Stafford v Automotive Distributors Limited
[2018] FCCA 2768
•7 December 2018
FEDERAL CIRCUIT COURT OF AUSTRALIA
| STAFFORD v AUTOMOTIVE DISTRIBUTORS LIMITED | [2018] FCCA 2768 |
| Catchwords: PRACTICE AND PROCEDURE – Summary dismissal application – whether appeal has no reasonable prospect of success – whether appeal should be struck out – whether non-compliance with orders. |
| Legislation: Acts Interpretation Act 1901 (Cth), s.36(2) Federal Circuit Court of Australia Act 1999 (Cth), ss.3, 17A Federal Circuit Court Rules 2001 (Cth), Pt.13, rr.1.05, 6.01, 6.02, 6.12, 13.03A, 13.03B, 13.10, Sch.3, Pt.2, Item 11 Federal Court of Australia Act 1976 (Cth), s.31A Federal Court Rules 2011 (Cth), Pt.16, r.16.21, Sch.1 Trade Marks Act 1995 (Cth), ss.6, 92, 100, 101, 102, 104, 197 |
| ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577 Allstate Life Insurance Company v Australian & New Zealand Banking Group Ltd (1994) 217 ALR 226 Andrews v Australia & New Zealand Banking Group Limited [2011] FCA 388; (2011) 281 ALR 113 Australian Competition & Consumer Commission v Pauls Ltd [2000] ATPR 41-747 Australian Securities & Investments Commission v Cassimatis [2013] FCA 641; (2013) 220 FCR 256; (2013) 302 ALR 671; (2013) 94 ACSR 623 Banque Commerciale SA En Liquidation v Akhil Holdings Ltd (1990) 169 CLR 279; (1990) 64 ALJR 244; (1990) 92 ALR 53 Croft v Evertop Investments Pty Ltd (No.2) [2011] FCA 749 Deppro Pty Ltd v Daly [2006] FCA 1727 Dowling v Commonwealth Bank of Australia [2008] FCA 59 Glew v Jasper [2010] WASCA 87 Jackson v P/T Constructions WA Pty Ltd [2015] FCCA 1014 Jafferjee v Scarlett (1937) 57 CLR 115; [1937] ALR 404 John Holland Pty Ltd v The Maritime Union of Australia [2009] FCA 437 Leica Geosystems Pty Ltd v Koudstaal [2012] FCA 1337 Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388; (1990) 98 ALR 200; [1991] ATPR 41-082 Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119; (2000) 51 IPR 134 Manday Investments Pty Ltd v Commonwealth Bank of Australia (No.3) [2012] FCA 751 Morton v Mitchell Products Pty Ltd (1996) 21 ACSR 497 National Mutual Property Services (Aust) Pty Ltd v Citibank Savings Ltd (No.4) (1995) 132 ALR 514 Neil v Nott (1994) 121 ALR 148; (1994) 68 ALJR 509 Nulyarimma & Ors v Thompson & Ors (1999) 96 FCR 153; (1999) 165 ALR 621 Polar Aviation Pty Ltd v Civil Aviation Safety Authority [2012] FCAFC 97; (2012) 203 FCR 325 Professional Administration Service Centres Pty Ltd v Federal Commissioner of Taxation [2012] FCAFC 180; (2012) 91 ATR 546; (2012) 295 ALR 52 Qualify Me Pty Ltd v Get Qualified Australia Pty Ltd [2016] FCA 192 Radisich v McDonald [2010] FCA 762; (2010) 198 IR 244 Re C2C Investments Pty Ltd, in the matter of C2C Investments Pty Ltd v Leigh (No.3) [2012] FCA 680 Re Nazdall Pty Ltd [2013] FCA 94; (2013) 210 FCR 264 Rothnie v St John of God Hospital (Subiaco) [2014] FCCA 159 Shelton v National Roads & Motorists Assn Ltd [2004] FCA 1393; (2004) 51 ACSR 278 Singh v Owners Strata Plan No 11723 (No.3) [2012] FCA 1121 Smith & Anor v Barron & Anor [2004] FCA 1596; (2004) 139 FCR 566 Spencer v The Commonwealth of Australia [2010] HCA 28; (2010) 241 CLR 118; (2010) 84 ALJR 612; (2010) 269 ALR 233 Spiteri v Nine Network Australia Pty Ltd [2008] FCA 905 Stafford v Automotive Distributors Ltd [2015] ATMO 40; (2015) 113 IPR 440 State of Queensland v Pioneer Concrete (Qld) Pty Ltd [1999] FCA 499; [1999] ATPR 41-691 Sullivan v North West Crewing Pty Ltd [2016] FCA 1130 Takemotov Moody’s Investors Service Pty Ltd [2014] FCA 1081 Thorpe v Commonwealth (No.3) (1997) 71 ALJR 767; (1997) 144 ALR 677 Woolworths Ltd v BP plc [2006] FCAFC 52; (2006) 150 FCR 134 |
| Applicant: | MICHAEL JOHN STAFFORD |
| Respondent: | AUTOMOTIVE DISTRIBUTORS LIMITED |
| File Number: | PEG 245 of 2015 |
| Judgment of: | Judge Antoni Lucev |
| Hearing date: | 9 May 2016 |
| Date of Last Submission: | 9 May 2016 |
| Delivered at: | Perth |
| Delivered on: | 7 December 2018 |
REPRESENTATION
| For the Applicant: | In person |
| Counsel for the Respondent: | Mr D J Jackson |
| Solicitors for the Respondent: | Chrysiliou Lawyers |
ORDERS
That the applicant’s originating application by way of a Notice of appeal (intellectual property) filed 4 June 2015 be dismissed.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT PERTH |
PEG 245 of 2015
| MICHAEL JOHN STAFFORD |
Applicant
And
| AUTOMOTIVE DISTRIBUTORS LIMITED |
Respondent
REASONS FOR JUDGMENT
Background
Originating application
The applicant, Michael John Stafford (“Mr Stafford”), filed an application in this Court on 4 June 2015 appealing (“Appeal”) a decision of a delegate of the Registrar of Trade Marks given on 14 May 2015 (“Registrar’s Decision” and “Registrar” respectively) and seeking that the Registrar’s Decision be set aside, and that a trade mark remain on the Trade Marks Register (“TM Register”). The Registrar’s Decision is reported as Stafford v Automotive Distributors Ltd [2015] ATMO 40; (2015) 113 IPR 440.
Registrar’s Decision
The Registrar’s Decision appealed against was that the respondent, Automotive Distributors Limited (“ADL”), had successfully established a case to remove Australian Trade Mark No.713318 (“Trade Mark”), titled “Blueprint”, from the TM Register pursuant to s.92(4) of the Trade Marks Act 1995 (Cth) (“TM Act”).
