Nettlefold Advertising Pty Ltd v Nettlfold Signs Pty Ltd [1997] FCA 986

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VG 431 of 1997

BETWEEN: NETTLEFOLD ADVERTISING PTY LTD

Appellant

AND: NETTLEFOLD SIGNS PTY LTD

Respondent

court: NORTHROP ACJ

PLACE: MELBOURNE

DATE: 12 SEPTEMBER 1997

REASONS FOR JUDGMENT The motion before the Court is that leave be granted to the appellant nunc pro tunc to amend its notice of appeal to the form of the amended notice of appeal which is exhibit "ISP6" to the affidavit of Ian Stanley Pascarl sworn 2 September 1997 and that compliance with O 52 r 5(2) of the Federal Court Rules be dispensed with. This is a case where, following a trial by way of appeal from the Registrar of Trademarks, the Court constituted by a single Judge made an order dismissing the application for registration of a trademark. That proceeding before the trial Judge, although called an appeal, was in truth and in fact an application in the original jurisdiction of this Court. Because of constitutional problems, the earlier proceedings before the Registrar, or his delegate, could not be treated as Court proceedings and the right of appeal to the Federal Court was not an appeal properly so called, but was a hearing de novo on evidence presented to the Court. The order of the Court was that the application be dismissed with costs, including reserved costs. In conformity with ss 24 and 25 of the Federal Court of Australia Act 1976, the applicant gave notice of appeal challenging the orders made, although there are defects in the notice of appeal which I will refer to later. But in doing that, the legal advisers to the applicant, or rather now the appellant, overlooked the provisions of s 114 of the Trade Marks Act 1955, being the Act which was relevant for the purposes of the matter before Heerey J and would be the Act relevant for the appeal if the appeal proceeds. In substance, s 114(2) imposes a fetter on the right of appeal in cases of the kind now before the Court. Subsection 114(2) reads: "(2) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court from a judgment or order of a single Judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions, directions or orders of the Registrar." Order 52 of the Federal Court Rules by Division 1, prescribes the methods by which an application for leave to appeal of this type are to be made. It is sufficient to say that the form is for an application to be made to the Court, presumably a Full Court although it may be done to a single Judge, for leave to appeal. The form is prescribed in Form 54 and the details to be disclosed in that application are prescribed in the Form. The application is to be made within 21 days of the judgment sought to be appealed from but if that time has expired, there can be an application for the extension of that time to make the application out of time. The notice of appeal in the present case was, in fact, given within time. At about the time of the filing of that notice of appeal the solicitors for the respondent notified the solicitors for the appellant that there had been a non-compliance with s 114 of the Trade Marks Act. In these circumstances the appellant gave notice in writing of the motion now before the Court. The real issue before the Court today is whether it is appropriate to make amendments to the existing procedures or whether there should be a requirement to compel the applicant below to start again by first making an application under the Rules for leave to appeal to be heard by a single Judge or by a Full Court, presumably at the option of the applicant, then depending on whether that application was successful or not, to appeal. It is obvious that the appeal under the Rules must be made within 21 days of the day of judgment. Normally, in a similar case in relation to appeals from interlocutory order of the Federal Court, a practice has developed where in many cases a person seeking to appeal from an interlocutory order not applying to the trial Judge for leave to appeal or to another single Judge either by way of notice of motion, applies to the Full Court for leave to appeal or files a notice of appeal and includes in that notice of appeal a claim for leave to appeal under s 24(1A) of the Federal Court of Australia Act, compare O 52 r 10. There has been much force in the submissions made on behalf of the respondent in this case that the latter course should not be applied here. Reference was made to the views expressed in the case of Coulter v R (1988) 164 CLR 350, and in particular in the joint judgment of Deane and Gaudron JJ in relation to the nature of the granting of special leave to appeal to the High Court under the provisions of ss 35 and 35A of the Judiciary Act 1903. There is much logic in those expressions of opinion. But there are two aspects to note about that. Those views are all related to special leave which is very different from ordinary leave. Further, at that stage of special leave being sought, there normally has been one appeal from the trial Court to an intermediate appeal Court and then the filtering process in relation to appeals to the High Court. Although, by analogy, similar views can arise in relation to the granting of appeal from a case similar to that before me at the moment, there is not the same need for the filtering process to be so fine. Normally an appeal lies as of right from a judgment of the Federal Court constituted by a single Judge. Insofar as s 114 of the Trade Marks Act imposes a fetter on that right of appeal, no case has been referred to me in which consideration has been given to the factors to take into account in considering whether to grant leave or not. The authorities in relation to leave to appeal from interlocutory orders are not really appropriate because factors to take into account there have been discussed in a number of cases, including the Adam P Brown Male Fashions Pty Ltd v Philip Morris Incorporated (1981) 148 CLR 170. There a distinction is drawn between matters of practice and