S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd(No. 5)

[2007] FCA 1036

FEDERAL COURT OF AUSTRALIA

S.P.I. Spirits (Cyprus) Ltd v Diageo Australia Ltd (No. 5) [2007] FCA 1036

Trade Marks Act 1995 (Cth) ss 44, 88, 117, 118, 120
Freedom of Information Act 1983 (Cth)
Federal Court Rules O 10

Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199 cited
Australian Broadcasting Corporation v O’Neill (2006) 229 ALR 457 applied
Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618 applied
Concrete Constructions Pty Ltd v Plumbers and Gasfitters Employees’ Union (1987) 15 FCR 31 applied
Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 79 ALR 534 applied
Mark Foys Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 cited
OD Transport Pty Ltd v Western Australian Government Railways Commission (1986) 13 FCR 270 applied

Springdale Comfort Pty Ltd v Electrical Trades Union of Workers  (1986) ATPR 40-694 applied

S.P.I. SPIRITS (CYPRUS) LIMITED AND SPIRITS INTERNATIONAL N.V. v DIAGEO AUSTRALIA LIMITED AND FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT; FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT AND STATE FEDERAL UNITARY ENTERPRISE EXTERNAL ECONOMIC UNION SOJUZPLODOIMPORT (FGUP) (VO) v SPIRITS INTERNATIONAL N.V. AND DIAGEO AUSTRALIA LIMITED
NSD 1816 OF 2004

EDMONDS J
11 JULY 2007
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1816 OF 2004

BETWEEN:

AND:

S.P.I. SPIRITS (CYPRUS) LIMITED
First Applicant

SPIRITS INTERNATIONAL N.V.
Second Applicant

DIAGEO AUSTRALIA LIMITED
First Respondent

FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT
Second Respondent

AND BETWEEN:

AND

FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT
First Cross-Claimant

STATE FEDERAL UNITARY ENTERPRISE EXTERNAL ECONOMIC UNION SOJUZPLODOIMPORT (FGUP) (VO)
Second Cross-Claimant

SPIRITS INTERNATIONAL N.V.
First Cross-Respondent

DIAGEO AUSTRALIA LIMITED
Second Cross-Respondent

JUDGE:	EDMONDS J
DATE OF ORDER:	11 JULY 2007
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1.The motion be dismissed.

2.The cross-claimants on the first cross-claim pay the first cross-respondent’s costs of the motion.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 1816 OF 2004

BETWEEN:

AND:

S.P.I. SPIRITS (CYPRUS) LIMITED
First Applicant

SPIRITS INTERNATIONAL N.V.
Second Applicant

DIAGEO AUSTRALIA LIMITED
First Respondent

FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT
Second Respondent

AND BETWEEN:

AND:

FEDERAL TREASURY ENTERPRISE (FKP) SOJUZPLODOIMPORT
First Cross-Claimant

STATE FEDERAL UNITARY ENTERPRISE EXTERNAL ECONOMIC UNION SOJUZPLODOIMPORT (FGUP) (VO)
Second Cross-Claimant

SPIRITS INTERNATIONAL N.V.
First Cross-Respondent

DIAGEO AUSTRALIA LIMITED
Second Cross-Respondent

JUDGE:	EDMONDS J
DATE:	11 JULY 2007
PLACE:	SYDNEY

REASONS FOR JUDGMENT

INTRODUCTION

1. The cross-claimants on the first cross-claim (‘FKP’ and ‘FGUP’) apply by notice of motion dated 22 December 2006 for certain interlocutory orders against the first cross-respondent (‘Spirits’).  The motion is supported by an affidavit of Jacqueline Ruth O’Brien, solicitor for FKP and FGUP, sworn 22 December 2006 and filed on that date (Ex. 1).  No affidavits have been filed by Spirits in answer to the motion.

2. The Court was provided with draft short minutes of order (incorporating Schedules 1 and 2) reflecting the form of orders sought by FKP and FGUP on the motion as well as certain undertakings which FKP and FGUP are prepared to give in relation to the proposed orders. 