In the Registrar’s Decision directing that the Trade Mark be removed from the Register, and awarding costs against Mr Stafford, the Registrar found that:
a)the Trade Mark had a priority date of 19 July 1996, and its owner was registered as “Australian Carburettors and Fuel Injection” in respect of Class 7 goods described as “Fuel systems components especially carburettor components and petrol and diesel fuel injection systems components; ignition system components”: at [1];
b)the Trade Mark was registered in the name of “Australian Carburettors and Fuel Injection”, which was a business name of which Mr Stafford was the holder at the time that the Trade Mark was registered: at [11];
c)Mr Stafford asserted that he was the rightful and authorised owner of the Trade Mark: at [10];
d)a business name generally has no legal personality and cannot own a trade mark, although the holder of the business name must have legal personality and might be found to own a trade mark so that the official record might be corrected: at [11];
e)the business name “Australian Carburettors and Fuel Injection” was cancelled on 4 July 1997 and was not in force during the relevant three year period for the purposes of s.92(4)(b) of the TM Act, which ended on 14 May 2012 and as a consequence Mr Stafford could not have held the business name and been the legal personality behind the business name as there was nothing to hold: at [11];
f)the provenance of a business card bearing words including the Trade Mark post-dated the relevant period for the purposes of s.92(4)(b) of the TM Act: at [12]-[16];
g)various business names containing the Trade Mark and appearing to have been registered with the Australian Securities and Investments Commission were registered on dates “well before or well after the relevant period” for the purposes of s.92(4)(b) of the TM Act: at [17];
h)evidence from third parties on behalf of Mr Stafford did not corroborate Mr Stafford’s asserted use of the Trade Mark as none of the supporting declarants stated their positions, expertise or relationship with Mr Stafford, or directly corroborated use of the Trade Mark on the registered goods within the relevant period: at [18]-[23];
i)Mr Stafford’s purported evidence of use of the Trade Mark by the use of receipts issued under a rubber stamp impression referred to the unregistered business name related to the supplier of the products rather than their use as a Trade Mark to distinguish the products themselves: at [26];
j)Mr Stafford was mistaken in his belief that the Trade Mark was registered in his personal name and that he was able to assign, licence or permit use of the Trade Mark by others, and that was because the Trade Mark was registered in the name of “Australian Carburettors and Fuel Injection” and would be assigned by the registered owner of the Trade Mark, here either, problematically, a business name or, arguably, the holder of that business name, but that Mr Stafford was not the holder of the business name “Australian Carburettors and Fuel Injection” because that business name had been cancelled: at [29];
k)Mr Stafford was not the owner of the New Zealand registration of the Trade Mark, that being registered in the name of a corporation which shared its address with a number of corporations directed by Mr Stafford: at [29];
l)Mr Stafford had not rebutted the allegation of the non-use of the Trade Mark on the basis of the evidence and submissions considered by the Registrar: at [30];
m)although there may have been legal personality behind the business name stated to be the owner of the Trade Mark at the date on which the Trade Mark was registered, there was no registered holder of the business name, or owner of the Trade Mark, during the period which is relevant for the purposes of s.92(4)(b) of the TM Act: at [37];
n)Mr Stafford, or any of his companies, could not have been the legal personality behind the registered business name as there was no registered business name at that time, and it therefore followed that the Trade Mark could not have been used by its registered owner, or the legal personality behind the registered owner, during the relevant period: at [37]; and
o)there was no obvious way that the nullity in the registered ownership of the Trade Mark might be addressed, and therefore no practical purpose to be served in exercising the Registrar’s discretion in favour of the registered owner of the Trade Mark as the registered owner does not exist: at [40]-[41].
The Court notes that in relation to appearances the Registrar’s Decision:
a)coversheet provides that:
The opponent represented himself at originally scheduled hearing then appointed Kelvin Lord of Lord & Co for adjourned hearing by teleconference.
E Ziehlke, solicitor, Chrysiliou IP for the removal applicant.
b)at [3] states that:
The parties both filed evidence as further detailed below. Thereafter the parties requested to be heard. As a delegate of the Registrar of Trade Marks I heard the submissions of the parties at a hearing in Canberra on 22 August 2014. Mr Eric Ziehlke of Chrysiliou IP represented … [ADL] and … [Mr Stafford] represented himself. Towards the end of that hearing Mr Stafford expressed some regret that he had not had legal representation. I informed him that I was prepared to adjourn proceedings in order that he could appoint a legal representative to present his submissions and address the arguments of … [ADL]. Mr Stafford requested such an adjournment. The hearing reconvened on 21 November 2014 - … [ADL’s] representation remained unchanged and … [Mr Stafford] was represented by Kelvin Lord of Lord & Co by teleconference prior to which he had filed a written outline of submissions.
Grounds of Appeal
Mr Stafford was legally represented at the time of filing the Appeal, the grounds of which are as follows:
1. The Mark should remain registered on the grounds that:
(a) the Mark had been previously used by the Applicant during the prescribed three year period set out in Section 92(4)(b) of the Trade Marks Act 1995; and
(b) the Applicant is the legitimate and proper owner of the Mark pursuant to Sections 27 and 58 of the Trade Marks Act 1995.
2. The Delegate erred in deciding that the Mark:
(a) was not used by the Applicant at all; and
(b) was not in use by the Applicant within the prescribed three year period set out in Section 92(4)(b) of the Trade Marks Act 1995.
Some relevant TM Act provisions
Section 92(4) of the TM Act provides as follows:
(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:
(a) …
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
Section 100(1) of the TM Act provides as follows:
(1) In any proceedings relating to an opposed application, it is for the opponent to rebut:
(a) …;
(b) …; or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.
First Court date and orders made
Three days prior to the first court date listed on 10 August 2015 in this Court the lawyers for Mr Stafford withdrew from the record, and when the matter was called on the first court date Mr Stafford appeared in person and has thereafter continued to appear as a litigant in person.
On 10 August 2015 orders (“August 2015 Orders”) were made in the following terms:
1. On or before 10 September 2015 the Appellant is to file and serve his Points of Claim in relation to the grounds advanced on appeal.
2. On or before 10 October 2015 the Respondent is to file and serve his Points of Defence in relation to the grounds advanced on appeal.
3. There be a hearing of preliminary issue in relation to the following question:
If it is assumed for the purposes of the preliminary hearing, but not admitted or conceded for the purposes of the appeal, that:
a. The Trade Mark “BLUEPRINT” (“Mark”) was used by the Appellant or an entity associated with him in relation to the relevant goods during the three year period ending on 14 May 2012 (“Relevant Period”);
b. The Mark is and was at all material times registered in the name of “Australian Carburettors and Fuel Injection”; and
c. The business name “Australian Carburettors and Fuel Injection” was cancelled on 4 July 1997 and was not registered during the Relevant Period;
Is it open to the Court to find that the Mark was used by its registered owner in relation to the relevant goods during the Relevant Period for the purpose of paragraph 92(4)(b) of the Trade Marks Act 1995 (Cth)?
4. No later than 14 days prior to the date set for the hearing of the preliminary issue the Respondent file and serve its written outline of submissions.
5. No later than 7 days prior to the date set for the hearing of the preliminary issue the Appellant file and serve his written outline of submissions.
6. The preliminary issue be listed for hearing at 10.15am on 11 March 2016.
7. Costs of today reserved.
8. Liberty to apply generally.
Application for summary dismissal of Appeal
On 5 January 2016 ADL filed an application in a case seeking summary dismissal of the Appeal (“Dismissal Application”) pursuant to r.13.03B(1)(a) of the Federal Circuit Court Rules 2001 (Cth) (“FCC Rules”) as a result of Mr Stafford allegedly having failed to comply with the August 2015 Orders.
An affidavit of Andros Chrysiliou sworn 5 January 2016 (“Chrysiliou Affidavit”) was filed in support of the Dismissal Application. In the Chrysiliou Affidavit it was stated that:
a)Mr Stafford did not serve his Points of Claim on ADL by 10 September 2015;
b)the Court records indicate that no document had been filed by or on behalf of the Mr Stafford since 7 August 2015 (and the Court notes in relation thereto that the document then filed was Mr Stafford’s lawyer’s Notice of Withdrawal as Lawyer, attached to which was the Notice of Intention to Withdraw as Lawyer (“Intention to Withdraw Notice”) from Mr Stafford’s former lawyers dated 31 July 2015);
c)on 7 October 2015 an email was sent to Mr Stafford by ADL’s lawyers, expressing concern that the Points of Claim had not been filed and served and enquiring if Mr Stafford intended to abandon the Appeal, or that if the Appeal was to proceed he should approach the Court to seek a new timetable; and
d)in a subsequent telephone call to Mr Stafford ADL’s lawyer asked Mr Stafford to approach the Court about his default and advise the outcome, and that as at 5 January 2016 no steps appeared to have been taken by Mr Stafford to rectify his default in the timetable or to have a new timetable arranged.
An Amended Dismissal Application (“Amended Dismissal Application”) was subsequently filed on 2 May 2016 by ADL, and the grounds of the Amended Dismissal Application are set out below: see [17] below.
First hearing of Dismissal Application and further orders made
On 26 February 2016 the Court sat to hear the Dismissal Application. Having heard briefly from the parties the Court took account of a number of matters including Mr Stafford’s submission that he did not understand that the August 2015 Orders provided a time for compliance and ADL’s submission that some time had passed since ADL’s lawyer had put Mr Stafford on notice of his failure to comply with the August 2015 Orders: Transcript, 26 February 2016, page 7, before making the following further orders (“February 2016 Orders”):
1. Time for compliance with order 1 of the Court’s orders of 10 August 2015 be extended to 25 March 2016.
2. That compliance with orders 2, 4 and 5 of the Court’s orders of 10 August 2015 be stayed until further order of the Court.
