Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. [2021] FCAFC 77

Federal Court of Australia

Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. [2021] FCAFC 77 Appeal from: Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Permanent Stay) [2019] FCA 802 Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. (Form of Orders) [2019] FCA 1772

File number(s): NSD 1974 of 2019

Judgment of: KATZMANN, BEACH AND MARKOVIC JJ

Date of judgment: 21 May 2021

Catchwords: TRADE MARKS – ownership of trade marks – vodka products – competing claims to ownership of trade marks between Russian Federation entities and Dutch company – permanent stay of cross-claim – failure to give proper discovery – extent of permanent stay – whether issues estoppel arising from Dutch litigation should have been permitted to be further litigated – relevance and application under Australian law of the principle in Arnold v National Westminster Bank plc [1991] 2 AC 93 – whether discretionary defences of laches, equitable estoppel and rectification under s 88 of the Trade Marks Act 1995 (Cth) should have been permitted to be further litigated – relevance of the discovery given in the US proceeding to the discharge of Australian discovery obligations – leave to adduce new evidence concerning US proceeding – leave refused – principles to apply in permanently staying a proceeding for want of discovery – exercise of discretion – discussion of Clifton (Liquidator) v Kerry J Investment Pty Ltd (2020) 379 ALR 593 – whether discretion miscarried – appeal allowed – limited remitter

Legislation: Evidence Act 1995 (Cth) ss 91, 190 Federal Court of Australia Act 1976 (Cth) s 27, 37M Trade Marks Act 1995 (Cth) s 88