   FKP AND FGUP’S SUBMISSIONS ON THE MOTION

   Scope and Purpose of the Motion

3. The proposed orders deal with a number of pending applications filed by Spirits or its related entities seeking the registration of trade marks which include or comprise one or more of the words STOLI, STOLICHNAYA and MOSKOVSKAYA.  These marks are said to be substantially identical with, or deceptively similar to, the registered trade marks the subject of FKP and FGUP’s cross-claim in these proceedings, although they are not themselves the subject of the cross-claim as presently constituted.

4. In general terms, FKP and FGUP say that the orders are intended to protect the interests of FKP and FGUP in respect of the claims by them made in the cross-claim, as well as the interests of any third parties with whom Spirits may deal in relation to the pending trade mark applications.  There is also an underlying purpose of case management.

5. According to FKP and FGUP the proposed orders represent an extension of the regime put in place pursuant to orders made and undertakings given by consent on 8 September 2005.  Those orders and undertakings required the parties to apply pursuant to the Trade Marks Act 1995 (Cth) (‘the Act’) to have FKP and FGUP’s claims recorded in the Register of Trade Marks in respect of the registered trade marks the subject of the cross-claim, and for certain third parties to be notified of those claims. The orders now proposed would make similar provision in relation to the pending trade mark applications, and any further such applications, as well as dealing with certain ancillary matters.

   The Proposed Orders

6. The proposed orders identify, in Schedule 2 to the draft short minutes of order, some 16 pending applications for the registration of trade marks which include or comprise one or more of the words STOLI, STOLICHNAYA and MOSKOVSKAYA.  All but three of these applications are in the name of Spirits.  The remaining three are in the name of Spirits’ related entity, Spirits Product International Intellectual Property BV, and have been assigned to Spirits; at the time of the cross-claimants’ submissions on this motion, the Register had yet to be updated to reflect that assignment.

7. In substance, the proposed orders would impose the following obligations on Spirits in relation to the pending applications identified in Schedule 2 (‘the Existing Applications’) as well as any further applications by it for the registration of trade marks which include or comprise one or more of the words STOLI, STOLICHNAYA and MOSKOVSKAYA (‘Further Applications’).

   Recordal of Claims Pursuant to s 117 of the Act

8. Proposed orders 1 and 2 would require Spirits to apply, together with FKP and FGUP, to the Registrar of Trade Marks pursuant to s 117 of the Act for a record to be kept of the particulars of FKP and FGUP’s claim set out in Schedule 2 to the proposed orders in respect of the Existing and Further Applications.

9. These orders effectively mirror orders 1 and 2 made by consent on 8 September 2005, save that they apply to the Existing and Further Applications rather than the registered trade marks which are the subject of the cross-claim.

10. Section 117 provides that a person who has applied for the registration of a trade mark (in this case, Spirits) and another person who claims to have an interest in, or a right in respect of, the trade mark (in this case, FKP and FGUP) may apply together to the Registrar for a record to be kept of the latter person’s claim. If such an application is made in accordance with s 117, then the Registrar must record the particulars of the claim in such manner as the Registrar thinks fit: s 118 of the Act.

11. In the cross-claim, FKP and FGUP assert rights in relation to a number of registered trade marks which include or comprise one or more of the words STOLI, STOLICHNAYA and MOSKOVSKAYA, and seek relief to give effect to those rights. The Existing Applications all relate to trade marks which include or comprise one or more of the same words, as would any Further Applications, and are in respect of the same or similar goods. In these circumstances, FKP and FGUP say that the Existing and Further Applications are, or would be, derivative of the prior registrations which are the subject of the cross-claim. According to FKP and FGUP the use of a trade mark the subject of an Existing or Further Application would infringe one or more of the prior registrations on the basis that the respective trade marks are substantially identical or deceptively similar: see s 120 of the Act; the words STOLI, STOLICHNAYA and MOSKOVSKAYA are plainly central, distinctive elements of each mark; for those marks which incorporate label devices, the device elements are also similar in many cases. Moreover, the use of additional words or elements (such as a person’s name) in conjunction with a registered trade mark does not avoid infringement of the trade mark, provided that it is being used for a trade mark purpose: see Mark Foys Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 at 205. According to FKP and FGUP, this would necessarily be so in the case of the trade marks the subject of the Existing and Further Applications.

