FEDERAL COURT OF AUSTRALIA Dias Aluminium Products Pty Ltd v Ullrich Aluminium Pty Ltd [2004] FCA 1115 PRACTICE AND PROCEDURE –Application for leave to file and serve late affidavit evidence – Whether prejudice to applicants caused by delay to proceeding if evidence admitted outweighed by public interest in having only valid designs on the register – Whether evidence relates to prior use. Evidence Act 1995 (Cth) s78 Designs Act 1906 (Cth) s 17 Cooke v Commissioner of Taxation; Jamieson v Commissioner of Taxation [2001] FCA 1654 Makita (Australia) Pty Ltd v Sprowles [2001] NSWCA 305 State of Queensland v J L Holdings Pty Ltd (1957) 189 CLR 147 DIAS ALUMINIUM PRODUCTS PTY LTD v ULLRICH ALUMINIUM PTY LTD V123 of 2002 CRENNAN J 27 AUGUST 2004 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V123 OF 2002 BETWEEN: Dias Aluminium Products Pty Ltd APPLICANT AND: Ullrich Aluminium Pty Ltd RESPONDENT JUDGE: Crennan DATE OF ORDER: 27 August 2004 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. Respondent be granted leave to lead evidence in chief to clarify paragraph 16 of the affidavit of Kevin David Goldman and paragraph 4 of the affidavit of Anthony John Oakley. 2. Respondent to file and serve any amended defence and cross‑claim and further and better particulars of invalidity (which will include a reference to the subsections of s 17 of the Designs Act 1906 (Cth)to which such particulars are relevant) on or before 4:00 pm on 31 August 2004. 3. Respondent be granted leave to read paragraphs 1 to 15, first and last sentence of paragraph 16, paragraphs 17 to 21, and the first and last line of paragraph 22 of the affidavit of Kevin David Goldman. 4. Respondent is granted leave to read the affidavit of Anthony John Oakley. 5. The Respondent is to pay the applicant's costs of, occasioned by and/or thrown away by the reliance by the respondent on affidavits, the subject matter of the leave granted. 6. The applicant to file and serve any amended statement of claim and application, including further and better particulars of any claim of fraudulent imitation on or before 4:00 pm on 31 August 2004. 7. Leave, as required, to the applicant to recall its expert witness. 8. Liberty to apply. 9. The matter be adjourned for further hearing to 9 September 2004 at 10:15 am. 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 V123 OF 2002 BETWEEN: Dias Aluminium Products Pty Ltd APPLICANT AND: Ullrich Aluminium Pty Ltd RESPONDENT JUDGE: Crennan DATE: 27 August 2004 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 The applicant commenced proceedings on 27 February 2002 seeking relief in respect of alleged infringement of four registered designs numbered 117096, 115996, 123036 and 116380 which covered parts used in connection with the installation of wardrobe doors and frames. The hearing, fixed for five days, commenced on the 19th of July 2004 and was adjourned on the 23rd of July 2004 for the purposes of completion of the respondent's evidence to 24 August 2004. 2 At the end of that day's hearing the respondent made an application for leave to file three late affidavits. The trial had been conducted on the basis of numerous directions in respect of the filing and service of affidavits. At the end of argument, as a result of matters raised during the course of argument the respondent's final position was that it no longer pressed one of the affidavits and it no longer pressed certain paragraphs in the remaining two affidavits. 3 The respondent sought leave in respect of the remaining material on the basis that it was evidence of matters of fact, discovered late in an ongoing search for relevant prior art. The affidavits dealt with an issue of prior use, an issue concerning innocent use of a feature of one of the applicant's designs and expressions of opinion as to the novelty of a certain feature of one of the applicant's designs. In response to a submission that the remaining evidence concerned, at least in part, an expression of expert opinion, the applicant clarified that any expressions of opinion were of the kind treated as an exception to the usual rules under s 78 of the Evidence Act 1995 (Cth) ('the Evidence Act'). The evidence was described by the respondent as evidence of "trade usage" and neither witness was being put forward as an expert, let alone a wholly independent expert. 