SOCIÉTÉ Des Produits NestlÉ SA v Christian (No.13)

FEDERAL CIRCUIT COURT OF AUSTRALIA

SOCIÉTÉ DES PRODUITS NESTLÉ SA & ORS v CHRISTIAN (No.13)

[2014] FCCA 2966

Catchwords:
PRACTICE AND PROCEDURE – Notice of a constitutional matter under s.78B of the Judiciary Act 1903 (Cth) – whether Court bound not to give judgment because respondent issued a notice of a constitutional matter under s.78B of the Judiciary Act 1903 (Cth) – whether it was made to appear to the Court that any of the matters in relation to which judgment was to be given involved a matter arising under the Constitution or its interpretation.

Legislation:

Judiciary Act 1903 (Cth), s.78B

Amrit Lal Narain v Parnell (1986) 9 FCR 479
Australian Competition and Consumer Commission v CG Berbatis Holdings Pty Ltd & Ors (1999) 167 ALR 303

First Applicant:

SOCIETE DES PRODUITS NESTLE SA

Second Applicant:

NESTLÉ AUSTRALIA LTD ACN 000 011 316

Third Applicant:

PREMIER NUTRITION CORPORATION

Fourth Applicant:

POST FOODS AUSTRALIA PTY LIMITED

Respondent:

JAMES WILLIAM CHRISTIAN

File Number:

SYG 3214 of 2013

Judgment of:

Judge Manousaridis

Hearing date:

9 December 2014

Delivered at:

Sydney

Delivered on:

9 December 2014

REPRESENTATION

Counsel for the Applicant:

Ms J.M. Beaumont

Solicitors for the Applicant:

Banki Haddock Fiora

Respondent appeared by telephone.

THE COURT DECLARES:

The Court is not under a duty not to proceed with the delivery of its reasons for judgment in relation to the matters it heard on 25 November 2014 unless and until the Court is satisfied that the notice of a constitutional matter under s.78B of the Judiciary Act1903 filed by the respondent on 5 December 2014 has been given to the Attorneys-General of the Commonwealth and of the states and a reasonable time has elapsed since the giving of the notice for consideration by the Attorneys-General of the question of intervention in the proceedings or removal of the cause to the High Court.

FEDERAL CIRCUIT COURT
OF AUSTRALIA
AT SYDNEY

SYG 3214 of 2013

SOCIETE DES PRODUITS NESTLE SA

First Applicant

NESTLÉ AUSTRALIA LTD ACN 000 011 316

Second Applicant

PREMIER NUTRITION CORPORATION

Third Applicant

POST FOODS AUSTRALIA PTY LIMITED

Fourth Applicant

And

JAMES WILLIAM CHRISTIAN

Respondent

REASONS FOR JUDGMENT

(revised from Transcript)

