Cadbury Schweppes Pty Ltd (ACN 004 551 473) v Darrell Lea Chocolate Shops Pty Ltd (ACN 000 498 386) (No 2) [2007] FCAFC 102

FEDERAL COURT OF AUSTRALIA

Cadbury Schweppes Pty Ltd (ACN 004 551 473) v Darrell Lea Chocolate Shops Pty Ltd (ACN 000 498 386) (No 2) [2007] FCAFC 102 CADBURY SCHWEPPES PTY LTD (ACN 004 551 473) v DARRELL LEA CHOCOLATE SHOPS PTY LTD (ACN 000 498 386) VID774 OF 2006

BLACK CJ, EMMETT & MIDDLETON JJ

9 July 2007

MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID774 OF 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: CADBURY SCHWEPPES PTY LTD (ACN 004 551 473)

Appellant

AND: DARRELL LEA CHOCOLATE SHOPS PTY LTD (ACN 000 498 386)

Respondent

JUDGES: BLACK CJ, EMMETT & MIDDLETON JJ DATE OF ORDER: 9 July 2007

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1. The appellant's notice of motion dated 5 June 2007 be dismissed. 2. The parties within 7 days file and serve written submissions on the question of the costs of the appellant's notice of motion. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID774 OF 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN: CADBURY SCHWEPPES PTY LTD (ACN 004 551 473)

Appellant

AND: DARRELL LEA CHOCOLATE SHOPS PTY LTD (ACN 000 498 386)

Respondent

JUDGES: BLACK CJ, EMMETT & MIDDLETON JJ

DATE: 9 July 2007

PLACE: MELBOURNE

REASONS FOR JUDGMENT 1 These reasons should be understood as amplifying the reasons of 21 May 2007. Terms used should be understood as they were used in those reasons. 2 Cadbury brought a proceeding in the Court in which it claimed that the use by Darrell Lea of a shade of purple in connection with its chocolate confectionary business may cause consumers to conclude, mistakenly, that Darrell Lea products are Cadbury products or that there is some connection between the respective chocolate confectionary businesses of Darrell Lea and Cadbury. A judge of the Court made orders that Cadbury's proceeding be dismissed with costs. On 21 May 2007, the Full Court upheld an appeal from those orders and set them aside on the ground, broadly, that certain expert evidence that Cadbury sought to lead had been wrongly excluded. The Full Court ordered that the matter be remitted to the primary judge for further hearing. 3 Cadbury has moved the Court for an order that the order made on 21 May 2007, that the matter be remitted to the trial judge for further hearing, be varied to provide that the matter be remitted to the trial judge for a new trial. 4 We do not understand Cadbury to be suggesting that an order remitting the matter to the primary judge for a further hearing was not open to the Court. Cadbury's motion appears to have been prompted by a directions hearing before the primary judge on 12 June 2007 during which his Honour indicated his understanding that the effect of the Full Court's order was that there would be a further hearing at which the excluded evidence would be adduced, but that that would be the extent of the further hearing. It would seem that that was not Cadbury's understanding of the effect of the Full Court's order of 21 May 2007. 5 It is clear that Cadbury sought a new trial as part of the relief claimed in the appeal. On the hearing of the appeal, one of the issues was whether, even if there had been an error on the part of the primary judge in excluding evidence there was nevertheless no miscarriage of justice and the orders made by the primary judge should therefore stand. The Full Court rejected that contention. The Court concluded that it could not be said that the disputed evidence was of so little weight that it could not influence the result of a new trial, so as to produce a different result (at [111]). 6 However, the Court did not consider that a new trial was justified. Rather, the Court was of the view that justice would be served by a further hearing before the primary judge, at which Cadbury would have another opportunity of adducing the disputed evidence. 7 The proceeding was remitted on the basis that it would be before the primary judge as though the case were part heard. Thus, it would be a matter for the primary judge to determine the extent to which, after entertaining all proper objections and making rulings on such objections, additional or further evidence should be admitted. That may have the consequence that Darrell Lea would seek to adduce its own evidence in response to the disputed evidence. 8 We indicated in our reasons (at [110]) that, if proper objections were taken to the disputed evidence at the further hearing and the evidence was rejected, it would be open to the primary judge to allow Cadbury to elicit further evidence to overcome the objections. That would be an aspect of the management of the further hearing by the primary judge in the same way as it would have been had his Honour not rejected the disputed evidence in its entirety. That is to say, it would be for counsel for Darrell Lea to make such objections to the admissibility of the disputed evidence on formal grounds as they may consider appropriate. If, in the exercise of his discretion, the primary judge were to permit Cadbury the opportunity of adducing further evidence to overcome any objections, that would be a matter entirely for his Honour at the further hearing. 9 It is conceivable that, after hearing proper objections from Darrell Lea, none of the disputed evidence will be admitted. We do not, by that comment, indicate any view about the outcome of any objections one way or the other, except to the extent that we indicated the principles to be applied in our reasons of 21 May 2007. It is, of course, conceivable, and we make no comment one way or the other as to whether it is likely, that is Honour would still reject the disputed evidence under s 135 of the Evidence Act. That is entirely a matter for the primary judge. 10 Further, there would be no reason why the primary judge should entertain any contention that he should reverse earlier rulings made by him that were not in any way dependant upon the rejection of the disputed evidence. His Honour should be in a position to conduct the further hearing as though he had admitted such of the disputed evidence as his Honour finds to be admissible after considering appropriate objections. 11 In so far as we referred to "a further trial" (at [129]) or "the new trial judge" (at [130]) we should be understood as having referred to a further hearing by the primary judge along those lines. As we said (at [114]): In the circumstances, there is no reason why the proceeding should not be remitted to the primary judge for further hearing. Of course, if the primary judge were prepared to entertain a submission that he would not be able to bring an open mind to the resolution of the proceeding in the light of his Honour's earlier rulings both on the disputed evidence and in the final decision, it would be a matter for his Honour to decide whether he considered it was appropriate for the proceeding to be referred to another judge for a retrial ab initio. 12 Similarly, if the primary judge were persuaded that the conduct of the hearing to date was such that the admission of any part of the disputed evidence that his Honour was disposed to admit would cause injustice, it would be a matter for his Honour as to whether the trial should, for that reason, be aborted. The primary judge should be regarded as being in the same position as he would have been in had he not made the ruling of 31 March 2006. 13 Cadbury's notice of motion should be dismissed. The parties should be directed to file and serve within seven days any written submissions on the question of the costs of the notice of motion. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Black, and the Honourable Justices Emmett & Middleton.