procedure where, generally speaking, the Court does not grant leave to appeal unless there are circumstances which justify it, the reason being that if appeals could be taken from interlocutory orders almost as of right, there could be long delays in matters in which a rich litigant could act to the disadvantage of the poor litigant. However, if the effect of an interlocutory order has the effect of depriving a person of a remedy, the Court is far more likely to grant leave to appeal from an interlocutory order. Here the essential submissions made before me were that in practice, although not in law, there already has been one appeal from the Registrar and that the policy behind s 114 of the Trade Marks Act is to treat the "appeal" to the Federal Court as being a first appeal and then the filter to prevent a second appeal. In my opinion, that is not a correct approach. The proceedings before the Court, on the appeal from the Registrar, are completely different in nature. The material before the Registrar can only be dealt with by the Federal Court or used by the Federal Court by the leave of the Court. Much of the material before the Registrar may well be non-admissible in evidence and the Registrar is not exercising a judicial function. I act on the premise that there has been one hearing only before a Court in this case. That this is the first appeal even having regard to the provisions of s 114. It is argued also that the policy supporting the requirement of a separate application for leave to appeal be heard and determined before the appeal itself since the costs involved in preparing for an appeal may be wasted if leave is not granted. This is a problem which occurs often in applications for leave to appeal and appeal from interlocutory matters. The answer to it, to a large extent, is that in most cases on the question of the leave to appeal, to a certain extent the Court must go into the merits of the appeal to determine whether there should be leave granted or not. Although I take note of the submissions made on behalf of the respondent on this aspect, in my opinion it is not decisive of the matter. I propose to grant the motion on the basis that the provisions of the Federal Court Rules are to facilitate the progress of litigation between parties. We have long passed the stage where the Rules should be used in a technical sense to prevent the real justice of a case being presented to the Court. This is made quite clear by O 1, r 8 of the Federal Court Rules. In my opinion, the judgment of Heerey J in this case includes long and detailed reasons which are before the Court. The appeal is not from another court. The reasons make reference to a number of possibly conflicting decisions. They indicate that the trial Judge felt himself bound by a decision of a Full Court. Nevertheless, this is a case where on any view the applicant should be given the opportunity of pursuing its rights to a Full Court. It cannot be said that the appeal itself is frivolous. In my opinion there is some foundation to it. Whether it succeeds or not is a different matter. I do not decide today whether leave to appeal should be granted or not, but I do propose to grant the orders sought in the motion namely to grant leave to the applicant, nunc pro tunc to amend its notice of appeal in the manner suggested, that is to include an order that leave be granted to the appellant to appeal from the judgment of Heerey J, given in Melbourne on 11 July 1997 in proceeding number VG11 of 1996. It is quite clear that the absence of an application to seek leave to appeal resulted from an oversight by the appellant's solicitors. There was no great delay before the oversight was drawn to the attention of the appellant and steps taken to remedy it. There has been a non compliance with Division 1 of O 52, but in my opinion there is no harm caused to the respondent by that fact. The reasons for judgment have been given; the notice of appeal has been given; the grounds of the appeal are set out in the notice of appeal; and what is at issue between the parties is, in my view, sufficiently identified for the purposes of allowing the respondent to know what is going to be argued at the appeal. In the circumstances I do not need to decide whether leave be granted to appeal. What I do decide is, because of the special features of this case, the appellant should not be deprived of his right of appeal, but should be given the opportunity, despite the oversight of its legal advisers, to seek leave to appeal from the orders made. The leave to appeal, as far as the appellant is concerned, is sought to be heard by the Full Court hearing the appeal. Counsel for the respondent wants that application heard separately. I will not decide that matter today, but if either party wants to have a separate hearing they could apply by way of motion seeking a separate hearing of this application for leave to appeal. I exercise the powers of dispensing with requirements of O 52, Division 1 and give leave to the appellant nunc pro tunc to amend its notice of appeal as indicated. I should indicate also that the notice of appeal itself appears to have some defects in it. Normally in a case like this one would expect to see the appeal from the whole of the judgment of Heerey J. Following submissions on costs of the motion, the Court said:- I propose to order that the appellant pay the respondent's cost of the motion. I do so on the basis that it is the appellant which is seeking an indulgence of the Court. The general rule is that costs should follow if the indulgence is granted. I leave to one side the fact that in a case of this kind one would generally expect consent to have been given. I cannot say that the submissions made on behalf of the respondent were so outrageous as to lack any merit whatsoever. The respondent was quite entitled to test the matter in Court. In those circumstances I see no reason to depart from the normal order for costs. And so order that the appellant pay the respondent's costs of the motion.