3. The hearing on 11 March 2016 be vacated.
4. That the respondent’s application in a case be adjourned to 9am on 9 May 2016.
5. That the respondent have liberty [to] file and serve any amended application in a case and any further affidavits by 2 May 2016.
6. The applicant file and serve a notice of address for service by 4 March 2016.
7. Costs of today be reserved.
Points of claim and subpoena
On 29 March 2016 Mr Stafford:
a)filed his Points of Claim; and
b)caused a subpoena to issue to the Registrar for Trademarks to produce documents related to a “meeting/hearing” that took place on 22 August 2014 at the offices of Intellectual Property Australia.
In the Points of Claim Mr Stafford makes the following substantive claims:
a)alleges that the Registrar’s Decision was made in the absence of Mr Stafford personally at the hearing giving rise to the Registrar’s Decision (that is, the hearing on 21 November 2014), in contravention of a condition of the adjournment of an earlier hearing on 22 August 2014 (“Claim One”);
b)asserts that the Trade Mark had remained registered and in use for almost 20 years, and was also registered in New Zealand, but was “removed incorrectly … due to non-communication of a request for removal” (“Claim Two”);
c)asserts that ADL were “successful in obtaining registration as neither IP Australia examiner, Myself or Lord & Co were aware nor had any idea that IP Australia’s examiner would have allowed such registration while it is clear that a hearing and subsequent appeal was ongoing” and that he had “lodged a request for revocation of that registration with IP Australia” (“Claim Three”);
d)repeats the two grounds set out in the Appeal (as set out at [5] above) (“Claim Four” and “Claim Five” respectively); and
e)refers to the contents of three letters to the Registrar and asks that they be considered as Points of Claim (“Claim Six”). Each of the letters is dealt with further below:
i)a letter dated 26 May 2015 (“May 2015 Letter”) being a request addressed to the Registrar for internal review of the Registrar’s Decision by IP Australia, on grounds including:
A.complaints about the Registrar’s hearing;
B.complaints about the format of the statutory declarations submitted to the Registrar;
C.an assertion that no evidence proving non-use had been received; and
D.material about the process of registering the trade mark and a complaint about ADL’s registered trade mark;
ii)a letter dated 14 July 2015 (“July 2015 Letter”) which purports to be an application to the Registrar for revocation of ADL’s Trade Mark and which makes complaints and allegations of “deception and underhanded professional practice”; and
iii)a letter dated 17 November 2015 (“November 2015 Letter”) which purports to be a further application to the Registrar for revocation of ADL’s Trade Mark, and which is based upon the following grounds:
1. The application for registration was made during the time of a hearing relative to an application for removal for non use of my Trade Mark 713318.
2. The examiner erred in that the application should not have been accepted in line with the original examiners decision when they first applied thru another attorney, and under another name. The original application was made by Automotive Parts Distributors at the same address under International number 906157 Aust number 1397382 represented by Chrysiliou IP and was rejected by the examiner Brian Hollingworth because of the association between class 7 and class 12. In all our evidence provided we have asserted a claim to use in class 12 for automotive parts in Australia. I don't have the name of the other examiner but I consider the examiners handling of this to be most inconsistent with both applications and the fact that at the time it was clearly evident that my Trade Mark was still registered. I also add that I consider this ploy of using another Attorney and another name was an attempt to deceive and highly unethical by all parties. Please check your records and you will see that all are now in the name of Bilstein Ltd and different attorneys.
3. I have had numerous conversations with Mr Gavin Lovie and spoken to Gavin in Examiners about this inconsistency and a formal complaint will follow.
4. I assert that the registration of this Trade Mark has created confusion in the market place and has had me spend time fending off enquires for their products.
5. I also point out that a considerable number of the products mentioned in the description of goods are normally confused by the consumers as products sold by my business. In fact we have been selling many of these products for 20+ years, hence our claim under class 12.
6. I have communicated my disappointment in how the hearings and evidence was handled during the application for removal including the convenient loss of a recording of the first hearing. I further advise that evidence I provided was used by the other parties to aggressively pursue their agenda, I would request that you personally view the files.
7. I confirm that The removal of TM 713318 is now the subject of a Federal Appeal.
Subpoenaed Documents
For present purposes, nothing turns on the documents produced in response to the subpoena.
Amended Dismissal Application
On 2 May 2016 ADL filed the Amended Dismissal Application on the following grounds:
1A. Pursuant to Rule 16.21 of the Federal Court Rules 2011 (Cth) as applied by Rule 1.05(3)(b) and Schedule 3 of the Federal Circuit Court Rules 2001 (Cth), the Points of Claim filed by the applicant on 29 March 2016 be struck out on the ground that they:
(a) contain scandalous material;
(b) contain frivolous or vexatious material;
(c) are evasive or ambiguous;
(d) are likely to cause prejudice, embarrassment or delay in the proceeding; and
(e) fail to disclose a reasonable basis for the applicant's appeal.
1. The appeal be dismissed under Rule 13.03B(1)(a), further or alternatively Section 17A(2) of the Federal Circuit Court of Australia Act 1999 (Cth) and Rule 13.10.
2. The Applicant pay the Respondent's costs of the appeal.
3. The Applicant pay the Respondent's costs of this application and the amended application on an indemnity basis or as otherwise ordered and made taxable and payable forthwith.
4. Such further or other relief as the Court deems just in the circumstances.
The Amended Dismissal Application was supported by an affidavit of Reynier Van Der Westhuizen sworn 2 May 2016 (“Van Der Westhuizen May 2016 Affidavit”) The Van Der Westhuizen May 2016 Affidavit stated as follows:
a)on 1 March 2016 an email was sent to Mr Stafford attaching a copy of the February 2015 Orders and pointing out to Mr Stafford that he was required to file a Notice of Address for Service on or before 4 March 2016 and Points of Claim in relation to the grounds advanced on the Appeal on or before 25 March 2016;
b)on 11 March 2016 an email was again sent to Mr Stafford, expressing concern that the relevant Notice of Address for Service had not been served;
c)on 14 March 2016 an email from Mr Stafford to ADL’s lawyers attached a copy of a Notice of Address for Service (the Court notes that the Notice of Address for Service had been filed on 4 March 2016);
d)upon visiting the Commonwealth Court Portal database on 29 March 2016 ADL became aware that Mr Stafford had filed the Points of Claim that same day; and
e)on 30 March 2016 another email was sent to Mr Stafford expressing concern that the Points of Claim had not been served on ADL and advised him he could serve the document by email, however, as at 2 May 2016 the Points of Claim had not been served on ADL and there had been no further communication from Mr Stafford.
On 2 May 2016 ADL also filed an outline of written submissions in support of the Amended Dismissal Application, and the matter came on for hearing of the Amended Dismissal Application on 9 May 2016.