12. Put another way, the determination of the claims made by FKP and FGUP in the cross-claim will have a direct bearing on the validity or acceptability for registration of the Existing and Further Applications, given the similarity of the marks and the fact that the latter fall later in the ‘queue’.  The claims articulated in respect of the former therefore disclose an interest in respect of the latter.

13. FKP and FGUP submit that the proposed orders are not in the nature of substantive interlocutory relief on the cross-claim (such as rectification of the Register); the orders are procedural rather than substantive.  In these circumstances, there is no cause for any rigid application of the principles relating to the grant of interlocutory injunctions discussed in Australian Broadcasting Corporation v O’Neill (2006) 229 ALR 457 at [19], [65] – [72] and Beecham Group Ltd v Bristol Laboratories Pty Ltd (1968) 118 CLR 618. In particular, there is no need for FKP and FGUP to demonstrate a prima facie case or a serious question to be tried on the cross-claim as a condition of the grant of the relief set out in the draft short minutes of order.  Proposed orders 1 and 2 do no more than facilitate the recordal by the Registrar of particulars of claims which are in fact made by FKP and FGUP, and which, for the reasons given above, will have a direct bearing on the fate of the Existing and Further Applications.

14. Moreover, FKP and FGUP submit that the balance of convenience favours the making of proposed orders 1 and 2.  The proposed orders will guard against third parties acquiring any rights or interests in relation to the trade marks while the proceedings are pending without notice of FKP’s and FGUP’s claim.  This will safeguard FKP and FGUP against interference from third party rights (such as those of a purported bona fide purchaser or licensee of trade marks) and will in turn protect the third parties’ interests by ensuring that they are put on notice of the present dispute.  In this respect, the orders are consistent with what might be expected to be good commercial practice on the part of Spirits.

15. FKP and FGUP also note that their cross-claim is brought pursuant to s 88 of the Act, pursuant to which the Court has a discretion to order that the Register be rectified. Indeed, Spirits explicitly raises the issue of discretion in its defence to the cross-claim. The rights or interests of any third parties in relation to similar trade marks the subject of pending applications are matters that might be taken into account by the Court in exercising this discretion.

16. In the circumstances, FKP and FGUP submit that there is no identifiable prejudice or harm to Spirits, or any other person, that would result from the making of the proposed orders.

    Notification of Third Parties

17. Proposed order 3 would in essence require Spirits to provide prior written notice of the claims made by FKP and FGUP in the cross-claim to any third party to whom Spirits agrees to assign, or grant some other form of right (such as a licence) in respect of, a trade mark the subject of an Existing or Further Application.  FKP and FGUP will provide the usual undertaking as to damages in support of the application for this order.

18. A similar regime is reflected in the undertakings given by FKP, FGUP and Spirits to the Court on 8 September 2005 providing for the notification of third parties involved in dealings in respect of the trade marks the subject of the cross-claim.

19. Ms O’Brien has identified a number of third parties with whom Spirits has dealt, or appears to have dealt, in her affidavit.  An order that these or any other relevant third parties be specifically notified of the claims made by FKP and FGUP can be justified on a similar basis to that described above in relation to proposed orders 1 and 2.  The order will protect the interests of FKP and FGUP, as well as those of the third parties, by ensuring that the latter are made aware of the claims made by FKP and FGUP.  As submitted above, this is consistent with good commercial practice.

    Provision of Copy Documents

20. Proposed order 4 would require Spirits to provide to FKP and FGUP’s solicitors copies of correspondence with the Australian Trade Marks Office and other relevant documentation relating to the Existing and Further Applications.  FKP and FGUP would undertake to pay Spirits’ reasonable photocopying costs.

