FEDERAL COURT OF AUSTRALIA Fada Pty Ltd v Talrind Pty Ltd [2011] FCA 605 Citation: Fada Pty Ltd v Talrind Pty Ltd [2011] FCA 605 Parties: FADA PTY LTD ACN 051 759 034 v TALRIND PTY LTD ACN 104 502 374 and GREGORY GLENN WORTH File number(s): QUD 467 of 2010 Judge: GREENWOOD J Date of judgment: 30 May 2011 Catchwords: PRACTICE AND PROCEDURE – consideration of an application to join a party as a third respondent Legislation: Federal Court Rules, Order 6, rule 2 and rule 8 Date of hearing: 30 May 2011 Date of last submissions: 30 May 2011 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 14 Solicitor for the Applicant: Mr Bennett, Bennett & Philp Lawyers Solicitor for the Respondents: Mr Fox, Blue Fox Legal IN THE FEDERAL COURT OF AUSTRALIA QUEENSLAND DISTRICT REGISTRY GENERAL DIVISION QUD 467 of 2010 BETWEEN: FADA PTY LTD ACN 051 759 034 Applicant AND: TALRIND PTY LTD ACN 104 502 374 First Respondent GREGORY GLENN WORTH Second Respondent JUDGE: GREENWOOD J DATE OF ORDER: 30 MAY 2011 WHERE MADE: BRISBANE THE COURT ORDERS THAT: 1. The applicant is given leave to amend the application and statement of claim in the proceeding in the terms proposed in the amended application and amended statement of claim annexed to the affidavit of Anthony James Bennett sworn and filed 5 May 2011. 2. The costs of and incidental to the notice of motion filed 5 May 2011 are reserved. 3. The parties are directed to confer with a view to formulating a timetable for the completion of interlocutory steps in the proceedings having regard to leave granted by Order 1. 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 467 of 2010 BETWEEN: FADA PTY LTD ACN 051 759 034 Applicant AND: TALRIND PTY LTD ACN 104 502 374 First Respondent GREGORY GLENN WORTH Second Respondent JUDGE: GREENWOOD J DATE: 30 MAY 2011 PLACE: BRISBANE EX TEMPORE REASONS FOR JUDGMENT 1 This is an application for leave to join a respondent as a third respondent in the proceedings. The circumstances are that a statement of claim was filed and served in the proceedings on 29 October 2010 in which allegations are made of infringement of particular trade marks by a party called Talrind Pty Ltd ("Talrind"), the first respondent. 2 In the statement of claim it is alleged at para 10 that, from a date not presently known to the applicant but which the applicant believes to be in or around September 2010, Talrind has, within Australia, produced, marketed, distributed, sold and supplied fresh bananas with a purplecoloured wax coating on one end. 3 Three particulars are given of that conduct. The first concerns particulars in connection with the sale and supply of the relevant produce to Woolworths. The second concerns a question arising out of a letter dated 15 October 2010 from Talrind's trademark attorneys, Ahearn Fox, which is said to constitute an admission. The third relates to the filing of Trade Mark Application 1382905 by Talrind on 3 September 2010 for particular trade marks itself. 4 In the defence and crossclaim filed by the respondents on 17 December 2010, the central allegation concerning the conduct is denied and not only denied but the relevant pleading is that the respondents deny that Talrind has "within Australia, produced, marketed, distributed, sold and supplied fresh bananas with a purplecoloured coating applied to the crown or top end of the banana ('the purple crown bananas')" and, importantly, the respondents plead the denial on the footing that the first respondent "has not done so". The pleading by the respondents moves beyond a simple denial to an assertion of fact that it was not a seller. At para 13 of the defence and cross-claim the respondents deny that the Talrind undertook the conduct pleaded at para 10 of the statement of claim "because it did not". 5 Correspondence was exchanged between the professional advisers to the parties and, in the end result, it became necessary for the applicant, Fada Pty Ltd ("Fada"), to seek the leave of the court to issue a subpoena directed to Woolworths Limited ("Woolworths") for the production of documents which would evidence sales and supplies of bananas to that company relevantly framed under the subpoena. Documents were produced under subpoena by Woolworths which demonstrated, on their face, that bananas had been supplied to that company and the remittance advices identify Envirofresh Pty Ltd ("Envirofresh") and another entity called Biotrend Pty Ltd. 6 Having regard to the documents produced under the subpoena, the applicant proposes to join Envirofresh to the proceedings as a third respondent. Paragraph 10 of the proposed amended statement of claim frames the conduct as conduct against the first respondent Talrind and/or the proposed third respondent Envirofresh. The pleading in the amended statement of claim maintains the allegations of material fact against Talrind arising from in or about late September 2010. The particulars retain reliance upon the first three particulars mentioned earlier and add a further particular, that is, that Fada also relies upon details of sales provided in the documents supplied by Woolworths pursuant to the subpoena issued to it and made returnable on 24 February 2011. 