Poche Engineering Australia Pty Ltd v Hitachi Construction Machinery (Australia) Pty Ltd
[2010] FMCA 413
•10 June 2010
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| POCHE ENGINEERING AUSTRALIA PTY LTD v HITACHI CONSTRUCTION MACHINERY (AUSTRALIA) PTY LTD & ANOR | [2010] FMCA 413 |
| PRACTICE AND PROCEDURE – Service outside jurisdiction – where solicitors for first respondent not instructed to accept service for second respondent, a holding company of the first respondent registered in Japan – where response filed by solicitors for first respondent sought alternative orders in favour of both the first and second respondents – whether waiver of right to object to jurisdiction. |
| Copyright Act 1968 (Cth) Federal Court Rules |
National Commercial Bank v Wimborne (1979) 11 NSWLR 156
| Applicant: | POCHE ENGINEERING AUSTRALIA PTY LTD (ACN 131 089 784) |
| First Respondent: | HITACHI CONSTRUCTION MACHINERY (AUSTRALIA) PTY LTD (ACN 000 080 179) |
| Second Respondent: | HITACHI CONSTRUCTION MACHINERY CO LTD |
| File Number: | SYG 3077 of 2009 |
| Judgment of: | Raphael FM |
| Hearing date: | 10 June 2010 |
| Date of Last Submission: | 10 June 2010 |
| Delivered at: | Sydney |
| Delivered on: | 10 June 2010 |
REPRESENTATION
| Counsel for the Applicant: | Dr D Eliades |
| Solicitors for the Applicant: | Patrick Lim & Associates |
ORDERS
Service upon the Second Respondent be effected by posting or delivering by hand a copy of the application and all supporting documents, together with the Court’s judgment and orders dated 10 June 2010, to the solicitors for the First Respondent on or before 18 June 2010.
The Second Respondent have leave (if required) to file a conditional appearance, and to make application to have Order 1 set aside, such application to be filed within seven days of service being effected.
Costs reserved.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT SYDNEY |
SYG 3077 of 2009
| POCHE ENGINEERING AUSTRALIA PTY LTD (ACN 131 089 784) |
Applicant
And
| HITACHI CONSTRUCTION MACHINERY (AUSTRALIA) PTY LTD (ACN 000 080 179) |
First Respondent
| HITACHI CONSTRUCTION MACHINERY CO LTD |
Second Respondent
REASONS FOR JUDGMENT
On 13 April 2010, the applicant in these proceedings filed an Application in a Case (Notice of Motion), seeking leave to serve the second respondent. The second respondent is the holding company of the first respondent, and is a Japanese registered company. It is therefore necessary, subject to what is said below, to effect service upon the second respondent, outside the jurisdiction of Australia. The rules relating to service outside the jurisdiction, so far as they affect the Federal Magistrates Court of Australia, are the rules of the Federal Court, and in particular, Order 8, rule 3. That order has been made an order of this Court, by virtue of the provisions of the Federal Magistrates Court Rules, which includes in schedule 3, a list of the Rules of the Federal Court that are applied in this Court.
When the substantive matter first came before me on 11 March 2010, I made an order that the application should be made prior to 9 April 2010, which was done. On 29 April 2010, there was a directions hearing in this Court. The first respondent was represented, as was the applicant. There was a lot of discussion during the course of that directions hearing about service and the manner in which service could take place. Counsel who appeared on behalf of the first respondent, gave the Court some considerable assistance in relation to this matter.
It was accepted by me, and I believe by the applicant, that at that stage she was not acting on behalf of the second respondent; so that it could not be said that by her actions the second respondent had accepted the jurisdiction of the Court in respect of the substantive application. The matters that were discussed included the manner of service. At the end of the hearing I made it clear that I would consider the application for service outside the jurisdiction on an ex parte basis because the second respondent had not been served and was therefore not a party to the proceedings. That matter was set down for hearing today.
I also ordered that the applicant, through its counsel, provide me with some written submissions relating to the requirements of Order 8, and the manner in which it was being said that service should be effected. In the original Application in a Case it was indicated that the applicant sought to effect service by post as an alternative to effecting service through diplomatic channels. I informed Dr Eliades that, in addition to representations concerning that aspect, I would need some submissions as to the connection between the second respondent and the proceedings. This was done by the helpful supplementary written submissions made by Dr Eliades and submitted to the Court. Those documents will be placed with the papers.
Suffice to say that Dr Eliades explains, on behalf of his client, the connection between the claims being made, which are variously of threats under the Copyright Act 1968, and breaches of s.52 of the Trade Practices Act 1974, sufficiently to satisfy me that the second respondent is a proper party to these proceedings. In those written submissions, reliance was no longer being placed upon service by post. The applicant accepted that any service prior to the coming into force of the Hague Convention on 1 November 2010 must be through diplomatic channels.
This morning, the application proceeded. Dr Eliades appeared on behalf of the applicant by telephone. He pointed out to the Court certain matters which lead the Court to the view that there is no need for an order for service outside the jurisdiction, because by the response filed, purportedly on behalf of the first respondent, the second respondent appears to have acceded to the jurisdiction of the Court. I say this having regard to the following matters.
The Response was filed on 25 January 2010. It commences with a bolded heading “Further Orders Sought by the Respondent/s”. It then seeks an order that the application be dismissed, but it also seeks alternative orders. Alternative order 2 seeks a declaration:
“That the Applicant and/or Poche Engineering Services Pty Ltd (ABN 11 003 223 523) have used the First Respondent’s and/or the second respondent’s confidential information in producing drawings or parts for the products of the First Respondent and/or Second Respondent.”