21. Access to such correspondence and documentation is necessary to enable FKP and FGUP to monitor the progress of the Existing and Further Applications which, for the reasons given above, are derivative of the registrations the subject of the cross-claim.  To date, Spirits has refused to make such correspondence and documentation available to FKP and FGUP.  Although this material could be, and to date has been, obtained by FKP and FGUP pursuant to freedom of information requests to the Registrar, this is a drawn out and costly process.  The process is onerous for the Registrar, as well as for the parties, particularly given the number of trade mark applications involved.  It would be more efficient and cost-effective for Spirits to provide the material directly as proposed by order 4.  FKP and FGUP submit that this order is appropriate from a case management perspective.

    Conditions on Consent

22. Proposed orders 5 and 6 would require Spirits to procure, as a condition of any consent given by it to the registration of any similar trade marks in the name of another person, the compliance by that person with the requirements of the orders dealt with above, and to provide prior notice to FKP and FGUP of such consent.

23. These orders are intended to deal with cases in which Spirits elects to consent to the registration of similar trade marks in the name of another party (whether this be one of its related entities or a third party with whom it has dealings) instead of proceeding with an application for registration itself. A letter of consent by a registered owner in respect of a conflicting trade mark application may constitute ‘circumstances’ under s 44(3)(b) of the Act which help to justify acceptance of the application. Indeed, this is what occurred with the three Existing Applications that were filed in the name of Spirits’ related entity, Spirits Product International Intellectual Property BV.

    Costs

24. Spirits should pay FKP and FGUP’s costs of and associated with the motion.

    SPIRITS’ SUBMISSIONS OPPOSING THE MOTION

25. Spirits submits that the orders sought by FKP and FGUP in their notice of motion are plainly in the nature of substantive interlocutory relief and that the ordinary principles relating to the grant of interlocutory relief must be applied in considering this application.

26. Spirits submits that the proposed orders are not procedural in nature; they do not relate to the conduct of these proceedings (e.g., as contemplated by O 10 of the Federal Court Rules). The principal orders are, in form and in substance, classic mandatory interlocutory injunctions; they are substantive orders requiring Spirits to execute and lodge documents pursuant to a regime of voluntary recordal of rights under Part 11 of the Act in relation to several pending Australian trade mark applications filed by Spirits (the Existing Applications and Further Applications).

27. According to Spirits, it is essential, when considering any application for interlocutory injunctive relief, to examine the nature of the rights asserted, the probability of ultimate success in enforcing them and the practical consequences that would flow from the grant of the interlocutory relief: : Australian Broadcasting Corp v O’Neill at [71] – [72].

28. Spirits rhetorically asks: What is the right asserted here? Presumably it is not a right to force Spirits, at the end of a final hearing on the application of Part 11 of the Act, to submit involuntarily to the recordal of the alleged ‘interest’. Nor is it a right asserted in the present proceedings, as the Existing Applications and the Further Applications are not the subject-matter of the cross-claim and FKP and FGUP presently claim no relief with respect to those applications. In truth, FKP and FGUP do not identify – perhaps unsurprisingly, given that they are of the view (wrongly in Spirits’ submission) that their present application is merely for ‘case management purposes’ – this essential first ingredient of an application for mandatory interlocutory relief.

29. Given their terms, the orders sought here by FKP and FGUP cannot be regarded as being purely procedural in nature or justified simply by principles of case management.

30. Accordingly, Spirits submits that the ordinary principles relevant to the grant of interlocutory relief must apply to the grant of relief presently sought by FKP and FGUP.  These principles are well-settled.  To succeed in their application, FKP and FGUP bear the onus of establishing to the satisfaction of the Court that:

    (a)The applicant for relief has a prima facie case in relation to its application for final relief; and

    (b)the balance of convenience lies in favour of granting the interlocutory relief that is sought; and

    (c)damages would not be an adequate remedy.

    See Australian Broadcasting Corp v O’Neill.

31. Spirits submits that it is now well-established that an applicant for interlocutory relief must, as a threshold issue, prove that it has a ‘prima facie case’ for final relief.  The test is sometimes expressed as, in the sense that if the evidence remains as it is, there is a probability that at the trial of the action the applicant will be held to be entitled to the final relief claimed.  Australian Broadcasting Corp v O’Neill, restoring (if restoration were needed) Beecham Group v Bristol Laboratories Pty Ltd.