Submissions
ADL’s submissions
Although there was no order requiring it to do so ADL filed written submissions in support of the Amended Dismissal Application on 2 May 2016, and made oral submissions at hearing having regard to those written submissions. ADL submitted that:
a)Mr Stafford filed the Points of Claim more than six months after he was originally ordered to file points of claim, and failed to comply when he was given an extension in the February 2016 Orders (having filed the Points of Claim four days late) and then did not serve the Points of Claim on ADL;
b)merely filing a document entitled “Points of Claim” does not by itself constitute compliance with an order to do so where the primary function of pleadings and particulars is to ensure a fair hearing by putting the opposite party on notice of the case to be met and by defining the issues for decision so that the preparation of the case and the hearing itself can be controlled: State of Queensland v Pioneer Concrete (Qld) Pty Ltd [1999] FCA 499; [1999] ATPR 41-691 at [12] per Drummond J; Smith & Anor v Barron & Anor [2004] FCA 1596; (2004) 139 FCR 566 at [31] per French J;
c)Mr Stafford has not made proper use of the opportunity to file Points of Claim because he has demonstrated an inability or unwillingness to put the Points of Claim in proper order, and because the document in no way puts ADL on notice of the case against it in the Appeal, or discloses any reasonable basis for the Appeal, rather the Points of Claim only go to cause further delay and expense, and if the Points of Claim are left to stand as is they will potentially cause prejudice by making it more difficult to ensure a fair hearing;
d)in relation to the specific substantive claims in the Points of Claim:
i)Claim 1 complaining about having a fair hearing before IP Australia is not relevant because the proceedings before this Court are a re-hearing: TM Act, ss.104 and 197, and, in any event, the assertion of a failure to be heard properly before IP Australia cannot be made out in circumstances where the hearing was adjourned to enable Mr Stafford to obtain, and he did obtain, legal representation, with his lawyer appearing by telephone and filing written submissions for the purposes of the IP Australia hearing;
ii)Claim 2 contains an unparticularised assertion about the use of the Trade Mark over a period of more than 20 years, and assertions concerning the registration of a trade mark in New Zealand which was subsequently supposedly incorrectly removed from the relevant register in New Zealand;
iii)Claim 3 says that the Trade Mark was registered but then goes on to deal with the registration of the Trade Mark in different classes of goods which is irrelevant to the present matter;
iv)Claims 4 and 5 are simply a repetition of the grounds of the Appeal, save for the addition of an irrelevant allegation that the Trade Mark is registered in a class not relevant for present purposes; and
v)Claim 6 seeks to incorporate three letters into the Points of Claim, and even setting aside the fact that the letters cannot properly be incorporated into the Points of Claim, their content is irrelevant, because:
A. the May 2015 Letter deals firstly, with the alleged denial of procedural fairness at the IP Australia hearing in August 2014, and that matter is both irrelevant and unsustainable (for the reasons set out at [20(d)(i)] above); secondly, it misstates the burden of proof by asserting that ADL and IP Australia have not provided evidence of use in circumstances where s.100(1) of the TM Act clearly establishes that on the Appeal the burden of proof is on Mr Stafford, thereby highlighting the need for intelligible Points of Claim; and thirdly, it deals with aspects of the registration of the Trade Mark and the registration of ADL’s Trade Mark which go to the conduct of IP Australia, and which are irrelevant to the question of non-use at the heart of the Appeal;
B. the July 2015 Letter constitutes an application by Mr Stafford for revocation of ADL’s Trade Mark, and is therefore irrelevant, but also contains scandalous allegations about unprofessional practice which have no place in the Appeal; and
C. the November 2015 Letter again relates to the irrelevant subject of ADL’s Trade Mark and contains further scandalous allegations;
e)considered in the context of the objects of this Court as set out in s.3(2) of the Federal Circuit Court of Australia Act 1999 (Cth) (“FCCA Act”), including that the Court is to operate as informally as possible in the exercise of judicial power, and use streamlined procedures, and even allowing for relative informality, the Points of Claim do not discharge the basic functions of a pleading;
f)while bearing the title “Points of Claim”, the document fails to discharge even the most elementary functions of a pleading and instead it introduces a range of irrelevant and scandalous material, which will only cause prejudice and embarrassment and delay a fair hearing of the Appeal, and hence it offends against each of the grounds in r.16.21(1)(a)-(e) of the Federal Court Rules 2011 (Cth) (“FC Rules”), and should be struck out in its entirety, and no leave to re-plead should be granted;
g)an assessment of Mr Stafford’s prospects of success can only be made on the basis of the material before the Court, that material being confined to the Registrar’s Decision which speaks for itself, and provides no support for the Appeal, and evinces no reasonable prospect of success, and the Points of Claim to the extent that any grounds can be discerned at all, are frivolous and vexatious; and
h)whether or not the Points of Claim are struck out, the Appeal should in any event be dismissed under r.13.03B(1)(a) of the FCC Rules, or, alternatively, s.17A(2) of the FCCA Act, and r.13.10 of the FCC Rules.
Mr Stafford’s submissions
Mr Stafford made oral submissions in response to the submissions of ADL. Like the Points of Claim Mr Stafford’s oral submissions were vague and discursive, and irrelevant and unrelated to the matters before the Court, and made further allegations that were irrelevant to the Appeal, but doing the best it can the Court summarises the submissions as follows:
a)he cannot obtain legal aid and he cannot afford $150,000-$300,000 of legal fees to be represented so he prepared the Points of Claim within his own capacity, believing that they would support his claim that he is the owner of the Trade Mark;
b)if the Court finds in his favour that he is the legal owner of that Trade Mark, then he will mount the defence that is necessary, and the Points of Claim are brief and if he is of the opinion that he has to go further with the case, he can amend it and will do so accordingly, but he cannot presently see the benefit of putting together a complete case when he may be the owner of the Trade Mark, and that is the issue that he requests the Court to deal with, and the delays have not been brought about by that;
c)he does not acknowledge that there have been delays because he has the postage receipts for delivery to ADL, and he believes that he has complied with the Court’s orders, and the litany of accusations in the affidavit material of ADL are ridiculous, because ADL has not itself complied and is the reason for the delay;
d)there must be an initial hearing to determine the ownership of the Trade Mark, and if the ownership is not able to be determined, then he will not incur the expenses of pursuing the Appeal as he has no claim without it, and then has no need to provide further evidence and spend considerable sums of money; and
e)if the Court will permit it he will seek legal advice to have the Points of Claim amended.
Consideration
Preliminary observations
This Court has jurisdiction to hear an appeal from a Registrar’s Decision made under ss.101 and 102 of the TM Act: TM Act, s.104. The Registrar’s Decision, while made in response to an application under s.92 of the TM Act, was a decision made in accordance with s.101(1) of the TM Act. The appeal from the Registrar’s Decision is a fresh or “de novo” hearing within the original jurisdiction of the Court, therefore the Court is to decide the matter afresh and determine whether the Registrar’s Decision could or could not be supported: Jafferjee v Scarlett (1937) 57 CLR 115; [1937] ALR 404 (“Jafferjee”); CLR at 119 per Latham CJ; Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 180 ALR 119; (2000) 51 IPR 134 (“Malibu Boats”) at [6] per Finkelstein J. The Court “stands in the shoes” of the Registrar, with whom its jurisdiction is coextensive, to determine the application on its merits: TM Act, s.197; Woolworths Ltd v BP plc [2006] FCAFC 52; (2006) 150 FCR 134 (“Woolworths”) at [30] per Sundberg and Bennett JJ.
Summary dismissal
Although the Amended Dismissal Application is made on multiple bases: namely, non-compliance, strike-out and summary dismissal, it is convenient to commence with whether or not the Appeal ought to be summarily dismissed on the basis that it has no reasonable prospect of success for the purposes of s.17A of the FCCA Act and r.13.10 of the FCC Rules.
Section 17A(2) of the FCCA Act relevantly provides as follows:
(2) The Federal Circuit Court of Australia may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a) the first party is defending the proceeding or that part of the proceeding; and
(b) the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.
Rule 13.10 of the FCC Rules relevantly provides as follows:
The Court or a Registrar may order that a proceeding be stayed, or dismissed generally or in relation to any claim for relief in the proceeding, if the Court or the Registrar is satisfied that:
(a) the party prosecuting the proceeding or claim for relief has no reasonable prospect of successfully prosecuting the proceeding or claim; or
(b) the proceeding or claim for relief is frivolous or vexatious; or
(c) the proceeding or claim for relief is an abuse of the process of the Court.
