FEDERAL COURT OF AUSTRALIA Yellowbook.com.au Pty Ltd v Telstra Corporation Limited [2011] FCA 475 Citation: Yellowbook.com.au Pty Ltd v Telstra Corporation Limited [2011] FCA 475 Parties: YELLOWBOOK.COM.AU PTY LTD and EMMANUEL KHOURY v TELSTRA CORPORATION LIMITED File number: QUD 220 of 2010 Judge: COLLIER J Date of judgment: 10 May 2011 Catchwords: PRACTICE AND PROCEDURE – notice of motion seeking adjournment of trial – opposition to trade mark – application to have hearing of appeal from decision of Delegate of Registrar of Trade Marks returnable before same Judge and on same date as another appeal in relation to same trade mark – whether appropriate to have appeals heard together – delay in filing notice of motion seeking adjournment and submissions COSTS – whether costs follow the event – whether costs payable prior to disposition of appeal Legislation: Federal Court of Australia Act 1976 (Cth) s 43(2) Trade Marks Act 1995 (Cth) s 52 Cases cited: Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175 cited Emmanuel Khoury v Telstra Corporation Limited [2010] ATMO 36 related Hughes v Western Australian Cricket Association (Inc) [1986] FCA 382 cited Re Opposition by Phone Directories Company Australia Pty Ltd to registration of trade mark application 963492 (classes 9, 16, 35, 38, 41, 42) – YELLOW – filed in the name of Telstra Corporation Limited, unreported decision of a Delegate of the Registrar of Trade Marks with Reasons, TE Williams, 19 April 2011 cited Ritter v Godfrey (1920) 2 KB 47 cited Date of hearing: 10 May 2011 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 28 Counsel for the Applicants: Mr J Lee Solicitor for the Applicants: Rostron Carlyle Counsel for the Respondent: Ms G Schoff SC and Ms M Marcus Counsel for the Respondent: Mallesons Stephen Jaques IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY GENERAL DIVISION QUD 220 of 2010 BETWEEN: YELLOWBOOK.COM.AU PTY LTD First Applicant EMMANUEL KHOURY Second Applicant AND: TELSTRA CORPORATION LIMITED Respondent JUDGE: COLLIER J DATE OF ORDER: 10 MAY 2011 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. The matter be adjourned and returnable on the same date and before the same presiding Judge as the appeal from Trade Mark application no 963492 between Telstra Corporation Ltd and Phone Directories Company Australia Pty Ltd. 2. The applicants pay the costs of the respondent thrown away by the adjournment of the hearing including costs incurred today and in respect of previous directions hearings, such costs to be taxed if not otherwise agreed and such costs to be paid before disposition of the appeal. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY GENERAL DIVISION QUD 220 of 2010 BETWEEN: YELLOWBOOK.COM.AU PTY LTD First Applicant EMMANUEL KHOURY Second Applicant AND: TELSTRA CORPORATION LIMITED Respondent JUDGE: COLLIER J DATE: 10 MAY 2011 PLACE: BRISBANE REASONS FOR JUDGMENT 1 By a notice of motion filed 6 May 2011, the applicants to the substantive proceedings sought orders that the hearing today be vacated, and that the matter be returnable on the same date and before the same presiding Judge as the appeal from trade mark application no 963492 between Telstra Corporation Ltd and Phone Directories Company Australia Pty Ltd. The notice of motion was opposed by Telstra, which is the respondent to the substantive proceedings. 2 After hearing submissions from the parties I made the following orders: 1. The matter be adjourned and returnable on the same date and before the same presiding Judge as the appeal from Trade Mark application no 963492 between Telstra Corporation Ltd and Phone Directories Company Australia Pty Ltd. 2. The applicants pay the costs of the respondent thrown away by the adjournment of the hearing including costs incurred today and in respect of previous directions hearings, such costs to be taxed if not otherwise agreed and such costs to be paid before disposition of the appeal. 3 At the time of making these orders I informed the parties that I would give reasons for judgment later in the day. Those reasons now follow. Background 4 The first applicant to these proceedings is a company, Yellowbook.com.au Pty Ltd. The managing director of the first applicant, Mr Emmanuel Khoury, is the second applicant. The substantive proceedings involve an appeal from a decision of a Delegate of the Registrar of Trade Marks in two "cross oppositions" under s 52 of the Trade Marks Act 1995 (Cth) concerning the trade marks YELLOW (trade mark application 963492) and yellowbook.com.au (trade mark application 1138225) respectively. Mr Lee for the applicants neatly summarised the proceedings as involving questions whether the trade mark "YELLOW" is associated with Telstra, and whether "yellow book" has the same meaning as "yellow pages". 5 The decision of the Delegate, Mr Kirov, was delivered on 21 May 2010. In respect of both oppositions Telstra was successful, and costs were awarded in its favour. 6 At the same time, another matter before a Delegate of the Registrar of Trade Marks concerned an opposition to Telstra's YELLOW trade mark by an unrelated party, Phone Directories Company Australia Pty Ltd ("Phone Directories"). At the time of commencement of the appeal from the decision of the Delegate by the applicants in this Court, the decision of a Delegate, Mr Williams, in relation to the opposition of Phone Directories was pending. That decision was delivered on 19 April 2011. Again Telstra was successful. 7 Ms Schoff SC informed me from the bar table that she had been told this morning that Phone Directories had also lodged an appeal against the decision of the Delegate in the Federal Court of Australia. 