32. For there to be a prima facie case that the Court can examine, and examine in accordance with the High Court’s instructions, ‘there must at least be some evidence’ going to each element of the relevant cause of action: Springdale Comfort Pty Ltd v Electrical Trades Union of Workers (1986) ATPR 40-694 at 47,623; OD Transport Pty Ltd v Western Australian Government Railways Commission (1986) 13 FCR 270 at 279; Concrete Constructions Pty Ltd v Plumbers and Gasfitters Employees’ Union (1987) 15 FCR 31 at 51; Kevlacat Pty Ltd v Trailcraft Marine Pty Ltd (1987) 79 ALR 534 at 536.

33. FKP and FGUP have not filed any evidence to support the existence of any of the causes of action pleaded in the cross-claim, let alone evidence that establishes a ‘reasonably arguable’ case, and let alone any evidence that establishes matters not alleged in the cross-claim (such as the matters asserted – if admitted at all, they can be admitted as no more than assertion – Ex. 1, paras 30 – 33).

34. In the absence of such evidence, Spirits submits that FKP and FGUP’s application for relief must fail.

35. But even were FKP and FGUP to file evidence capable of establishing a prima facie case in relation to their claims for final relief, Spirits submits that their application in relation to the Existing Applications and the Further Applications would nevertheless fail.  An interlocutory injunction is granted to preserve the status quo pending the determination at trial of the rights of the parties to final relief: Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199. The interlocutory relief sought is in respect of trade mark applications which are not the subject of the cross-claim or any present application for relief by FKP and FGUP. Spirits submits that there is insufficient connection between the orders sought and the preservation of the status quo in relation to the subject matter of the cross-claim to support the present application, even if the Court had before it evidence of a prima facie case.

1. But even assuming to the contrary against Spirits, Spirits submits that there would nevertheless be insufficient grounds for the making of the proposed orders.  The orders sought are not proper orders with respect to the conduct of these proceedings, but relate to trade mark applications filed by Spirits in good faith and in the ordinary course of its business.  Spirits submits that they are not orders that the Court will make lightly, and in the absence of compelling reasons, the Court should not, in Spirits’ submission, intervene to impose conditions and obligations upon Spirits in the ordinary conduct of its business with respect to its trade marks, especially trade marks that not presently in issue in the proceedings.

2. For the reasons outlined below, Spirits submits that even if the present application was to be dealt with as falling outside the class of an ordinary application for interlocutory relief, there is insufficient basis for the making of the proposed orders, including on ‘case management grounds’.

   Recordal of Claims Pursuant to s 117 of the Act

3. Spirits notes that on 8 September 2005, in the context of resolving various issues on a notice of motion, Spirits consented to orders requiring it, FKP and FGUP to jointly apply to the Registrar of Trade Marks for the voluntary recordal of details of FKP and FGUP’s claims in the cross-claim with respect to the trade mark registrations which are the subject of the cross-claim.  It further notes that the parties complied with this order; details of FKP and FGUP’s claims in the cross-claim are now recorded on the Register with respect to the trade mark registrations which are the subject of these proceedings.

4. Spirits submits that it is clear from the terms of s 117 that the procedure for the recordal of claimed interests and rights is intended to be both voluntary and consensual in nature. It observes that there is no procedure under the Act which would permit a third party to apply for the recordal of details of a claim against a trade mark application without the consent of the trade mark applicant. Further, the Act does not empower the Registrar of Trade Marks to record details of any claim without the consent of the relevant trade mark applicant.

5. It says it is also clear from the terms of s 117 that the section is intended to provide for the recordal of claims in respect of a particular application where a third party claims to have an interest in, or a right in respect of, that particular trade mark. In the present case, FKP and FGUP seek an order that would involve the recordal of details of claims not in relation to the Existing and Further Applications themselves (which are not the subject of these proceedings and in relation to which no claim for relief has been made), but of claims in relation to different trade mark registrations, being the trade marks which are the subject of the cross-claim.