Rule 13.10 of the FCC Rules replicates part of s.17A of the FCCA Act and the authorities on s.17A of the FCCA Act are useful in considering r.13.10 of the FCC Rules, as was observed by the Federal Court in relation to the equivalent provisions in s.31A of the Federal Court of Australia Act 1976 (Cth) (“FC Act”) and r.26.01 of the Federal Court Rules 2011 (Cth) (“FC Rules”) in Manday Investments Pty Ltd v Commonwealth Bank of Australia (No.3) [2012] FCA 751 at [8] per McKerracher J and Leica Geosystems Pty Ltd v Koudstaal [2012] FCA 1337 at [16] per Collier J respectively. Albeit that s.17A of the FCCA Act and r.13.10(a) of the FCC Rules might afford slightly different means of summary relief, the High Court’s observations in Spencer v The Commonwealth of Australia [2010] HCA 28; (2010) 241 CLR 118; (2010) 84 ALJR 612; (2010) 269 ALR 233 at [58]-[60] per Hayne, Crennan, Kiefel and Bell JJ (“Spencer”) can nevertheless be applied to the “no reasonable prospect” provisions in r.13.10(a) of the FCC Rules. In Spencer it was observed that:
a)no paraphrase of the expression “no reasonable prospect” can be adopted as a sufficient explanation of its operation, let alone definition of its content: Spencer at [58] per Hayne, Crennan, Kiefel and Bell JJ;
b)the expression “no reasonable prospect” cannot usefully be understood by the creation of some antinomy intended to capture most or all of the cases in which it can be said that there is “no reasonable prospect”: Spencer at [58] per Hayne, Crennan, Kiefel and Bell JJ;
c)the creation of a lexicon of words or phrases intended to capture the operation of the phrase “no reasonable prospect” is to be avoided: Spencer at [58] per Hayne, Crennan, Kiefel and Bell JJ;
d)where a plaintiff has no reasonable prospect of prosecuting a proceeding the proceeding could be described as “frivolous”, “untenable”, “groundless” or “faulty”, but these expressions, either alone or in combination, should not be understood as providing a sufficient chart of the metes and bounds of the relevant power, nor can reasonableness be sufficiently or completely illuminated by contrast with a claim which would be frivolous, untenable, groundless or faulty: Spencer at [59] per Hayne, Crennan, Kiefel and Bell JJ;
e)the power may only be exercised if a court is satisfied that the application has no reasonable prospect of success: Spencer at [60] per Hayne, Crennan, Kiefel and Bell JJ;
f)the power to dismiss an action summarily is not to be exercised lightly: Spencer at [60] per Hayne, Crennan, Kiefel and Bell JJ; and
g)full weight must be given to the expression as a whole, and it is sufficient, but important, to emphasise that the evident legislative purpose revealed by the text of the provision will be defeated if its application is read as confined to cases of a kind which fell within earlier, different procedural regimes: Spencer at [60] per Hayne, Crennan, Kiefel and Bell JJ.
In relation to the direct equivalent of s.17A of the FCCA Act in s.31A of the FC Act the Federal Court has observed in relation to the phrase “no reasonable prospect of success” that:
a)a court must be satisfied that the applicant has no reasonable prospect of success;
b)evidence of an ambivalent character will usually be sufficient to amount to reasonable prospects, and in a case where evidence can give colour and content to allegations, and where questions of fact and degree are important, a court should be more reluctant to dismiss a proceeding on the face of a pleading;
c)it was not Parliament’s intention to require a court to engage in lengthy and elaborate trials on an interlocutory basis for the purposes of determining whether or not a proceeding has no reasonable prospects of success. It may be necessary for the opposing party to provide no more than an outline of evidence, sufficient to show that there is a genuine dispute, to prevent the summary application becoming a trial;
d)if there is a real issue of fact or law to be decided, and the rights of the parties depend upon it, it is obviously appropriate that the matter goes to trial. It cannot be said, where there is a real factual dispute and that factual dispute must be resolved to determine whether the claim succeeds, that there is “no reasonable prospect of success”;
e)in determining if there are real issues of fact in issue so as to preclude summary judgment the courts must draw all reasonable inferences in favour of the non-moving party;
f)a summary dismissal proceeding ought not be used to shut out proceedings where, on a proposition of law, there may be room for doubt. On questions of law, an inquiry as to their merit should not be for the purpose of resolving them and also not simply to determine whether the argument is hopeless, but in order to decide if it is sufficiently strong to warrant a trial;
g)the mere presence of a trifling, implausible, tenuous or tangentially relevant factual controversy is not a bar to the exercise of the summary dismissal power; and
h)what is required is a prediction of the outcome of a trial on the merits but not an actual adjudication of those merits such that a court ought not dismiss a claim based on a predictive assessment of prospects, where it is possible that if the claim went to trial, it may succeed.
See Jackson v P/T Constructions WA Pty Ltd [2015] FCCA 1014 at [15] per Judge Lucev (and the various Federal Court authorities there cited).
The Court also observes that:
a)ADL, in making the summary dismissal application, bears the onus of persuading the Court to make such an order: Australian Securities & Investments Commission v Cassimatis [2013] FCA 641; (2013) 220 FCR 256; (2013) 302 ALR 671; (2013) 94 ACSR 623 (“Cassimatis”) at [46] per Reeves J;
b)an application for summary dismissal does not involve “mere pleading points” but is concerned with substance, and the Court may consider matters outside the pleadings: Qualify Me Pty Ltd v Get Qualified Australia Pty Ltd [2016] FCA 192 (“Qualify Me”) at [24] per Markovic J; Singh v Owners Strata Plan No 11723(No.3) [2012] FCA 1121 (“Singh (No.3)”) at [39] per Griffiths J;
c)where an applicant fails to identify any valid claim at all in the materials placed before the court a conclusion may be justified that there is not, and never will be, a valid claim to advance to the court. In Dowling v Commonwealth Bank of Australia [2008] FCA 59 at [30] per Reeves J (“Dowling”) the Federal Court said:
However, where the applicant has failed to identify any valid claim in the materials he or she has placed before the court and has failed to provide any factual material that could amount to a valid claim and the court concludes that the party has no reasonable prospects of ever being able to do so, the situation is fundamentally different. The complete absence of an identified and valid claim and, more importantly, the factual materials to found either that valid claim, or some other form of valid claim, along with the likelihood that the applicant has no reasonable prospects of ever being able to produce that material, justifies a conclusion that there is not, and never will be, a valid claim before the court. This obviously cannot be remedied by orders to amend or strike out the pleadings because no amount of pleadings will remedy the fundamental absence of a valid claim. Moreover, the complete absence of a valid claim in this sense ie no identification of a claim, no factual foundation for a claim and no prospect of providing either, must lead inexorably to the conclusion that the applicant has no prospects of prosecuting his or her proceedings to a successful conclusion.
d)the difficulties that arise when parties are not represented by legal practitioners are well-recognised: Croft v Evertop Investments Pty Ltd (No.2) [2011] FCA 749 at [11] to [12] per McKerracher J, and the Court must take care not to expect the standards that would be required of an experienced practitioner: Sullivan v North West Crewing Pty Ltd [2016] FCA 1130 at [3] per McKerracher J. The Court must remain alert to the possibility that beneath obfuscated advocacy, inadequate expressions and absent relevant material there may lurk an arguable case: Neil v Nott (1994) 121 ALR 148; (1994) 68 ALJR 509; ALR at 150 per Brennan, Deane, Toohey, Gaudron and McHugh JJ; Glew v Jasper [2010] WASCA 87 at [10] per Newnes JA and Murphy J. The Court must be cautious in summarily dismissing an application involving a litigant in person, and ought to act so as to diminish any disadvantage that a litigant in person suffers when faced with a lawyer in the adversarial process, but do so in a manner which does not confer upon the litigant in person an advantage over their represented opponent: Morton v Mitchell Products Pty Ltd (1996) 21 ACSR 497 at 513-514 per Sackville J.
In Banque Commerciale SA En Liquidation v Akhil Holdings Ltd (1990) 169 CLR 279; (1990) 64 ALJR 244; (1990) 92 ALR 53, CLR at 286 per Mason CJ and Gaudron J observed:
The function of pleadings is to state with sufficient clarity the case that must be met ... In this way, pleadings serve to ensure the basic requirement of procedural fairness that a party should have the opportunity of meeting the case against him or her and, incidentally, to define the issues for decision.