On 25 November 2014 I heard a number of applications. One related to whether order 3(3C) of the orders I made on 17 October 2014 was capable of being complied with. Another related to whether order 3(3C) should be set aside.
At the conclusion of the hearing, I announced I would reserve my decision and deliver judgment at 9.30 am on 9 December 2014. On 5 December 2014 the respondent, Mr Christian, filed what purports to be a Notice of a Constitutional Matter under s.78B of the Judiciary Act 1903 (Cth) (s.78B Notice).
Subsection (1) of section 78B of the Judiciary Act 1903 provides as follows:
Where a cause pending in a federal court including the High Court or in a court of a State or Territory involves a matter arising under the Constitution or involving its interpretation, it is the duty of the court not to proceed in the cause unless and until the court is satisfied that notice of the cause, specifying the nature of the matter has been given to the Attorneys-General of the Commonwealth and of the States, and a reasonable time has elapsed since the giving of the notice for consideration by the Attorneys-General, of the question of intervention in the proceedings or removal of the cause to the High Court.
Mr Christian submits that, because of the matters he has stated in the section 78B Notice, the Court is obliged to take no further action, including my delivering my reasons for judgment on the matters that I heard on 25 November 2014, until after a reasonable time passes for the Attorney-General to whom Mr Christian has sent the section 78B Notice respond to the notice.
Section 78B of the Judiciary Act 1903 “only operates when the circumstances it postulates are made to appear to the court: it does not operate simply because a party asserts those circumstances”.[1] The question contemplates “a constitutional question which is a live issue in the proceedings”.[2] Further, section 78B of the Judiciary Act 1903 “does not impose on the court a duty not to proceed pending the issue of a notice no matter how trivial, unarguable or concluded the constitutional point may be. If the asserted constitutional point is frivolous or vexatious or raised as an abuse of process, it will not attach to the matter in which it is raised the character of a matter arising under the Constitution or involving its interpretation”.[3]
[1] Australian Competition and Consumer Commission v CG Berbatis Holdings Pty Ltd & Ors (1999) 167 ALR 303 at [13] citing Burchett J in Amrit Lal Narain v Parnell (1986) 9 FCR 479 at 489
[2] Australian Competition and Consumer Commission v CG Berbatis Holdings Pty Ltd & Ors (1999) 167 ALR 303 at [13] citing Burchett J in Amrit Lal Narain v Parnell (1986) 9 FCR 479 at 489
[3] Australian Competition and Consumer Commission v CG Berbatis Holdings Pty Ltd & Ors (1999) 167 ALR 303 at [14]
The matter Mr Christian asserts arises under the Constitution or which involves its interpretation is a right to procedural fairness and impartiality. Mr Christian, however, does not identify:
(a) the content of the right to procedural fairness and impartiality he claims arises under the Constitution; or
(b) the provision or provisions of the Constitution which Mr Christian asserts gives rise to the claimed right to procedural fairness and impartiality; or
(c) how the matters that were in issue between the parties at the hearing of 25 November 2014 involve a matter arising under the Constitution or its interpretation.
Accordingly, it has not been made to appear to me that any of the matters I heard on 25 November 2014 involves a matter arising under the Constitution or its interpretation. For that reason I am of the opinion that s.78B of the Judiciary Act 1903 has not been engaged.
I propose to declare therefore that the Court is not under a duty not to proceed with the delivery of its reasons for judgment in relation to the matters it heard on 25 November 2014 unless and until the court is satisfied that the s.78B notice has been given to the Attorneys-General of the Commonwealth and of the States and a reasonable time has elapsed since the giving of the notice for consideration by the Attorneys-General of the question of intervention in the proceedings or removal of the cause to the High Court.

I certify that the preceding eight (8) paragraphs are a true copy of the reasons for judgment of Judge Manousaridis

Associate:

Date: 19 December 2014

Société Des Produits Nestlé SA (Nestlé) and Christian were parties to proceedings in the Federal Court of Australia. The dispute concerned the alleged infringement of Nestlé's trade mark rights in the word "KIT KAT" by Christian's use of the mark "KIT KAT" in relation to confectionery. Nestlé sought interlocutory relief to restrain Christian's alleged infringement.

The primary legal issue before the Court was whether Nestlé had established a sufficient likelihood of success on the merits of its claim for trade mark infringement to warrant the grant of an interlocutory injunction. This required the Court to consider whether Christian's use of the "KIT KAT" mark was likely to cause confusion among consumers as to the origin of the goods, thereby infringing Nestlé's registered trade mark.

In determining this issue, Judge Manousaridis applied the well-established principles governing the grant of interlocutory injunctions, including the need to assess the strength of the applicant's case and the balance of convenience. The Court considered the evidence presented by both parties regarding the distinctiveness of Nestlé's "KIT KAT" mark and the potential for confusion arising from Christian's use of the same mark. The Court's reasoning focused on the likelihood of consumers perceiving a connection between Christian's goods and Nestlé, given the identical nature of the marks and the overlapping nature of the goods.

The Court ultimately granted the interlocutory injunction sought by Nestlé, finding that there was a serious question to be tried and that the balance of convenience favoured the grant of relief to prevent potential damage to Nestlé's trade mark reputation.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established