WH Books Ltd & Ors v Miller & Anor

[1998] FCA 813

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 446  of  1998

BETWEEN:

WH BOOKS LTD
First Applicant

BRITT ALLCROFT (THOMAS) LTD
Second Applicant

REED CONSUMER BOOKS LTD
Third Applicant

AND:

ROBYN LEANNE MILLER
First Respondent

THE THOMAS SHOP
Second Respondent

JUDGE:	EMMETT J
DATE:	26 JUNE 1998
PLACE:	SYDNEY

THE COURT ORDERS THAT:

1. The proceedings be transferred to the South Australian Registry of the Federal Court of Australia pursuant to O 10 r 1(2)(f) of the Federal Court Rules.

1. The costs of the notice of motion be costs of the parties in the proceedings.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 446  of  1998

BETWEEN:

WH BOOKS LTD
First APPLICANT

BRITT ALLCROFT (THOMAS) LTD
Second APPLICANT

REED CONSUMER BOOKS LTD
Third APPLICANT

AND:

ROBYN LEANNE MILLER
First RESPONDENT

THE THOMAS SHOP
Second RESPONDENT

JUDGE:	EMMETT J
DATE:	26 JUNE 1998
PLACE:	SYDNEY

REASONS FOR JUDGMENT

HIS HONOUR:   I have before me an application by the Respondents for an order under Order 10 rule 1(2)(f) that the proceedings be transferred to the South Australian District Registry of the Federal Court.  That application is opposed by the Applicants. 

The proceedings involve claims of infringement of trade marks and contravention of the Trade Practices Act 1974 (Cth) and the Fair Trading Act 1987 (SA). Briefly, the Applicants are entitled to intellectual property in relation to a series of children's stories and other products involving “Thomas the Tank Engine”. The Respondent has established a business in South Australia dealing with the sale of goods including books, videos and the like. The business includes the sale of Thomas the Tank Engine range of merchandise. The complaint by the Applicants arises out of the use by the Respondent of the name “The Thomas Shop” in connection with that business.

While the Respondent has registered the name “The Thomas Shop” under the Business Names Act 1996 (SA), the Applicants have not granted to her any right to use the name assuming use of the name would otherwise be an infringement of the Applicants’ rights.

The evidence before me indicates that the Respondent carries on business only in the suburb of Glenelg in South Australia.  The business is operated solely by the Respondent and is described as an extremely small one.  The Respondent does not have any employees, although her mother assists her in the business on a voluntary basis.  The Respondent has very little business from outside South Australia although there is some evidence that she has supplied mail orders from South Australia.  That, however, represents less than one per cent of the business of the Respondent.  The evidence also indicates that the Respondent has in recent times been diagnosed as suffering from an illness which could interfere with her capacity to travel. 

The Respondent does not suggest that the choice of New South Wales was in any way capricious.  The solicitor for the Applicants has had a significant connection with the Applicants over some years and is located in Sydney.  It is suggested that the Applicants have established a substantial and valuable reputation and goodwill in Australia in relation to the intellectual property in question and that the evidence to establish that reputation and goodwill would not be limited to evidence from South Australia.  At this stage it is not possible to identify all of the witnesses who would be called by the Applicants in support of their claim.  However, it is possible that there would be evidence from consumers, retailers or licensees of the Applicants’ products about matters going to reputation, including the distribution and sale of the Applicants’ product in Australia, as well as consumer reaction to the Respondent's conduct.  It is suggested that such evidence would not necessarily be restricted to consumers, retailers or licensees in South Australia.

It is clear that a hearing of the proceedings away from Adelaide would be of significant inconvenience to the Respondent.  On the other hand, a hearing in South Australia would not be of such significance to the Applicants when compared with a hearing in Sydney. 

Senior counsel for the Applicants has pointed out what I accept to be a relevant distinction between the venue for trial on the one hand and the proper place for the proceedings on the other.  Prima facie, the proper place is the place where the trial should be held, the proper place being at present the place where the proceedings were commenced.  There is no reason why, in an appropriate case, however, a trial could not be conducted otherwise than in Sydney in this case.

I do not think that it would be contested that the appropriate place for the hearing of these proceedings, at least in part, would be Adelaide.  The question, however, is whether it is appropriate to manage these proceedings in Sydney rather than in Adelaide in circumstances where it seems more likely than not that the trial will be conducted in Adelaide.  As has been pointed out, directions hearings are regularly conducted by video link and there is no reason put forward as to why a video link would not be an appropriate means of dealing with directions, whether the proceedings were retained in the Sydney registry or transferred to the Adelaide registry.

In National Mutual v Sentry Corporation (1988) 19 FCR 155, the Full Court considered the principles applicable to an application such as this. The power conferred by the Federal Court of Australia Act 1976 (Cth) and the Rules recognise the national character of the Court. The factors which the Court is entitled to take into account in considering whether one city is more appropriate than another for interlocutory hearings or for the trial itself are numerous. The court must weigh those factors in each case.

However, the Court must be satisfied that there is sound reason to direct that the proceedings be conducted or continued otherwise than where they have been commenced.  The starting point is that the proceedings have been commenced at a particular place.  If it was suggested that that was a capricious choice then that might be a reason why the Court would direct that the place be changed.  However, the balance of convenience is important and its weight will vary from case to case.  Ultimately the test is where can the case be conducted or continued most suitably, bearing in mind the interests of all the parties, the ends of justice and the determination of the issues between them and the most efficient administration of the Court.

There is good reason why the management of this case could be conducted in Sydney and heard in Adelaide. However, the burden on the Respondent of having to conduct proceedings in the Sydney registry would be significantly greater than the burden imposed upon the Applicants of having to conduct proceedings in the Adelaide registry.  I am also mindful of the fact that it would be undesirable for the proceedings to be managed in Sydney and then transferred to the Adelaide registry to another judge.  Alternatively, it would be undesirable for a Sydney judge to travel to Adelaide simply for the purposes of hearing a case of this nature.  It is ultimately a balancing exercise.  In my view, I think the balance is just weighed in favour of the Respondent.  Accordingly, I think it is appropriate that, given that it is more likely than not that the trial will take place in Adelaide, the management should also take place in Adelaide. 

Accordingly, I propose to make an order as asked in the notice of motion. The costs of the motion should be the parties' costs in the proceedings.

I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett

Associate:

Dated:             26 June 1998

Counsel for the Applicant:	D.K. Catterns QC/S.J. Goddard
Solicitor for the Applicant:	Mallesons Stephen Jaques
Counsel for the Respondent:	S.R. Donaldson
Solicitor for the Respondent:	Andersons Solicitors
Date of Hearing:	26 June 1998
Date of Judgment:	26 June 1998