To be successful in the Appeal Mr Stafford must satisfy the Court that there was “use”, as prescribed in s.92(4)(b) of the TM Act, of the Trade Mark in the relevant period, and pursuant to s.100(1) of the TM Act it is Mr Stafford who bears the onus of proof of use (or rebuttal of non-use). This assumes that Mr Stafford is the registered owner of the Trade Mark (as defined in s.6(1) of the TM Act), which itself is a question of some debate. Assuming Mr Stafford is the registered owner, the case for Mr Stafford to meet and rebut is that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal of the Trade Mark by ADL: TM Act, s.92(4)(b). As set out below: see [31]-36] below, the claims made in substantive paragraphs of the Points of Claim do not grapple with this issue.
Claim One mistakes the nature of the de novo review in this Court. Because the Court is considering the matter afresh any denial of procedural fairness by the Registrar, or a delegate of the Registrar, is irrelevant: it is not necessary to decide whether the Registrar’s Decision is correct, procedurally or otherwise: Malibu Boats at [6] per Finkelstein J. The Court is to determine the Appeal on the merits of the original application under the TM Act, “and not whether an administrative officer [the Registrar] has lawfully discharged his duties”: Jafferjee at 126 per Dixon J. Even if it were an appeal proper, Claim One would not succeed. The allegation is that the Registrar’s Decision should be set aside because it was made after a hearing at which Mr Stafford was not present. That allegation is plainly untenable. The Registrar’s Decision at [3] records that Mr Stafford delivered submissions in person at a hearing on 22 August 2014. Mr Stafford was then given, at his request, the opportunity to make further submissions via lawyers at a reconvened hearing on 21 November 2014. At hearing on 21 November 2014, Mr Stafford was represented by Mr Kelvin Lord of Lord & Co (by telephone), who had also filed written submissions. Both Mr Lord and the firm are recognised as experienced in intellectual property matters. The Registrar thus gave Mr Stafford ample opportunity to make submissions on his own behalf and through his lawyers. Mr Stafford took those opportunities. Mr Stafford has filed no evidence, as he was entitled to do on the Appeal: Woolworths at [14] per Black CJ, and there is, therefore, no evidence to support Mr Stafford’s contention that it was a condition of the adjournment of the hearing to 21 November 2014 that he be personally present.
In Claim Two the statements made fail to articulate any claim or factual matter of relevance to the Appeal.
Claim Three sets out a series of assertions extraneous to the Appeal.
In relation to Claims Four and Five the reason for ordering the filing of the Points of Claim was because the Appeal did not sufficiently disclose or particularise the basis for the Appeal, and to then simply copy and paste the grounds of the Appeal is embarrassing, and the unparticularised assertions add nothing to the substance of the Appeal.
In Claim Six, and the three annexed letters, the assertions made are irrelevant, vague, discursive, and some are scandalous.
Mr Stafford’s Points of Claim fail to plead the basic elements he must establish. What is in the Points of Claim, namely the conduct of the hearing before the Registrar, contextual information and a repeat of the Appeal grounds, are all matters that are irrelevant to a de novo review. Nothing is pleaded in respect of the use of the Trade Mark, or the intention to use the Trade Mark, which is the basal element Mr Stafford is required to satisfy. There is no evidence from Mr Stafford before the Court relevant to the Appeal, or at all. Mr Stafford has not established an identifiable or valid claim on the Appeal, and there are not factual materials before the Court which would support an identifiable or valid claim on the Appeal, and given the Registrar’s Decision, the factual foundation for which the Court accepts, there would appear to be no prospect of Mr Stafford establishing a factual foundation which would give rise to a claim on the Appeal that has a reasonable prospect of success.
It follows from the foregoing that the Appeal enjoys no reasonable prospect of success, and indeed, in the Court’s view, no prospect of success at all, and in the circumstances the Appeal must be dismissed under r.13.10(a) of the FCC Rules.
Strike-Out
ADL alternatively seeks that the Points of Claim filed by Mr Stafford be struck out pursuant to r.16.21(1) of the FC Rules (applicable by virtue of r.1.05 and Sch.3, Pt.2, Item 11 of the FCC Rules), and whilst given the conclusion at [37] above that the Appeal enjoys no reasonable prospect of success it might strictly be unnecessary to consider the alternative strike-out application, the Court does so because the matter was fully argued, and lest its decision with respect to the no reasonable prospect of success argument is wrong.
Rule 16.21(1) of the FC Rules provides as follows:
A party may apply to the Court for an order that all or part of a pleading be struck out on the ground that the pleading:
(a) contains scandalous material; or
(b) contains frivolous or vexatious material; or
(c) is evasive or ambiguous; or
(d) is likely to cause prejudice, embarrassment or delay in the proceeding; or
(e) fails to disclose a reasonable cause of action or defence or other case appropriate to the nature of the pleading; or
(f) is otherwise an abuse of the process of the Court.
The Court notes that “points of claim” while not expressed in the exhaustive definition of “pleadings” in Schedule 1 of the FC Rules, is taken to be captured by r.16.21(1) of the FC Rules and therefore can be struck out pursuant to that provision: Re Nazdall Pty Ltd [2013] FCA 94; (2013) 210 FCR 264 at [24]-[30] per Reeves J. In Andrews v Australia & New Zealand Banking Group Limited [2011] FCA 388; (2011) 281 ALR 113 at [30] per Gordon J the Federal Court confirmed it was not the presence or absence of a label such as “pleading” or “statement of claim” that is definitive and suggests compliance, or applicability for that matter, it is the purpose that is achieved by the document that is being referred to.
The relevant principles in relation to an application under r.16.21 of the FC Rules are as follows:
a)the power in r.16.21 of the FC Rules to strike out a pleading or portions of a pleading is discretionary: Australian Competition & Consumer Commission v Pauls Ltd [2000] ATPR 41-747 at [10] per O'Loughlin J, cited in Radisich v McDonald [2010] FCA 762; (2010) 198 IR 244 (“Radisich”) at [20] per Gilmour J;
b)the power is one that should be used sparingly: Radisich at [20] per Gilmour J;
c)generally, the power will only be used in a plain and obvious case: Polar Aviation Pty Ltd v Civil Aviation Safety Authority [2012] FCAFC 97; (2012) 203 FCR 325 (“Polar Aviation”) at [43] per Perram, Dodds‑Streeton and Griffiths JJ, adopting the reasons in Allstate Life Insurance Company v Australian & New Zealand Banking Group Ltd (1994) 217 ALR 226 at 236 per Beaumont J; and
d)ultimately, the question will turn on whether it is necessary to strike out a pleading in the interests of justice: John Holland Pty Ltd v The Maritime Union of Australia [2009] FCA 437 at [60] per Graham J.
A “reasonable cause of action” means one with some chance of success if regard is had only to the allegations in the pleadings relied upon by the claimant: Polar Aviation at [43] per Perram, Dodds-Streeton and Griffiths JJ; National Mutual Property Services (Aust) Pty Ltd v Citibank Savings Ltd (No.4) (1995) 132 ALR 514 at 529 per Lindgren J. For the reasons set out at [31]-[37] above in relation to why there is no reasonable prospect of success arising from the Points of Claim in its present form, it is plain and obvious that there is not a reasonable cause of action with some chance of success: indeed, on the basis of the present Points of Claim Mr Stafford has no chance of success: see [37] above. The Points of Claim should, therefore, be struck out as failing to disclose a reasonable cause of action: FC Rules, r.16.21(1)(e).
A pleading may be embarrassing and may be struck out pursuant to r.16.21(1)(d) of the FC Rules if it is susceptible to various meanings, contains inconsistent allegations, contains alternatives which are confusingly intermixed, contains irrelevant allegations which will tend to increase expense, or is unintelligible or vague: Qualify Me at [21] per Markovic J; Spiteri v Nine Network Australia Pty Ltd [2008] FCA 905 at [22] per Edmonds J; Shelton v National Roads & Motorists Assn Ltd [2004] FCA 1393; (2004) 51 ACSR 278 at [18] per Tamberlin J.
In Re C2C Investments Pty Ltd, in the matter of C2C Investments Pty Ltd v Leigh (No.3) [2012] FCA 680 at [5] per Yates J the Federal Court observed as follows:
5 As a matter of general approach, it does not follow from the fact that scandalous matter has been stated in a document or affidavit filed in the Court that the matter is ‘scandalous’ within the meaning of these rules. The question is really whether the scandalous matter, so stated, is extraneous to the issues raised in the proceeding on which evidence could properly be brought forward: Millington v Loring (1880) 6 QBD 190 at 195; 196-197. If the scandalous matter is extraneous, then, generally speaking, it should be struck out: [see, for example, Wu v Avin Operations Pty Ltd (No 2) [2006] FCA 792; Kowalski v Mitsubishi Motors Australia Ltd [2009] FCA 1289.