4 The applicant has mounted various objections to the reception of the late evidence. These included objections to the admissibility of some of that material. No further particulars of invalidity have been provided in respect of the new material, which includes dealing with further prior art and is intended to support the respondent's cross‑claim which claims that three of the design registrations are invalid and should be expunged, alternatively rectified or amended. There was an overarching objection that finality in litigation is desirable and that it was too late for the respondent to introduce new material especially as extensive examination and cross‑examination had already occurred in respect of prior art. Objections as to relevance were raised. Further, there are objections taken to the admissibility of certain documents which are sought to be admitted through the deponent Mr Kevin David Goldman ('Goldman'). There are also objections to the admissibility of certain paragraphs which it was argued purport to give expert evidence, including opinion evidence without any proper factual foundation, a matter dealt with in Makita (Australia) Pty Ltd v Sprowles [2001] NSWCA 305 at [48], especially at [85]. Further it is objected that publication dates of catalogues, documents or drawings produced by the witness Goldman have not been proven through him on the basis of his affidavit in its present form. Finally, it was asserted that Goldman raised a new and false issue in the proceeding that a wheel feature necessitated the use of nibs in a previous version of a wardrobe door stile. Similar complaints were made about the affidavit of Mr Anthony John Oakley ('Oakley'). In addition it was pointed out there was an obvious error in Oakley's affidavit. The applicant's senior counsel stated, responsibly in my view, that it could not be submitted and was not submitted that there was an incurable or "overriding prejudice" to his client in the circumstances. 5 It is well established that in circumstances where a procedural step in proceedings is sought to be undertaken late, case management imperatives should not be allowed to prevail over the injustice of shutting out an arguable defence: State of Queensland v J L Holdings Pty Ltd (1957) 189 CLR 147 at 155 per Dawson, Gaudron and McHugh JJ. 6 Senior counsel for the respondent conceded in reply that he would, with leave, need to correct the error in Oakley's affidavit and need to elicit properly the basis of a belief which Goldman expressed. 7 It is necessary on an application such as the respondent's to balance any prejudice to the respondent, arising out of excluding this new evidence with any prejudice to the applicants who will require some time to deal with the new material. It is also necessary to bear in mind that the applicant's case has closed and its experts' evidence has been completed. It is also necessary to bear in mind that there is a public interest in having only valid registrations of designs on the Designs Register. That latter factor distinguishes this case from Cooke v Commissioner of Taxation; Jamieson v Commissioner of Taxation [2001] FCA 1654, a tax case, in which Conti J did not permit reliance on affidavit material filed out of time in accordance with previous directions given. The delay and extra costs which the late evidence may cause to the applicant can be compensated for with an order for costs, which the respondent accepts would be appropriate. This would include the costs of any necessary recall of the applicant's expert. 8 I turn to deal with detailed objections to each of the affidavits. Goldman: I accept that Goldman does not give any evidence of publication dates for any of the documents to which he refers. Having noted that, those paragraphs of his evidence dealing with prior use are admissible. The first sentence of paragraph 16 is admissible on the basis of an undertaking by senior counsel to ensure that any ambiguity about the basis of is belief is dispelled. Paragraphs 18 and 19 are admissible as being relevant to a claim by the applicant of fraudulent imitation. Further, I accept that his opinion evidence is opinion evidence, of trade usage and able to be admitted under s 78 of the Evidence Act. Oakley: Senior counsel for the respondent has undertaken to correct an obvious error in paragraph 4. Insofar as Oakley corroborates Goldman on matters relevant to a fraudulent imitation allegation, the affidavit is admissible. Oakley, like Goldman, gives evidence based on his knowledge of the trade and if and to the extent that any such evidence can be characterised as opinion evidence it is covered by s 78 of the Evidence Act. 9 Balancing the competing factors, which need to be considered, leave will be granted to the respondent to rely on some of the material filed late as reflected in the orders made. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Crennan. Associate: Dated: 27 August 2004 Counsel for the Applicant: Mr C. Golvan SC Dr S. Ricketson Solicitor for the Applicant: Hunt and Hunt Counsel for the Respondent: Mr B. Caine SC Mr M. Goldblatt Solicitor for the Respondent: Middletons Date of Hearing: 24 and 25 August 2004 Date of Judgment: 27 August 2004