In paragraph 3 of the alternative orders sought, there appears the following:
“A declaration that the drawings of parts for the products of the First Respondent and/or Second Respondent, produced by the Applicant and/or Poche Engineering Services Pty Ltd, contain confidential information of the First Respondent and/or Second Respondent.”
In paragraph 4 there appears:
“An order that the Applicant and Poche Engineering Services Pty Ltd deliver up to the First Respondent and Second Respondent, all drawings of parts for the products of the First Respondent and/or Second Respondent, produced by the Applicant and/or Poche Engineering Services Pty Ltd.”
Under the heading “Grounds of Opposition or Further Orders” there appears at paragraph 3, the following:
“The First Respondent says that all dealings by the First Respondent and the Second Respondent, regarding the subject matter of these proceedings have been with Poche Engineering Services Pty Limited.”
And at paragraph 4:
“All the letters from the Second Respondent which are alleged in the Application and affidavit in support, to constitute threats and/or misleading and deceptive conduct, were directed to Poche Engineering Services Pty Limited.”
And at paragraph 5 there appears:
“As to the Applicant’s claim that the First Respondent and/or Second Respondent, have made threats in respect to the infringement of copyright within the meaning of section 202 of the Copyright Act, the First Respondent says:
(a) neither the First nor Second Respondent has made any copyright infringement threats against the Applicant (or Poche Engineering Services Pty Limited).
(b) the First and Second Respondents’ concerns have been the threatened misuse by Poche Engineering Services of their confidential information, as detailed in the correspondence from the Second Respondent to Poche Engineering Services Pty Limited, and in particular as detailed in the draft Application and Statement of Claim, which the Second Respondent forward to Poche Engineering Services Pty Limited on 4 November 2009 (a copy of the Second Respondent’s 4 November 2009 letter being annexure “AP-10” to the 14 December 2009 affidavit of Adam Poche in these proceedings).”
[all emphasis added]
There are other references to the second respondent in paragraph 6(b), 6(c)(i), and 6(d).
It seems to me that by requesting, in a pleading in this Court, declarations which would cover the second respondent, the second respondent has constructively submitted to the jurisdiction of the Court, even though it is claimed as an order requested by the first respondent. Given the close connection between the first and second respondent, the fact that the first respondent was represented by solicitors and counsel, and the draft statement of claim, which is the subject matter of the threats claimed by the applicant, was drafted by those solicitors and names the second respondent as a plaintiff, it seems clear to me that the second respondent is acting in a manner consistent with a submission to this jurisdiction. To my mind the actions of the second respondent amount to a waiver of the right to object to jurisdiction as discussed by Holland J in National Commercial Bank v Wimborne (1979) 11 NSWLR 156. At [176] his Honour explains the concept of waiver:
“To constitute waiver the facts must show a voluntary act unequivocally evincing an intention to abandon or not to assert a right and such intention may be express or its existence imputed from conduct. Electing to act on one of two inconsistent rights or choosing to act in a way clearly inconsistent with the right in question is a basis in some, if not all, cases for imputing the intention even if it was not subjectively in the mind of the party: Craine v Colonial Mutual Fire Insurance Co Ltd (1920) 28 CLR 305 at 326; Sargent v ASL Developments Ltd (1974) 131 CLR 634 at 645-646, 656-658. The plaintiffs here have not suggested or attempted to rely on ignorance of the right to object.
In relation to waiver of a right to object to jurisdiction, the test has been put in a number of ways in the cases. In Rein v Stein (1982) 66 LT 469, after an order granting leave to serve a writ out of the jurisdiction had been made, the defendant applied for leave to inspect the documents annexed to the affidavit on which the leave had been granted and then entered a conditional appearance, after which he successfully resisted an application to strike out his appearance and then twice obtained extensions of time for filing a defence on the specific ground that he wished to file a summons objecting to jurisdiction, which he did. It was held that he had not waived his objection by either seeking leave to inspect or applying for the extensions of time. Cave J said (at 471):
“… It seems to me that, in order to establish a waiver, you must show that the party alleged to have waived his objection has taken some step which is only necessary or only useful if the objection has been actually waived, or if the objections has never been entertained at all. If, for instance, after leave to issue a writ an ordinary appearance is entered, that is a matter which indicates that the defendant either never has entertained the notion, or, if he did entertain it, he abandoned it. Such a step would be unnecessary and useless if the intention of insisting on his objection still held good.”
In these circumstances, the Court does not find it necessary to make an order for service outside the jurisdiction. The Court can act in accordance with it own rules. It is satisfied that the second respondent is aware of the proceedings. In those circumstances it might be said that service is not strictly necessary. I propose to utilise Part 6, Div 6-1, rule 6.04 of the Federal Magistrates Court Rules:
“6.04 Court’s discretion in relation to service
Nothing in this Part affects the power of the Court:
(a) to authorise service of a document in a way that is not provided for in this Part; or
(b) to find that a document has been served; or
(c) to find that a document has been served on a particular day.”
However, because the Court has come to the conclusion which it has in the absence of the second respondent, it is only fair that, should the second respondent wish to, it have an opportunity to address the claims of the applicant and the findings of the Court. In order to enable this to happen, the Court will make the following orders. Service upon the second respondent be effected by posting or delivering by hand a copy of the application and all supporting documents, together with the Court’s judgment dated 10 June 2010, to the solicitors for the first respondent on or before 17 June 2010. The second respondent have leave (if required) to file a conditional appearance, and to make application to have order 1 set aside, such application to be filed within seven days of service being effected. Costs reserved.
I certify that the preceding fourteen (14) paragraphs are a true copy of the reasons for judgment of Raphael FM
Associate:
Date: 11 June 2010
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