6. Spirits is not aware of any previous decision in which a trade mark applicant or owner has been ordered, on the contested application of a party to pending litigation, to record details of claims made in the proceeding on the Trade Marks Register.  In the present case, FKP and FGUP seek the recordal of their claims on trade mark applications which are not the subject of these proceedings and in respect of which FKP and FGUP have not sought any relief.  Further, FKP and FGUP have made no effort to demonstrate even a prima facie case in relation to the claims made in the cross-claim. Spirits submits that the application for proposed orders 1 and 2 should be refused.

   Notification of Third Parties

7. In para 3 of the proposed orders, FKP and FGUP seek an order requiring Spirits to provide notice of FKP and FGUP’s claims in the cross-claim to particular third parties with whom Spirits might enter into particular commercial dealings with respect to the Existing and Further Applications.

8. On 8 September 2005, in the context of resolving various issues on a notice of motion, Spirits gave the following undertaking to the Court:

   ‘… the Applicants [including Spirits] undertake to the Court that they will, until determination of these proceedings or further order, provide written notice of the Cross-claimants’ [FKP’s and FGUP’s] claims in these proceedings:

   (a) to any person who is not a party to the proceedings and to whom the First Cross-Respondent [Spirits] assigns the Trade Marks, prior to the First Cross-respondent [Spirits] entering into an agreement with that person to assign the Trade Marks;

   (b)to any person who is not a party to the proceedings and with whom the First Cross-respondent [Spirits] enters into any agreement relating to the title to or use of the Trade Marks in Australia or the distribution of products bearing the Trade Marks in Australia, under which that third party might obtain an interest in the Trade Marks, prior to the First Cross-respondent [Spirits] entering into any such agreement.’

   The term ‘Trade Marks’ was defined to mean the trade mark registrations in respect of which FKP and FGUP seek relief on the cross-claim, including Spirits’ registrations for the word marks STOLICHNAYA and STOLI and the MOSKOVSKAYA device mark.

9. In para 3 of the proposed orders, FKP and FGUP seek corresponding orders with respect to Spirits’ future dealings with the Existing Applications and any Further Applications, which are trade marks including or comprising one or more of the words STOLI, STOLICHNAYA and MOSKOVSKAYA.

10. Pending the determination of these proceedings, Spirits submits that it should be entitled to conduct its business and to protect and exploit its trade marks in the ordinary course, unless FKP and FGUP satisfy the Court on application of the relevant principles, that interlocutory relief be granted.  This is particularly the case where the trade marks in question have not been made the subject of the proceedings or any claim for relief.

11. Although Spirits was prepared to provide the undertaking outlined in [43] of these reasons in order to resolve an earlier notice of motion, by doing so it made no concession that the Court would have made orders in similar terms.  Spirits also notes that the undertaking which it provided (and by which it continues to be bound) was in respect of the trade marks which are the subject of the cross-claim.  The present application is in respect of trade mark applications which are not the subject of the cross-claim.

12. Spirits submits that the Court should refuse to make an order in terms of para 3 of the proposed orders.

    Provision of Copy Documents

13. Spirits submits that the order sought in para 4 of FKP and FGUP’s notice of motion is onerous and overly burdensome upon Spirits and should not be made.

14. Third parties are able to obtain access to documents which are held on the files of the Trade Marks Office by issuing a request under the Freedom of Information Act 1983 (Cth).  Access is provided subject to the usual freedom of information (‘FOI’) procedures.

15. FKP and FGUP acknowledge in para 25 of their submissions that they are presently able to obtain access to documentation held by the Trade Marks Office in relation to the Existing Applications and Further Applications through FOI procedures.  In para 25 of the submissions, FKP and FGUP indicate that the purpose of their seeking access to this documentation is to ‘monitor the progress of the Existing and Further Applications’.

16. Any member of the public is able to ‘monitor the progress’ of trade mark applications by accessing the publicly-available and searchable Australian Trade Mark On-line Search System (‘ATMOSS’) or by reviewing the Trade Marks Journal.  The ATMOSS database records, for example, details of all applications and registrations as well as their history, including the filing of applications and their acceptance for registration.  It is notorious that well-advised parties have for decades placed trade marks of concern ‘under watch’.  Indeed, FKP and FGUP’s solicitors refer to this very practice – and to how they were encouraged to, and did, apply it in the present instance – in the letter that is at Ex. JRO-1 at 266.

