite clearly by a Full Court of this Court in National Mutual Holdinas Ptv Ltd v The Sentrv Cor~oration (1988) 19 FCR 155. At p.162 the Court said:

"The balance of convenience will generally be a relevant consideration, but not necessarily determinative of each case. A party commences a proceeding by filing an application in a particular registry of the Court. If that party or another party wishes to have the proceeding conducted or continued in another place he may apply to the Court for an order under s.48 or 0.10, r.l(Z)(f) or 0.30, r.6 as the case may be. There is no onus of proof in the strict sense to be discharged by the party seeking to conduct or continue the proceedings elsewhere. It should be noted that the Court may exercise its powers under 0.30, r.6 either on the application of a party or of its own motion. The Court must, however, be satisfied, after considering all relevant matters, that

there is sound reason to direct that the proceeding be
conducted or continued elsewhere. Its starting point is

that the proceeding has been commenced at a particular place. Why should it be changed? On the one hand, if the party who commenced the proceeding chose that place capriciously the Court would be justified in giving no weight to the choice of place. At the other end of the scale, a proceeding may have continued for some time at the place of commencement with many steps having been taken there, for example, filing of pleadings and affidavits, discovery and inspection. Due weight would be given by the Court to such matters before directing that the proceeding should continue at a different place.

The balance of convenience is important, but its weight must vary from case to case. 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."

This gives a very wide discretion to the Court as to what should be done in a case of this kind. There is no onus of proof in the normal sense of that phrase to be discharged by the party seeking the change. But at the same time, the Court must be satisfied that in all the circumstances it is appropriate that the matter should be transferred. One factor to be considered is whether the proceedings were in fact commenced capriciously at the place in which they were commenced.

The word capriciously is not defined in any way at all, but in my opinion this is a classic case of where a party has taken, or has sought to take, an advantage by jumping in first and commencing proceedings in a particular registry, knowing full well that proceedings are being contemplated to be commenced in another registry, and then trying to rely upon

the fact of having commenced those proceedings as a basis for saying, well, this is a case where because of convenience, it	should be heard in Melbourne, and that in those circumstances
the respondent should cross-claim in the proceedings in Melbourne, rather than the applicant being compelled to go to Perth for the purposes of having the two actions heard there.
In the circumstances of this case, any question of convenience which might arise from the existence of witnesses throughout Australia is to a large extent overcome by the fact that the Court has the power to sit anywhere in Australia, and of moving from place to place, if it is convenient, to hear witnesses. It is quite clear that this is a case where the two actions should either be heard togethez, or one after the other, by the same judge. But the argument of the convenience operates equally, both in relation to a hearing in Melbourne or a hearing in Perth. But from all the material before me, I am of the opinion that in a case of this kind, the nature of the claims being made and the history of the dealings between the parties, it is only fair that the proceedings in Melbourne, which have been instituted, should be transferred to Perth to allow the Court sitting in Perth to deal with all the issues between the parties, and to make necessary directions as to the future conduct of the two actions. Orders will be made accordingly.
The respondents have sought an order that the applicant should pay the respondents' costs of the motion. They relied upon the fact that the correspondence gave every opportunity
made. They rely also on the fact of the findings I have made to the applicant to consent to the appropriate orders to be
and the reasons I have given for transferring the matter to Western Australia. But in a case of this kind, which is at its very early stages, there remain disputes between the parties. It seems unfair that the applicant should be ordered to pay costs of the motion. The applicant is quite entitled to commence proceedings where it so desires, although it did so in this case in Melbourne and has failed to hold the position in Melbourne. Nevertheless, in my opinion, it is not appropriate that that of itself is sufficient reason for ordering that it pay the costs of the motion. Accordingly, the costs of the motion to date should be costs in the cause.
I hereby certify this and the preceding seven pages are a true copy of the Reasons for Judgment delivered ex tempore on 16 December 1991 by his Honour Mr Justice Northrop as revised from transcript.
Associate:  &k
Date:  5 February 1992
Counsel for the Applicant: Mr McGowan
Solicitors for the Applicant:  G.M. Chambers & Associates
Counsel for the Respondents: Mr McCormack Solicitors for the Respondents: Parker & Parker Date of Hearing: 16 December 1991