Selth in a Representative Capacity for the Members of the Australian Bar Association v Australasian Barrister Chambers Pty Limited
[2015] FCA 1008
•11 September 2015
FEDERAL COURT OF AUSTRALIA
Selth in a Representative Capacity for the Members of the Australian Bar Association v Australasian Barrister Chambers Pty Limited [2015] FCA 1008
Citation: Selth in a Representative Capacity for the Members of the Australian Bar Association v Australasian Barrister Chambers Pty Limited [2015] FCA 1008 Parties: PHILIP SELTH IN A REPRESENTATIVE CAPACITY FOR THE MEMBERS OF THE AUSTRALIAN BAR ASSOCIATION and ABA AUSTRALIAN BAR ASSOCIATION LTD (ACN 605 949 148) v AUSTRALASIAN BARRISTER CHAMBERS PTY LIMITED, DEREK MICHAEL MINUS and DISPUTE RESOLUTIONS ASSOCIATES PTY LTD (ABN 50090594451) File number: NSD 975 of 2014 Judge: NICHOLAS J Date of judgment: 11 September 2015 Catchwords: PRACTICE AND PROCEDURE – interlocutory application seeking order for joinder – whether reasonable apprehension of bias on part of judge hearing application – no reasonable apprehension of bias established – order for joinder made Cases cited: Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337
Livesey v New South Wales Bar Association (1983) 151 CLR 288Date of hearing: 10 September 2015 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 22 Counsel for the Applicant: Mr M O’Meara Solicitor for the Applicant: Webb Henderson Counsel for the Respondents: The second respondent appeared in person on behalf of all the respondents
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 975 of 2014
BETWEEN: PHILIP SELTH IN A REPRESENTATIVE CAPACITY FOR THE MEMBERS OF THE AUSTRALIAN BAR ASSOCIATION
First ApplicantABA AUSTRALIAN BAR ASSOCIATION LTD
(ACN 605 949 148)
Second ApplicantAND: AUSTRALASIAN BARRISTER CHAMBERS PTY LIMITED
First RespondentDEREK MICHAEL MINUS
Second RespondentDISPUTE RESOLUTIONS ASSOCIATES PTY LTD
(ABN 50090594451)
Third Respondent
JUDGE:
NICHOLAS J
DATE OF ORDER:
11 SEPTEMBER 2015
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.ABA Australian Bar Association Ltd (ACN 605 949 148) be joined as the second applicant in this proceeding.
2.The applicants have leave to file and serve a Further Amended Originating Application and an Amended Statement of Claim in the form exhibited to the affidavit of Andrew John Christopher sworn 9 September 2015 by 4pm, 11 September 2015.
3.Any Amended Defence to the Amended Statement of Claim be filed and served by 2 October 2015.
4.The applicants pay the respondents’ costs (if any) thrown away as a result of the amendments made pursuant to order 2.
5.The costs of the interlocutory application filed on 28 July 2015 be reserved.
6.The respondents file and serve their affidavit evidence in answer by 16 October 2015.
7.The applicants file and serve their affidavit evidence in reply by 30 October 2015.
8.The proceeding stand over for further directions to 9.30am on 11 November 2015.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 975 of 2014
BETWEEN: PHILIP SELTH IN A REPRESENTATIVE CAPACITY FOR THE MEMBERS OF THE AUSTRALIAN BAR ASSOCIATION
First ApplicantABA AUSTRALIAN BAR ASSOCIATION LTD
(ACN 605 949 148)
Second ApplicantAND: AUSTRALASIAN BARRISTER CHAMBERS PTY LIMITED
First RespondentDEREK MICHAEL MINUS
Second RespondentDISPUTE RESOLUTIONS ASSOCIATES PTY LTD
(ABN 50090594451)
Third Respondent
JUDGE:
NICHOLAS J
DATE:
11 SEPTEMBER 2015
PLACE:
SYDNEY
REASONS FOR JUDGMENT
Before me is an interlocutory application filed by the applicant seeking orders for the joinder of ABA Australian Bar Association Ltd (ACN 605 949 148) (“ABA Ltd”) as an applicant in this proceeding. ABA is an Australian public company limited by guarantee which was registered with the Australian Securities & Investments Commission on 20 May 2015.
This proceeding was commenced by the applicant in a representative capacity on behalf of members of the Australian Bar Association (“ABA”). That body is, according to the applicant’s pleading, an unincorporated association governed by a constitution and consisting of practising barristers who are members from time to time of the Australian Capital Territory Bar Association, the Bar Association of Queensland, the New South Wales Bar Association, the Northern Territory Bar Association, the South Australian Bar Association, the Tasmanian Bar, the Victorian Bar Incorporated and the Western Australian Bar Association, and such other practising barristers who may from time to time be admitted to membership of ABA by the Australian Bar Council.
There are three respondents to this proceeding. The first and third respondents are corporate entities that are or were associated with the second respondent, Mr Derek Minus.
Also before me (though for directions only) is another proceeding brought by the New South Wales Bar Association (“the NSWBA”). In the proceeding brought by the NSWBA, there are two respondents. The first respondent is Mr Minus and the second is the same corporate entity that is the first respondent in the proceeding brought by the applicant in this proceeding.
