O'Connor and Cowley Concepts v Moller Og Company - [2009] FMCA 318

FEDERAL MAGISTRATES COURT OF AUSTRALIA

O'CONNOR & COWLEY CONCEPTS v MOLLER OG COMPANY & ORS

[2009] FMCA 318

PRACTICE & PROCEDURE – Service of documents in foreign country – need for translation of voluminous documents into foreign language where respondent is corporation carrying on business in English speaking countries – whether service by post appropriate.

Federal Court Rules, O.8 r.2, O.8 r.3
Federal Magistrates Court Rules, Schedule 1

Bell Group Limited and Others v Westpac Banking Corporation (1996) 20 ACSR 760
Practice Note 13 issued by the Chief Justice of the Federal Court of Australia on 4 September 2008
Convention between the United Kingdom and Denmark on Legal Proceedings in the Civil and Commercial Matters

Applicant:

O'CONNOR & COWLEY CONCEPTS

First Respondent:

MOLLER OG COMPANY

Second Respondent:

PHILIP COWLEY AND ELIZABETH O'CONNOR-COWLEY

Third Respondent:

ELIZABETH O'CONNOR-COWLEY

File Number:

BRG 830 of 2008

Judgment of:

Wilson FM

Hearing date:

26 March 2009

Date of Last Submission:

26 March 2009

Delivered at:

Brisbane

Delivered on:

26 March 2009

REPRESENTATION

Counsel for the Applicant:

Mr Eliades

Solicitors for the Applicant:

Xavier Kelly & Co

Counsel for the First Respondent:

N/A

Solicitors for the First Respondent:

N/A

Counsel for the Second Respondent:

N/A

Solicitors for the Second Respondent:

N/A

Counsel for the Third Respondent:

N/A

Solicitors for the Third Respondent:

N/A

ORDERS

That the applicant have leave to serve the originating application, the affidavit of the second respondent, affidavit of Xavier Kelly filed 24 March 2009, further affidavit of Xavier Kelly filed by leave on 26 March 2009, the affidavit of Rachel Cavallucci filed 24 March 2009, together with a copy of this order on the first respondent in Denmark by:
(a)Sending a copy of the sealed documents by ordinary post to the address stated in subparagraph b.; and
(b)By delivering a copy of the sealed documents to the first respondent at Moller og Company A/S Jyllandsgade 30, DK-6400 Sonderborg, Denmark.
That the applicant have liberty to relist this matter once service has been effected in accordance with these orders.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA AT
BRISBANE