ADL specifically refers to the Points of Claim as causing “prejudice and embarrassment and delay” in the hearing of the matter, while also submitting that some material is scandalous.
The Court particularly notes that Mr Stafford’s allegations of corruption, deception and underhandedness in the July 2015 Letter and the November 2015 Letter are not only scandalous, but also completely unfounded, as well as being unnecessary in a de novo review.
Having regard to the conclusions expressed with respect to the substantive paragraphs of the Points of Claim as set out at [31]-[37] above, and the authorities and principles set out immediately above at [41]-[44], the substantive paragraphs of the Points of Claim ought to be struck out as follows:
a)[1] pursuant to r.16.21(1)(d)-(e) of the FC Rules;
b)[2] pursuant to r.16.21(1)(e) of the FC Rules;
c)[3] pursuant to r.16.21(1)(e) of the FC Rules;
d)[4] and [5] pursuant to r.16.21(1)(d)-(e) of the FC Rules; and
e)[6], and the annexed letters, pursuant to r.16.21(1)(a) and (d)-(e) of the FC Rules.
It follows from the conclusions expressed in the previous paragraph that the entire substantive content of the Points of Claim has been struck out, and it follows therefrom that the Points of Claim ought therefore be struck out in their entirety.
Leave to re-plead
In Takemoto v Moody’s Investors Service Pty Ltd [2014] FCA 1081 (“Takemoto”) the Federal Court said that whilst “caution should be exercised before striking-out a pleading, even greater caution should be exercised before refusing a party an opportunity to re-plead”: Takemoto at [87] per Flick J, and that a party will normally be permitted to re-plead, particularly where the cause of action concerned is complex and where prior opportunities have not been extended: Takemoto at [89]–[90] per Flick J.
In Nulyarimma & Ors v Thompson & Ors (1999) 96 FCR 153; (1999) 165 ALR 621 at [208] per Merkel J (with whom Wilcox and Whitlam JJ relevantly agreed), the Federal Court cited with approval the following observations made in Thorpe v Commonwealth (No.3) (1997) 71 ALJR 767; (1997) 144 ALR 677 (“Thorpe (No.3)”), ALRJ at 774-775 per Kirby J:
Even if a party makes good its attack on another's pleading, a court will ordinarily permit the opponent to reframe the pleading so long as it is clear that there is point in doing so and that the further time and opportunity will have utility.
Mr Stafford had an opportunity to file Points of Claim by reason of the August 2015 Orders, but failed to do so. Mr Stafford had an opportunity by reason of the February 2016 Orders to file Points of Claim, and whilst he did so, those Points of Claim have no reasonable prospect of success and disclose no reasonable cause of action, and for reasons set out above are to be struck out in their entirety (in the alternative to the proceedings being dismissed because no reasonable cause of action is disclosed). Mr Stafford has therefore had two opportunities, not including the originating process, to file Points of Claim disclosing a cause of action, but has failed to do so. The Court has considered Mr Stafford’s status as a self-represented litigant, but that does not, of itself, explain or excuse his failure to comply with the August 2015 Orders or, necessarily, his inability to frame Points of Claim relevant to the issues on the Appeal. Further, Mr Stafford made it apparent at hearing that what he seeks to do is not argue the Appeal, but to have an initial hearing to determine ownership of the Trade Mark: Transcript at page 14. Mr Stafford has therefore evinced an ongoing intention not to prosecute, either at all or with due diligence, the actual case before the Court for determination. Furthermore, although Mr Stafford evinced an intention to seek legal advice to have the Points of Claim amended the Court notes that:
a)Mr Stafford had engaged lawyers in these proceedings, who were experienced intellectual property lawyers, who withdrew, and there is no evidence before the Court as to why they withdrew;
b)Mr Stafford submitted at hearing that he is unable to afford to have lawyers represent him in these proceedings: Transcript at page 12; and
c)when lawyers did represent him before the Registrar’s delegate Mr Stafford asserts that he was denied procedural fairness because although he was represented he alleges he was not personally present during the hearing at which he was represented by lawyers.
In all of the above circumstances, the Court simply has no confidence that were Mr Stafford to be allowed to re-plead the Points of Claim that any further Points of Claim would be drafted in a manner such as to disclose a proper cause of action if drafted by Mr Stafford, or, that, Mr Stafford can or will engage lawyers to prepare any further Points of Claim on his behalf. The Court notes that there is no evidence of lawyers prepared to act on Mr Stafford’s behalf, or of any advice given that the Appeal has prospects of success, or that Mr Stafford is in a financial position to fund lawyers to either prepare further Points of Claim or to act for him for the duration of the proceedings.
Having regard to the matters set out at [49]-[52] above, the Court has concluded that leave to re-plead would lack utility: Thorpe (No.3), ALJR at 774-775 per Kirby J, and ought not to be granted.
Non-compliance
ADL also seeks dismissal of the Appeal for non-compliance pursuant to rr.13.03A(a), (b) and (e) and 13.03B(1)(a) of the FCC Rules and once again whilst it may be strictly unnecessary to consider this question given the Court’s views with respect to the issues of no reasonable prospect of success and the strike-out application and re-pleading, the Court does so because the matter was argued and lest the Court’s other conclusions be wrong.
Rules 13.03A(a), (b) and (e) and 13.03B(1)(a) of the FCC Rules provide as follows:
13.03A When a party is in default
(1) For rule 13.03B, an applicant is in default if the applicant fails to:
(a) comply with an order of the Court in the proceeding; or
(b) file and serve a document required under these Rules; or …
(e) prosecute the proceeding with due diligence.
13.03B Orders on default
(1) If an applicant is in default, the Court may order that:
(a) the proceeding be stayed or dismissed as to the whole or any part of the relief claimed by the applicant; or…
In Rothnie v St John of God Hospital (Subiaco) [2014] FCCA 159 (“Rothnie”) this Court set out the law with respect to r.13.03B(1) of the FCC Rules at [10]-[20] per Judge Lucev. In Rothnie at [20] per Judge Lucev the Court said:
20. Rule 13.03B(1) of the FCC Rules therefore gives the Court a discretionary power to make an order of the type therein prescribed. It is default in compliance with an order of the Court alone that triggers the exercise of the discretionary power in r.13.03B(1) of the FCC Rules, and a range of factors dependant on the facts of each case may then influence how the discretion is exercised. The exercise of the discretion is not, however, commonplace: Gao VR at 385 per Ormiston JA; VSCA at para.14 per Ormiston JA, approved in Digilin Appeal ALR at 23 per Tamberlin, Greenwood and Collier JJ; FCAFC at para.33 per Tamberlin, Greenwood and Collier JJ.
In Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388; (1990) 98 ALR 200; [1991] ATPR 41-082; FCR at 396 per Wilcox and Gummow JJ (“Lenijamar”) the Full Court of the Federal Court identified two non-exhaustive situations as “obvious candidates” for the exercise of the power under a rule analogous to r.13.03B of the FCC Rules, the two being:
a)cases in which the history of non-compliance by an applicant is such as to indicate an inability or unwillingness to co-operate with the court and the other party or parties in having the matter ready for hearing within an acceptable period; and
b)cases in which the non-compliance is continuing and occasioning unnecessary delay, expense or other prejudice to the respondent.
