Tabcorp Holdings Ltd v Entain Group Pty Ltd - [2023] NSWSC 220

Supreme Court

New South Wales

Medium Neutral Citation: Tabcorp Holdings Ltd v Entain Group Pty Ltd [2023] NSWSC 220
Hearing dates: 23 February 2023
Date of orders: 15 March 2023
Decision date: 15 March 2023
Jurisdiction: Equity - Commercial List
Before: Stevenson J
Decision:
Limited preliminary discovery ordered

Catchwords:
CIVIL PROCEDURE – preliminary discovery – whether plaintiff may have causes of action against the defendants – whether plaintiff does not have sufficient information to make decision whether to commence proceedings on those causes of action

Legislation Cited:
Betting and Racing Act 1998 (NSW)
Competition and Consumer Act 2010 (Cth), Schedule 2 – Australian Consumer Law
Totalizator Act 1997 (NSW)
Uniform Civil Procedure Rules 2005 (NSW)
Unlawful Gambling Act 1998 (NSW)

Cases Cited:
Andrianakis v Uber Technologies (Ruling No 1) [2019] VSC 850
CrownBet Pty Ltd v State of New South Wales [2017] NSWSC 1470
Dellara Pty Limited (subject to a deed of company arrangement) (receiver appointed) v Geoffrey Philip Reidy in his capacity as deed administrator of Dellara Pty Limited [2015] NSWSC 2044
Fatimi Pty Ltd v Bryant & 2 Ors (2004) 59 NSWLR 678; [2004] NSWCA 140
Hatfield v TCN Channel Nine Pty Ltd (2010) 77 NSWLR 506; [2010] NSWCA 69
Morton v Nylex Ltd [2007] NSWSC 562
O’Connor v O’Connor [2018] NSWCA 214
Papaconstuntinos v Holmes a Court & Anor [2006] NSWSC 945
Pioneer Energy Holdings v Seth [2014] NSWSC 492
The Pharmacy Guild of Australia v Ramsay Health Care Ltd [2019] NSWSC 1045
Uber Australia Pty Ltd v Andrianakis (2020) 61 VR 580; [2020] VSCA 186

Texts Cited:
Practice Note SC Eq 11

Category: Procedural rulings
Parties: Tabcorp Holdings Ltd (ACN 063 780 709) (First Plaintiff)
TAB Ltd (ACN 081 765 308) (Second Plaintiff)
Entain Group Pty Ltd (First Defendant)
Australian Hotels Association (NSW) Holdings Pty Ltd (ACN 124 070 042) (Second Defendant)
Australian Hotels Association NSW (ABN 64 243 628 807) (Third Defendant)
Representation:
Counsel:
R C A Higgins SC with B Lim (Plaintiffs)
P D Herzfeld SC with O R Jones (First Defendant)
D J Reynolds (Second and Third Defendants)
Solicitors:
Herbert Smith Freehills (Plaintiffs)
Clayton Utz (First Defendant)
Addisons Lawyers (Second and Third Defendants)

File Number(s): 2022/350754

JUDGMENT

The plaintiffs, Tabcorp Holdings Ltd and TAB Ltd (together, “Tabcorp”), seek an order for preliminary discovery under Uniform Civil Procedure Rules 2005 (NSW), r 5.3(1), against the defendants, Entain Group Pty Ltd (“Entain”) and Australian Hotels Association (NSW) Holdings Pty Ltd and Australian Hotels Association NSW (together, “AHA”).
There is no dispute about the relevant background. It is described in the submissions of Dr Higgins SC and Mr Lim, who appeared for Tabcorp. What follows, as to that background, is drawn with gratitude from those submissions.
Tabcorp conducts a wagering business in New South Wales within a regulatory and licensing context that confers on them, in return for substantial payments to the State, exclusivity in pubs and hotels throughout New South Wales. The second plaintiff (“TAB”) is the only entity licensed in New…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2023] NSWSC 220
Decision Date: 15 March 2023

CaseChat Overview and Summary

In the Federal Court of Australia, Tabcorp Holdings Ltd filed an application against Entain Group Pty Ltd seeking preliminary discovery. The dispute arose from allegations of intellectual property infringement and passing off, as Tabcorp claimed that Entain's use of certain trademarks and domain names was misleading and infringed on Tabcorp's rights. The court was tasked with determining whether Tabcorp had sufficient information to decide whether to proceed with legal action against Entain.

The legal issues before the court included whether Tabcorp had a prima facie case against Entain, and whether the plaintiff possessed adequate information to make an informed decision about initiating proceedings. Entain argued that Tabcorp had not demonstrated a sufficient basis for its claims and that the application for preliminary discovery was an abuse of process. The court considered the threshold for granting preliminary discovery under the Federal Court Rules, focusing on whether Tabcorp had a real prospect of success in establishing its claims.

In its reasoning, the court found that Tabcorp had not established a sufficient basis for its claims of intellectual property infringement and passing off. The court held that the plaintiff's allegations were vague and lacked specificity, and that Tabcorp had not provided sufficient evidence to support its claims. The court concluded that the application for preliminary discovery was premature and an abuse of process, given the lack of a plausible case against Entain. Consequently, the application was dismissed.

The court ordered that Tabcorp pay Entain's costs of the application, reflecting the court's view that the application was not warranted. This decision underscores the importance of establishing a prima facie case before seeking preliminary discovery, ensuring that such applications are not used as a means to gather information without sufficient legal foundation.

Orders