United Parcel Service of America, Inc v UPS Wholesalers of Australia Pty Ltd

[1995] FCA 848

NOT SUITABLE FOR DISTRIBUTION

FEDERAL COURT OF AUSTRALIA       )
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 365 of 1995
  )
GENERAL DIVISION                 )

BETWEEN:    UNITED PARCEL SERVICE OF AMERICA, INC

First Applicant

UPS PTY LIMITED

Second Applicant

AND:    UPS WHOLESALERS OF AUSTRALIA PTY LIMITED

First Respondent

VAN KAMPEN HOLDINGS PTY LIMITED T/AS UPS COMPANY OF WA

Second Respondent

CORAM: Burchett J.
PLACE: Sydney
DATE : 14 August 1995

REASONS FOR JUDGMENT

BURCHETT J.:

In this matter, I have to deal with a contested application to order that the proceedings be transferred to the Perth Registry, made upon the basis that the proper place for the further conduct of the matter is in Western Australia rather than in New South Wales.  It appears to be a fairly small dispute arising in respect of the trade mark rights of the applicants, and under s. 52 of the Trade Practices Act.  The parties operate in different spheres of commerce, but on the other hand the first respondent has a name which bears
some similarity, quite plainly, to the name of each of the applicants and to the mark.

In my opinion it would be unfair to the respondents to require them to come to Sydney to meet this relatively small claim in relation to their conduct, at least 80 per cent of which seems to have occurred locally in Western Australia, while the balance of their relevant activities has been scattered over an area as far afield as New Zealand.  It is not concentrated, even as regards the small balance, in New South Wales.  The respondent has its centre of operations in Western Australia.  The applicants, on their own evidence, obtain their instructions from the United States, although the second applicant carries on business in New South Wales.

In all the circumstances, I think it is proper to accede to the application; but subject to this: that production of documents pursuant to the directions I have already given in respect of discovery may take place, so far as the applicants are concerned, in Sydney, since the respondents plainly have legal advisers here, at least at the present stage.

I think the costs of the application should be the respondents' cost in the cause.

I certify that this and the preceding page are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett.

Associate:

Date: 20 October 1995

Counsel for the Applicants:         Ms S.J. Goddard

Solicitors for the Applicants:          Sprusons

Counsel for the Respondents:        Ms J.R. Baird

Solicitors for the Respondents:     Tan & Tan

Date of hearing:  14 August 1995