Mr Minus is a barrister who has been in practice for more than 20 years. On the hearing of the present application, as on previous occasions when the two proceedings have been before me, he has appeared on his behalf and on behalf of the other respondents.
Briefly stated, the applicant in this proceeding alleges that the respondents have engaged in, or threatened to engage in, misleading and deceptive conduct arising out of the alleged use of various trade marks.
The various claims made by the applicant include claims for relief based upon the alleged infringement, or threatened infringement, of the following two registered trade marks:
(a)trade mark registration No 1587902 for the word mark “AUSTRALIAN BAR ASSOCIATION”; and
(b)trade mark registration No 1558252 for a device mark that also includes those words.
None of the respondents has filed any cross-claim seeking cancellation of either of the registered marks.
At the commencement of the hearing of the interlocutory application, Mr Minus requested that I disqualify myself. He did this on the basis that I am, or am likely to become, a member of ABA Ltd and that, in those circumstances, it would not be appropriate for me to hear the interlocutory application which seeks an order that it be joined as an applicant.
There are two things to say about Mr Minus’ application.
First, in relation to the proceeding brought by the NSWBA, I previously indicated that I would not hear that case because I remain a member of the NSWBA, notwithstanding that I ceased to practice as a barrister almost six years ago. That is a matter that I disclosed to Mr Minus on 12 December 2014 when the proceeding involving the NSWBA first came before me. Having made that disclosure to Mr Minus the following exchange took place:
MR MINUS: I wasn’t aware of that, your Honour.
HIS HONOUR: No. I should tell you that. I’m almost certain that I am. My understanding is that only practicing barristers can be members of the Australian Bar Association, which is why I was disinclined to recuse myself in relation to that matter. This matter, Mr Minus, may be different for the reason I mentioned but I’m not going to formally determine whether or not I ought to recuse myself. I think this is a matter where sensibly the difficulty can be resolved simply by having another judge from interstate hear the case when we get to the hearing. But I take it you have no objection in either matter to me dealing with the procedural matters?
MR MINUS: No. I don’t, your Honour.
That seemed to me to be a sensible course to follow.
The second point is that the current application made by Mr Minus to have me disqualify myself appears to be based on a false premise. It is apparent from the Constitution of ABA Ltd (a copy of which is in evidence) that individual membership is limited to practising barristers, life members and honorary members. I am not a member of ABA Ltd, and not likely to become a member of ABA Ltd at any time in the foreseeable future.
In the circumstances of this matter, including the exchange that took place on 12 December 2014, I am not satisfied that a fair-minded observer, with knowledge of all the circumstances of the case, might reasonably apprehend that I might not bring an impartial mind to the resolution of any interlocutory applications, including the interlocutory application now before me, that have and will arise as the proceeding is made ready for trial (see Ebner v Official Trustee in Bankruptcy (2000) 205 CLR 337 at [6], Livesey v New South Wales Bar Association (1983) 151 CLR 288 at 293-4).
Turning to the substance of the interlocutory application, the facts are not particularly complicated. There is evidence from the applicant’s solicitor, Mr Christopher, that indicates that Mr Selth executed a deed of assignment on 27 July 2015 whereby he transferred to ABA Ltd the two registered trade marks. There is also evidence before me to indicate that the assignment of the registered trade marks to ABA Ltd has been recorded in the Register of Trade Marks and that ABA Ltd is now shown as their registered owner.
Mr Minus submitted that Mr Selth had no authority to assign the registered trade marks to ABA Ltd. I do not know whether that is or is not so. The evidence establishes, and it does not appear to be disputed, that the registered trade marks are now registered in the name of ABA Ltd. On that basis alone it seems to me that ABA Ltd is a proper party to the proceedings in which injunctive relief is sought against each of the respondents for alleged infringement, or threatened infringement, of the registered trade marks. In fact, the claims for injunctive relief based upon any alleged infringement of the registered trade marks are bound to fail unless the order for joinder is made.
Mr Minus also submitted that there had been significant delay on the part of ABA and ABA Ltd. However, the evidence shows that the deed of assignment was executed on 27 July 2015 and that the parties to the assignment were first notified that it had been registered with effect from that date about a week later. The interlocutory application was filed on 28 July 2015.
There is nothing in the evidence to indicate why the assignment took place when it did. Be that as it may, I do not see any good reason for refusing to make the order for joinder now that the assignment has been made and registered. The alternative would be to require ABA Ltd to bring its own proceeding which would seem to me to be a completely pointless and wasteful exercise.
It is apparent that the joinder of ABA Ltd will not delay the filing of the applicant’s evidence because I am told that it is complete. Mr Minus says he will need four weeks to prepare his evidence in answer.
I propose to make orders to the effect of paragraphs 1 and 2 in the interlocutory application together with other orders for the filing of the remainder of the evidence. By the time the proceeding is next before the Court all the affidavit evidence should have been filed.
The applicant must pay the costs (if any) thrown away by the respondents by reason of the amendments. Costs of the interlocutory application will be reserved.
Orders accordingly.
I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate:
Dated: 11 September 2015
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