7 The new para 10A proposes, in the alternative, that from a date not presently known to the applicant but which the applicant believes to be in or around late September 2010, the first respondent has authorised Envirofresh in the sale, distribution and supply of purple wax tip bananas in Australia or, alternatively, authorised Envirofresh to apply purple wax tips to bananas to be marketed, offered for sale, distributed and supplied in Australia. 8 The significance of that matter, of course, is that the amended pleading retains the matrix of fact which was pleaded initially against Talrind only and joins into the set of circumstances within that matrix of fact, the conduct or alleged conduct of Envirofresh. 9 The other matter that is alleged and relevant to the exercise of the discretion, it seems to me, is that, in circumstances where correspondence is exchanged and Talrind and Mr Worth, the second respondent, were invited to say who the supplier was, relevantly, on their case, those respondents took the course open to them to require the applicant to engage in the forensic exercise of issuing the subpoena to Woolworths, gathering the documents, and then determining whether there were facts upon which a cause of action might be open or maintainable as pleaded material facts. The respondents could have said early on that Envirofresh was the relevant supplier but they chose not to do so which was a matter open to them. 10 The substance of the matter really turns on the question of whether or not joinder is in the interests of justice. The applicant relies upon Order 6, rule 8 of the Federal Court Rules which is directed to the addition of parties, and that rule, of course, provides that where a person who is not a party, who ought to have been joined as a party, or is a person whose joinder as a party is necessary to ensure that all matters in dispute in the proceeding may be effectually and completely determined and adjudicated upon, the court may in the exercise of discretion order that the person be added as a party and make such orders as are necessary. 11 There is a further rule, of course, which is Order 6, rule 2, which is directed to the joinder of parties generally. Order 6, rule 8 is directed specifically to the addition of parties. Order 6, rule 2 provides that two or more persons may be joined as respondents in any proceeding where, if a separate proceeding were brought by or against each of them, some common question of law or of fact would arise in the proceedings. 12 Without descending into an analysis of the jurisprudence on those two rules of the Federal Court Rules, it seems to me that each of these respondents is a respondent who, having regard to the pleading of material facts, is a respondent confronting a common question of fact. It may be that the common question of fact is shown not to be made out as against one or other of them, or both, perhaps, but there is a common question of fact, and the common question of fact in turn goes to the common question of law, which is infringement of the trade marks or authorisation of infringement of the trade marks. Apart from Order 6, rule 2, it seems to me, as a matter of principle, that in circumstances where the common questions of fact can be resolved in the one proceeding efficiently and effectually, with a complete determination that is a dispositive adjudication of all questions, the discretion ought to be exercised to join the proposed respondent, especially having regard to the way in which the statement of claim is framed and the amended statement of claim is proposed. 13 For my own part, I do not accept that there is any real utility in having two separate proceedings with two separate sets of pleadings and discovery and related matters when the parties confronting the common questions of fact, at least as pleaded, can confront it in the one proceeding. 14 Orders will be made for the joinder of Envirofresh Pty Ltd as a third respondent in the proceeding. The costs of and incidental to the application for joinder are reserved. The parties are to confer and seek to reach agreement about scheduling orders for further interlocutory steps and submit proposed minutes of order to my Associate. If agreement cannot be reached about those matters, directions orders for the future conduct of the matter will be made by me on the papers from Chambers. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate: Dated: 30 May 2011