In Professional Administration Service Centres Pty Ltd v Federal Commissioner of Taxation [2012] FCAFC 180; (2012) 91 ATR 546; (2012) 295 ALR 52 (“PASC Pty Ltd”) at [44] per Edmonds, McKerracher and Nicholas JJ the Full Court of the Federal Court provided a list of non-exhaustive relevant factors to guide the Court in the exercise of power, as follows:
(i) the nature of the default involved;
(ii) the duration of the default and whether it is continuing;
(iii) the circumstances in which the orders, in respect of which default has occurred, were made including whether the orders made accorded with the practice of the court in making orders of that kind;
(iv) the circumstances which occurred between the time of making the orders and the order for the dismissal of the proceeding, including whether any attempt was made by the defaulting party to amend or set aside the orders to accommodate or deal with these intervening circumstances;
(v) whether the continuing default is occasioning unnecessary delay, expense or other prejudice or unacceptable burden on the respondent;
(vi) the attitude of the applicant to the default and the court's judgment as to whether or not the applicant genuinely wishes the matter to go to trial within a reasonable period;
(vii) the stage that the proceeding has reached – whether they have only recently been commenced; whether it has been commenced for some time but not advanced due, in whole or in part, to the default; or whether the proceeding is in an advanced state ready or nearly ready for hearing;
(viii) the likely disruption to hearing dates or, if not fixed, to setting the matter down for hearing at an early date;
(ix) the consequences to the applicant of dismissing the proceeding.
Seriousness or significance of a default is a matter relevant to the question of whether default judgment should be given: Deppro Pty Ltd v Daly [2006] FCA 1727 at [45] per Nicholson J; ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577 at [27] per Jessup J.
The defaults of Mr Stafford in complying with the orders of the Court thus far in these proceedings have been:
a)failure to file Points of Claim in accordance with order 1 of the Court’s August 2015 Orders, with no Points of Claim filed prior to the 5 January 2016 application in a case seeking summary dismissal of the Appeal;
b)failure to serve a notice of address for service on ADL by 4 March 2017 as ordered by the February 2016 Orders, and not doing so until 15 March 2016; and
c)an ongoing failure to serve the Points of Claim on ADL.
ADL asserted that there was also a failure to file the Points of Claim by 25 March 2016 as prescribed by order 1 of the February 2016 Orders. That, however, is wrong, because the Points of Claim were filed on 29 March 2016, that being the first date that the Court Registry was open for business following 25 March 2016, which was Good Friday, and Mr Stafford was therefore entitled to, and only able to, file the Points of Claim on 29 March 2016: Acts Interpretation Act 1901 (Cth), s.36(2).
Mr Stafford failed to file the Points of Claim in accordance with the August 2015 Orders, but the Court, having heard from him, on 26 February 2016 made the February 2016 Orders which extended time for compliance with the requirement to file and serve Points of Claim to 25 March 2016.
Mr Stafford’s non-compliance with the August 2015 Orders:
a)delayed the progress of the matter for almost five months;
b)caused the hearing on the preliminary issues listed for 11 March 2016 to be vacated;
c)resulted in ADL filing the 5 January 2016 application in a case seeking summary dismissal of the Appeal; and
d)required the Court to sit, and ultimately afford a further opportunity to Mr Stafford to file and serve Points of Claim by extending time to comply with the August 2015 Orders.
The Court bears in mind that:
a)Mr Stafford was on notice for some time of his failure to comply with the August 2015 Orders and was advised by ADL to contact the Court to rectify the default, and he confirmed by telephone he would do so, yet he took no action or made any attempt to comply thereby causing ADL to file the 5 January 2016 application in a case seeking summary dismissal of the Appeal. In some respects: see [63] above, the failure to comply with the FCC Rules and Mr Stafford’s conduct has occasioned unnecessary delay and prejudice to ADL: Lenijamar at 396 per Wilcox and Gummow JJ; and
b)the unchallenged evidence of Mr Van Der Westhuizen is that Mr Stafford told him that without a “reasonable settlement” Mr Stafford would “be the biggest pain in the arse you have ever seen”: Van Der Westhuizen May 2016 Affidavit and Annexure RVDW-3, a statement indicative of a positive intention on Mr Stafford’s part of an unwillingness to cooperate with ADL in having the matter ready for hearing within an acceptable period: Lenijamar at 396 per Wilcox and Gummow JJ.
It has been Mr Stafford’s conduct and non-compliance with the Court’s Orders that has caused delays, and the lack of progress toward a hearing of the matter is reflective of his lack of diligence in prosecuting the matter: FCC Rules, r.13.03A(1)(e). Further, when one considers that the purpose of the Points of Claim is to provide ADL with an outline of the case it is required to meet, the failure to serve the Points of Claim on ADL can be said to be serious and continuing: PASC Pty Ltd at [44(i)-(ii)] per Edmonds, McKerracher and Nicholas JJ, and although the Points of Claim are available on the Commonwealth Law Courts portal, Mr Stafford’s failure to serve them is indicative of an unwillingness to cooperate with ADL for the purposes of these proceedings, and demonstrates a lack of diligence by Mr Stafford in relation to these proceedings and their prosecution by him, a position entirely consistent with the unchallenged evidence of what Mr Stafford told Mr Van Der Westhuizen: see [64(b)] above.
Mr Stafford’s non-compliance also extends to non-compliance with the FCC Rules. The Van Der Westhuizen May 2016 Affidavit adverted to the difficulty of ADL in contacting and serving Mr Stafford at the address provided in the Intention to Withdraw Notice. Mr Stafford was advised in the Intention to Withdraw Notice that he should appoint another lawyer or file and serve a Notice of Address for Service, within seven days. The FCC Rules require a party to give an address for service, and to file and serve a Notice of Address for Service within seven days of any change in representation that occurs during the proceedings: FCC Rules, rr.6.01(1) and 6.02.
Mr Stafford emailed the Notice of Address for Service to ADL on 14 March 2016. Pursuant to r.6.12(d) of the FCC Rules that was taken to have been served on 15 March 2016, therefore some 11 days after the time required for service by the February 2016 Orders.
In relation to the Notice of Address for Service there were therefore two types of non-compliance: one with the FCC Rules, the other with the February 2016 Orders.
The default regarding the Notice of Address for Service, being a default under both rr.13.03B(1)(a) and (b) of the FCC Rules is not significant and lacks sufficient seriousness to warrant dismissal of the Appeal for non-compliance in the Court’s view, if viewed in isolation: PASC Pty Ltd at [44(i)-(ii)] per Edmonds J, McKerracher J, Nicholas J. It does, however, have some weight when considering the defaults cumulatively and the intention of Mr Stafford to prosecute these proceedings with diligence and in a just and expedient manner: PASC Pty Ltd at [44(vi)-(viii)] per Edmonds, McKerracher and Nicholas JJ.
Mr Stafford’s non-compliance with the August 2015 Orders was a serious non-compliance, particularly in circumstances where it delayed the progress of the matter for almost five months, caused a hearing to be vacated, and was not remedied until the Court ordered that it be remedied, and likewise the failure to serve the Points of Claim is, in the circumstances of Mr Stafford’s approach to prosecution of the proceedings, also a serious one. On balance, and it must be said the balance is a very fine one, the non-compliance by Mr Stafford being indicative of an inability or unwillingness to cooperate, certainly with ADL, and the consequences of the non-compliance being delay, expense and the ongoing necessity to deal with a case that, in any event, has no reasonable prospect of success and does not set up a reasonable cause of action, the Court is persuaded that the proceedings ought also be dismissed pursuant to r.13.03B(1)(a) of the FCC Rules by reason of Mr Stafford’s defaults under r.13.03A(1)(a), (b) and (e) of the FCC Rules.
Conclusion and orders
The Court has therefore concluded that:
a)the Appeal has no reasonable prospect of success, and therefore the Appeal must be dismissed pursuant to r.13.10(a) of the FCC Rules;
b)alternatively, if it were required to do so, the Court would strike-out the Appeal pursuant to r.16.21 of the FC Rules (applied pursuant to r.1.05(3) and Sch.3, Pt.2, Item 11 of the FCC Rules) in its entirety, and not grant leave to re-plead; and
c)alternatively, if it were required to do so, the Court would dismiss the Appeal pursuant to r.13.03B(1)(a) of the FCC Rules by reason of Mr Stafford’s default pursuant to r.13.03A(1)(a), (b) and (e) of the FCC Rules.
The Court will hear the parties as to costs.
I certify that the preceding seventy-two (72) paragraphs are a true copy of the reasons for judgment of Judge Antoni Lucev
Associate:
Date: 7 December 2018
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