No Name Restaurants (Cesare) Pty Ltd v No Names Restaurants Pty Ltd [1995] FCA 448

NOT FOR GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA) ) NEW SOUTH WALES DISTRICT REGISTRY) NG 267 of 1995 ) GENERAL DIVISION )

BETWEEN: NO NAME RESTAURANTS (CESARE) PTY LIMITED Applicant AND: NO NAMES RESTAURANTS PTY LIMITED Respondent CORAM: Burchett J. PLACE: Sydney DATE : 15 June 1995 REASONS FOR JUDGMENT BURCHETT J.:

This is a motion brought by the applicant, in an appeal from a hearing officer of the Trade Mark Office, for a stay of the appeal. It is brought to enable a fresh application, made under s. 34 of the Trade Marks Act 1955, to be dealt with - in the anticipation that either the result of that application will, for practical purposes, resolve the disputes between the parties, or that, alternatively, if there must be an appeal from the decision upon that application also, by either of the parties, the two appeals would then be able to be heard together with consequential economy of time and resources. There is also a cross-motion for summary dismissal of the appeal, grounded on the view that s. 34 does not permit the two proceedings to be maintained, that is to say, does not permit the applicant to proceed with the appeal, and at the same time make application for registration as an honest concurrent user, or a user in other special circumstances within the meaning of s. 34 of the Trade Marks Act. I should say at once that I do not think that it would be proper to dismiss the proceedings summarily upon the basis suggested. No authority is cited for a construction of s. 34 which will justify me in doing this, and of course all the cases make it clear that summary dismissal of an application should only be granted where the ground for doing so is too clear for argument. I accept Mr Yates's contention that the statutory basis of a concurrent user is at any rate wide enough to cover the kind of situation referred to by Lord Diplock in Re GE Trademark (1973) RPC 297 at 326, and in the old decisions to which he referred. Accordingly, I turn to the motion for a stay. Generally speaking, an application should proceed with all reasonable expedition in accordance with the procedures of the Court; and the onus is on a party, moving for a variation of the ordinary progression of a matter towards hearing, to justify the special order he seeks. In this case, Mr Yates seeks to justify the application for a stay on the basis that, though the issues arising in the original application, and those which will arise in his client's application under s. 34, are not identical, nevertheless, they are considerably intertwined. They arise out of the common history of the current businesses involved in the dispute, each of which had its origin in a single business pursued for a great many years. It is argued that, as a consequence of this common origin and of the extent to which the issues are intertwined, there would certainly be a considerable saving if, in fact, there is to be an appeal in the second application, as well as in the first, and that it would be convenient that the Court decide the two at the same time. There would also be a saving in costs, and one might add there would be an avoidance of any risk of conflicting decisions, or at least decisions having conflicting bases. I think the extent of the delay involved would require that, in many cases, such an argument, however attractive in a number of respects it might be, would have to be rejected. But in the special circumstances of this case, I think that the decisive matter ought to be an evaluation of the extent to which what the applicant seeks would involve prejudice to the respondent. If there is no prejudice, the arguments of cost and convenience must, I think, carry the day. It is the fact that the respondent asserts prejudice on general grounds, but has not suggested that any specific matter has arisen as yet which would make the delay inevitably prejudicial to the respondent; and no evidence at all has been adduced by the respondent suggesting any actual prejudice. In those circumstances, I think I should accede to the application, but I should make the order conditional, so as to ensure the least possible risk of such prejudice as might conceivably arise. Accordingly, what I propose to do is to order a stay of the hearing of the application until further order, so as to enable the application under s. 34 to be dealt with, but to make this order conditional upon the applicant: (1) proceeding expeditiously with the application under s. 34; (2) making prompt application to the Trade Mark Office for such expedition as it can give to the application, and advising the Trade Mark Office of the terms of this order; and (3) keeping the respondent advised at all times of all steps taken in relation to the expedition of the application under s. 34. I further make the order conditional upon the applicant proceeding, in the meantime, to file the appropriate evidence in the application in this Court, although, in view of the stay, I do not propose to require a particularly tight timetable. In other words, I am concerned to keep costs to a minimum, but to ensure that the case will in fact be ready to proceed as soon as circumstances allow, or fairly promptly if it becomes necessary for the respondent to seek a lifting of the stay, and the Court chooses to lift it. I will direct that the applicant's affidavits be filed and served by Friday, 18 August at 5 pm. I will reserve liberty to apply to each side on three days notice. I will direct that the respondent's affidavits be filed and served by 15 September at 5 pm. I will list the matter for Friday, 22nd for further directions. I certify that this and the preceding three (3) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett. Associate: Date: 28 June 1995 Counsel for the Applicant: Mr D.M. Yates Solicitors for the Applicant: Pope & Spinks Counsel for the Respondent: Mr S.P. Gullotta Solicitors for the Respondent: Hillman Mura & Consultants Date of hearing: 15 June 1995