BRG 830 of 2008

O'CONNOR & COWLEY CONCEPTS

Applicant

And

MOLLER OG COMPANY

First Respondent

PHILIP COWLEY

Second Respondent

ELIZABETH O'CONNOR-COWLEY

Third Respondent

REASONS FOR JUDGMENT

The applicant is the registered owner of a trademark pertaining to, inter alia, children's wear. It seeks relief against the first respondent, a corporation incorporated and having its head office in Denmark, which it alleges has acted in Australia not only in breach of the trademark but also in contravention of the Trade Practices Act 1974 (Cth). It is also argued that the first respondent has engaged in the tort of passing off.
The applicant seeks orders pertaining to service on the first respondent of its initiating application and supporting affidavit material. In that regard O.8 r.3 Federal Court Rules is relevant. That rule specifically applies in this Court; see Sch 1 to the Federal Magistrates Court Rules.
Order 8 r.3 requires this Court to be satisfied of three things before giving leave to serve documents on a person in a foreign country. First, it is necessary to establish that the Court has jurisdiction in the proceeding. This Court has jurisdiction to determine the applicant’s claims for damages for breach of the Trade Practices Act and in its associated jurisdiction has jurisdiction to determine claims arising from the same facts which would, in my view, extend to the proceedings for the alleged passing off of the applicant's products. It would also extend to the Trade Mark proceedings.
Secondly, it is necessary to establish that the proceeding is of a kind mentioned in O.8 r.2 of the Federal Court Rules. The present proceedings are plainly within the ambit of that rule. Counsel for the applicant has helpfully identified at least four of the items in the schedule forming part of r2 which these proceedings arguably satisfy.
Thirdly, it is necessary for the applicant to demonstrate that it has a prima facie case for the relief claimed by it in the proceedings. In determining whether a prima facie case has been established there have been a number of earlier decisions of the Federal Court of Australia as to what that phrase means in this context, bearing in mind that the application is made at a very early stage in the proceedings and obviously without the benefit of all of the evidence that will ultimately be put before the Court should the matter proceed to a final hearing.
The evidence currently before the Court consists primarily of affidavits of the second respondent, Mr Cowley, and a customer of the applicant, Ms Cavaluci. In my view, the evidence contained in those two affidavits is sufficient to establish a prima facie case as that term is used in O.8 r.3.
Order 8 r.3(2) provides that the Court may give leave to the applicant to serve the originating documents on the first respondent in Denmark "in accordance with a convention or the law of the foreign country on such terms and conditions as it considers appropriate".
In the present case the solicitor for the applicant has carefully followed the procedure discussed in Practice Note 13 issued by the Chief Justice of the Federal Court of Australia on 4 September 2008. It has been established in this case that the relevant convention or agreement is the Convention between the United Kingdom and Denmark on Legal Proceedings in the Civil and Commercial Matters done at London on 29 November 1932. A copy of the advice provided by the Administrative Law and Civil Procedure Branch of the Civil Justice Division of the Attorney-General's Department for the service of documents in Denmark is exhibited to Mr Kelly's affidavit filed on 24 March 2009.
Reference is specifically made to articles 2 and 3 of the 1932 convention. In the Department's statement of advice reference is made under both of those articles to the need to have documents translated into the Danish language.
Counsel for the applicant submitted that service was also permissible under article 5 of the Convention, which provides:
Nothing in this Convention shall render illegal or inadmissible the service in the territory of one High Contracting Party of documents drawn up in the territory of the other High Contracting Party by any one of the following methods of service in any case where such method is recognised as valid by the law of the country from which the documents emanate:
(a) ..
(b) through postal channels.
It seems to me that service of documents in a manner contemplated by article 5 is not strictly service in accordance with the Convention, but rather it provides that if service is effected in the manner there set out nothing in the Convention would render such method of service illegal or inadmissible. I am not satisfied that service by post is service in accordance with the Convention.
Counsel for the applicant submitted that there was power in the Court, in the exercise of its discretion, to permit such means of service on the first respondent, that is service by post. Reference was made to the decision of Nicholson J in Bell Group Limited and Others v Westpac Banking Corporation (1996) 20 ACSR 760.
In his Honour's supplemental reasons at pages 15 and 16 his Honour said:
Conventions entered into by the Australian Commonwealth with respect to service of documents abroad do not have legal effect other than pursuant to Federal Court Rule Order 8. The adoption of those conventions is therefore subject to Federal Court Rules Order 8 Rule 4 which provides that the rules of the Federal Court generally apply to service outside Australia under Federal Court Rule 8 Order 8 as they apply to service inside Australia. Subject to that order and any convention the rules of the Federal Court which are thus made generally applicable to service outside Australia include rules as to the means of personal service Federal Court Rule Order 7 Rule 2 and the power to dispense with compliance with any of the requirements of the rules Federal Court Rule Order 1 Rule 8. The adoption of conventions is thus through Order 8 Rule 4 subject to the power to dispense with compliance conferred by Federal Court Rule Order 1 Rule 8.
I respectfully adopt his Honour's observations. In this case it seems to me that service on the first respondent should be effected by two means. They are service by post and by personal service at the registered office of the first respondent in Denmark which can be performed via an agent rather than having to engage in the transmission of documents through diplomatic channels.
I reach that conclusion for a number of reasons. The first respondent is a corporation that trades in a number of countries. Investigations carried out by Mr Kelly demonstrate that the respondent corporation conducts business in English as well as in Danish. Reference is made to its internet website which is available in the English language as well as in the Danish language.
The first respondent has in the past engaged Australian patent attorneys to act for it in connection with the applicant's claim. On 9 September 2008 the patent and trademark attorneys, then acting for the applicant, wrote to the first respondent asserting its rights under the registered Australian trademark and in respect of other matters. That provoked a response from Freehills, patent and trademark attorneys in Sydney, who by letter dated 22 September 2008 responded to the applicant’s claims. That firm when provided with a courtesy copy of the initiating proceedings in this Court indicated that it did not have instructions to act on behalf of the first respondent in the proceedings.
Further, it is apparent from the affidavit of Ms Cavaluci that the first respondent has put in place an agent in Australia, Prolific Entities Pty Ltd, which has held itself out as the exclusive importer and distributor of the first respondent's products. In appointing such an agent the first respondent has presumably been able to correspond with it in the English language and may or may not have liaised with it about peculiarities and requirements of the Australian legal system.
Thirdly, the first respondent has applied for Australian protection of its Danish trademark registration for the words "Mini Mo". That application is opposed by the second and third respondents. Counsel for the applicant has informed the Court that although the first respondent's application for such protection was made through the International Bureau an address for service in Australia is required to be provided.
For the reasons that I have indicated I am satisfied that the first respondent is well able to deal with documents provided to it in English, and having regard to its commercial activities in Australia as well as in other places is well able to manage documents served upon it in a way contemplated by Australian law in particular the methods of service ordinarily provided for by the Federal Court Rules.
If the first respondent were an Australian corporation service upon it by post would be sufficient. Out of an abundance of caution and having no evidence as to the reliability of the Danish postal system I consider it prudent that the applicant also effect service on the first respondent by delivering a copy of the documents to its office which I am satisfied is established at the address provided in para.10A of Mr Kelly's affidavit.
As I have said, such service can be effected by an agent in Denmark rather than enlisting the assistance of the diplomatic officials of each country. Putting to one side the question of translation, it seems to me that that second method of service also conforms with article 4 of the Convention to which I have already referred.
I will give the applicant liberty to re-list the matter when service has been effected in accordance with these orders.

I certify that the preceding twenty-two (22) paragraphs are a true copy of the reasons for judgment of Wilson FM

Associate: Lynnette Chin

Date: 9 April 2009