8 As is clear from material before the Court, prior to the hearings before the Delegates, Telstra had written to the Registrar of Trade Marks to the effect that: issues raised by the opponents in each of the opposition proceedings were the same; the opponents appeared to be collaborating with each other; and Telstra would prefer the hearing of the two opposition proceedings to be held together. For reasons which are not clear the two opposition proceedings were held separately before different Delegates. 9 In correspondence from solicitors for Telstra to the solicitors for Phone Directories dated 20 April 2010, Telstra's solicitors noted that the two sets of opposition proceedings "mirrored" each other, with commonality of proceedings between them. Notice of Motion seeking adjournment 10 In summary, the applicants contend that the hearing should be adjourned because: the issues to be determined in each appeal are, if not precisely the same, very similar. as a matter of principle, the Court would ordinarily hear related matters together rather than separately so as to avoid inconsistent findings. the Registrar's Delegates expressly referred to the other opposition in their respective decisions. Telstra has identified no demonstrated prejudice as a consequence of having the appeals heard together. the Phone Directories appeal will need to be heard at some date in the future, and Telstra will need to argue virtually the same points as will be argued today. it is not conclusive that the evidence before the Court in the two opposition proceedings will be different. yesterday Telstra filed a large number of objections to evidence in relation to the substantive proceedings, to which the applicants have not had time to respond. 11 In opposing the notice of motion, Telstra submits in summary: In this matter it is clear that the two oppositions have been dealt with separately by the parties. Each of the oppositions were dealt with by the Trade Marks Office separately. The identity of each opponent is different, and the respective opponents' evidence and grounds for opposition differ in material respects. The decision of the Registrar's Delegate in this case also involved Telstra's opposition to the first applicant's trade mark application no 1138225 for yellowbook.com.au, which bears no connection whatsoever to Phone Directories' opposition. Even if the appeals in each opposition were heard together, the Court would need to assess each matter separately and on its own merits. Because the evidence is not the same and the grounds relied upon are not identical, even if the matters were heard together one Judge could reach a different conclusion about each opposition. Consideration 12 There are good reasons for the matter to be heard by me today. 13 First, the applicants have been tardy in formally seeking an adjournment for the matter to be heard with the appeal from the Phone Directories opposition. Indeed the notice of motion seeking adjournment was filed only last Friday 6 May 2011, although an informal request was made by the applicants to the Court in March 2011 to adjourn the hearing (which request was denied). The delay in formally seeking an adjournment is particularly stark in circumstances where the appeal was filed by the applicants almost 12 months ago on 11 June 2010. 14 Second, the oppositions have been heard, and decided, separately by Delegates of the Registrar, which suggests that it is appropriate for appeals from the decisions of the Delegates to similarly be heard separately. 15 Third, it is not uncommon for different Judges of this Court to make decisions in matters involving the same or similar factual and legal issues, within the same time period. I accept Ms Schoff SC's submission that the fact that a later Judge may reach a different conclusion based on different evidence, or that a later Judge may think an earlier decision is plainly wrong, is hypothetical in the context of the current proceedings and not a reason to adjourn the hearing. 16 However I am persuaded that it is appropriate to adjourn the hearing as sought by the applicants for the following reasons. 17 First, after considering the material before me it is appropriate in my view for appeals in relation to the two sets of oppositions to be heard together. There is clearly extensive overlap between the oppositions, to the extent that it would not only be an efficient use of resources of the respondent to have the cases heard together, but an efficient use of Court time and resources and potentially efficient for the applicants in both appeals. I note in particular that: As is clear from correspondence, Telstra considered that the oppositions "mirrored" each other from an early stage in the proceedings. Before me today, Ms Schoff SC appearing for Telstra conceded that the matters could be heard together. The applicants submit that the matters should be heard together. It appears, based on such material as is before me, that Phone Directories considers that the matters should be heard together. Notwithstanding the decision taken in the Trade Marks Office that the oppositions be heard separately, the Delegates cross-referenced their respective decisions to each other. I note, for example, that in his reasons in the decision the subject of this appeal, Mr Kirov ordered that Telstra's application proceed to registration "subject to the outcome of a still pending opposition to trade mark application 963492 YELLOW by another party, Phone Directories Company Australia Pty Ltd" (Emmanuel Khoury v Telstra Corporation Limited [2010] ATMO 36 at [86]). Similarly, in his reasons for decision concerning the Phone Directories opposition, Mr Williams adopted the reasoning of Mr Kirov, and ordered that registration of the Telstra trade mark be "subject to the determination of the Khoury opposition" (Re Opposition by Phone Directories Company Australia Pty Ltd to registration of trade mark application 963492 (classes 9, 16, 35, 38, 41, 42) – YELLOW – filed in the name of Telstra Corporation Limited, unreported decision of a Delegate of the Registrar of Trade Marks with Reasons, TE Williams, 19 April 2011 [48], [60]). 