17. While it is naturally open to FKP and FGUP, as well as to any other member of the public, to apply for access to Trade Marks Office files in relation to the Existing and Further Applications, it is not necessary for FKP or FGUP to do so in order to protect their interests, either from a case management position or otherwise.  For example, the acceptance of any of the Existing Applications for registration would be advertised in the Trade Marks Journal, to which FKP and FGUP’s solicitors presumably subscribe, as well as recorded on the ATMOSS database.

18. In support of their application for an order in terms of para 4 of the proposed orders, the solicitors for FKP and FGUP appear to point to issues of convenience, primarily from the perspective of their client.  A court order requiring Spirits’ solicitors to copy and to furnish to FKP and FGUP’s solicitors copies of all correspondence and documents sent to or received from the Australian Trade Marks Office in relation to the Existing Applications and any Further Applications would be extraordinarily burdensome to Spirits, both from the perspective of time and cost, even taking into an account the proposed undertaking to pay ‘reasonable photocopying costs’.  Such an order would also be inappropriate given the confidentiality of certain material which may be disclosed by Spirits to the Trade Marks Office in the ordinary course of prosecuting their trade mark applications.

19. It is not suggested that there is any urgency involved in FKP and FGUP obtaining access to the relevant documentation that would justify the order sought; simply that it would be more convenient for FKP and FGUP to obtain the documents directly from Spirits.  No basis for wanting this universe of documents is put forward.

20. With respect to the assertion that the current process of obtaining access to documents through FOI procedures is ‘drawn out’, Spirits notes that amendments to the Act which took effect on 27 March 2007 will result in the introduction of new procedures for accessing documents held by the Trade Marks Office. These new procedures are designed to provide third parties with quicker and more efficient access to most documents. But whatever the position, the fact that FKP and FGUP are curious about every minor matter that Spirits may communicate to the Trade Marks Office does not warrant injunctive intervention by the Court, with all that that entails.

21. Spirits submits that there is no basis for making the order sought in para 4 of the proposed orders.

    Conditions on Consent

22. Spirits submits that, pending determination of this proceeding, it should be entitled to conduct its business in the ordinary course and to exercise its ordinary rights as a trade mark applicant or trade mark owner, unless FKP and FGUP satisfy the Court, on the application of the usual principles which govern the grant of interlocutory relief, that appropriate interlocutory relief is warranted. Spirits’ rights, as a trade mark applicant or owner, include the right to consent to the acceptance of a third party application, in respect of which the Trade Marks Office may have raised an objection based on Spirits’ prior rights.

23. Spirits submits that there is no basis for making the order sought in para 5 of the proposed orders.

    ANALYSIS

24. I am firmly of the view that the proposed orders sought by FKP and FGUP on their motion amount to a claim for substantive interlocutory relief and that there is no reason why I should depart from the ordinary principles in deciding whether to grant such relief.  Characterising the claim in this fashion impels one to the only conclusion open, namely, that entitlement to such relief has not been established.

25. It is unnecessary to replicate the reasons why entitlement to such relief has not, in my view, been established; they are set out in the submissions of Spirits which I have endeavoured to comprehensively summarise at [25] to [36] above.

26. Additionally, there are reasons, discrete to each of the orders sought, why it is said there is insufficient basis for the making of the proposed orders, including on ‘case management grounds’, and these additional reasons are set out at [38] to [58] above.  I agree with the substance of these additional reasons.

27. The motion must be dismissed with costs.

I certify that the preceding sixty-two (62) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Edmonds.

Associate:
Dated:        11 July 2007

Counsel for the First and Second Cross-Claimants:	Mr C Dimitriadis
Solicitor for the First and Second Cross-Claimants:	Allens Arthur Robinson
Counsel for the First Cross-Respondent:	Mr R Cobden SC
Solicitor for the First Cross-Respondent:	Mallesons Stephen Jaques

Date of Hearing:	22 February 2007
Date of Judgment:	11 July 2007