18 Second, while the applicants have been tardy in bringing a notice of motion before the Court to adjourn the hearing in this appeal, this does not in itself detract from the reasonableness and efficiency of the matters being heard together for the reasons I have given. 19 Third, in any event, I note that the delay of the applicants in bringing the notice of motion is partly explainable by the delay in the delivery of the reasons for decision of Mr Williams in relation to the Phone Directories opposition. In the event that Mr Williams' decision had been inconsistent with that of Mr Kirov and in favour of the opponent in that case, the approach of the parties in the proceedings before me may have been quite different. To that extent, while the applicants' delay in filing the notice of motion potentially suggests a deliberate tactic by the applicants (cf Aon Risk Services Australia Ltd v Australian National University (2009) 239 CLR 175 at 189 [24]), on balance I am satisfied that this was not the case but rather that the delay was occasioned partly by the applicants' apprehension as to the decision of Mr Williams, in addition to their own inefficiency in bringing the notice of motion. 20 Fourth, aside from the issue of costs incurred (to which I will turn later in this judgment), I accept Mr Lee's submission that Telstra has not demonstrated any prejudice it would suffer should the hearing be adjourned. While it could not be said that it is convenient for Telstra, which has prepared for the hearing and was ready to proceed today, to be the subject of an adjournment, in this case given the nature of the two oppositions it appears that substantially the same issues will be agitated in the Phone Directories appeal as are relevant in the case before me. 21 Finally, it is clear from the very late filing by Telstra of objections to evidence of the applicants, which objections clearly took the applicants by surprise in these proceedings, that there would be utility in further directions prior to the hearing of this appeal in respect of evidence of the parties and its admissibility. While in my view this is a minor point in relation to my decision to adjourn the hearing, nonetheless it is relevant so far as future conduct of this matter is concerned. 22 In my view, in the circumstances of this case, payment of costs by the applicants to the respondent provides adequate recompense for any inconvenience suffered by Telstra by adjournment of the hearing. Costs 23 The award of costs in respect of this notice of motion is at the discretion of the Court: s 43(2) of the Federal Court of Australia Act 1976 (Cth). As a general rule, costs follow the event: Ritter v Godfrey (1920) 2 KB 47, Hughes v Western Australian Cricket Association (Inc) [1986] FCA 382 at [9]. 24 However, where the Court grants an order on the application of a party seeking vacation of trial dates, it is open to the other party to seek payment of costs thrown away by the adjournment. In appropriate circumstances this approach is not affected by the decision of the High Court in Aon. 25 The applicants have submitted that, as they were successful in respect of their notice of motion, there be no order as to costs, that costs be reserved, or that any cost orders against them be limited. Mr Lee for the applicants submitted further that, in light of the importance of the appeals in both sets of opposition being heard together, the applicants not be in any way penalised by an order requiring payment of costs prior to the disposition of the appeal in this case. Mr Lee also submitted that, as the preparation undertaken by Telstra in anticipation of the hearing scheduled for today would also be necessary for the hearing of the appeal in the Phone Directories matter, in fact the amount of costs thrown away by the adjournment would be minimal. 26 In this case I consider that it is appropriate to not only make orders requiring the applicants to pay the costs thrown away by Telstra in respect of today's hearing, but also costs thrown away in respect of earlier directions hearings. While, on balance, I am persuaded to adjourn the hearing notwithstanding the delays of the applicants in bringing the notice of motion, nonetheless it is clear that, had the notice of motion been brought earlier in this litigation, the directions would have taken a very different form. Indeed, new directions taking the matter to hearing will now be required. To that extent, I consider it is fair that costs incurred by Telstra in respect of earlier directions should be paid by the applicants. 27 In relation to costs thrown away, the appropriate order is that the costs thrown away be taxed if not otherwise agreed between the parties. 28 Finally, I consider it reasonable to require the applicants to not only pay costs of the respondent thrown away by the adjournment, but to also pay those costs prior to disposition of the appeal. I take this view in light of what I understand to be the significant costs incurred by Telstra to date, and some apparent casualness of the applicants in prosecuting this appeal. I make this observation in light of the history of this matter, in particular: The delay of the applicants in bringing the notice of motion the subject of this judgment. The fact that the applicants brought the notice of motion very late in the proceedings. The fact that the applicants had previously sought to have the matter adjourned, but did not follow this up. The fact that the applicants failed to comply with directions in relation to filing of submissions, to the extent that submissions were only provided to the Court this morning by email to my chambers. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier. Associate: Dated: 10 May 2011