FEDERAL COURT OF AUSTRALIA Jackel International Limited v Jackel Pty Limited [2012] FCA 206 Citation: Jackel International Limited v Jackel Pty Limited [2012] FCA 206 Parties: JACKEL INTERNATIONAL LIMITED, SANGENIC INTERNATIONAL LIMITED and MAYBORN ANZ PTY LTD (ACN 154 703 134) v JACKEL PTY LIMITED (ACN 128 984 707), JACKEL TRADE MARKS PTY LTD (ACN 128 984 690) and JACKEL ANZ PTY LIMITED (ACN 133 251 546) File number: VID 1467 of 2011 Judge: NORTH J Date of judgment: 16 February 2012 Date of hearing: 16 February 2012 Place: Melbourne Division: GENERAL DIVISION Category: No Catchwords Number of paragraphs: 11 Counsel for the Applicants: Ms E Strong SC with Mr L A Merrick Solicitor for the Applicants: Corrs Chambers Westgarth Counsel for the Respondents: Ms J Baird SC Solicitor for the Respondents: Chrysiliou Lawyers IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1467 of 2011 BETWEEN: JACKEL INTERNATIONAL LIMITED First Applicant SANGENIC INTERNATIONAL LIMITED Second Applicant MAYBORN ANZ PTY LTD (ACN 154 703 134) Third Applicant AND: JACKEL PTY LIMITED (ACN 128 984 707) First Respondent JACKEL TRADE MARKS PTY LTD (ACN 128 984 690) Second Respondent JACKEL ANZ PTY LIMITED (ACN 133 251 546) Third Respondent JUDGE: NORTH J DATE OF ORDER: 16 FEBRUARY 2012 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The proceeding no longer be conducted in accordance with the Fast Track Directions. 2. Notwithstanding paragraph 1, the Amended Application, Amended Fast Track Statement, Response, Notice of Cross-claim and Fast Track Cross-claim filed in the proceeding stand in lieu of pleadings. 3. The Applicants/Cross-respondents file and serve their defence to cross claim (such defence to comply with CM 8, paragraph [4.5]) and any reply by 20 February 2012. 4. The Cross-claimants file and serve any reply to the defence to cross-claim by 27 February 2012. 5. The evidence in chief in the proceeding be given by way of affidavits. 6. By 20 March 2012 the parties file and serve an affidavit of documents in the following categories: (a) documents on which a party intends to rely; and (b) documents that have significant probative value adverse to a party's case. 7. By 27 March 2012 the parties provide inspection. 8. The Applicants file and serve the evidence on which they intend to rely in support of the claim by 11 April 2012. 9. The Respondents and Cross-claimants file and serve the evidence on which they intend to rely in answer on the claim and in support of the cross-claim by 22 May 2012. 10. The Applicants file and serve the evidence on which they intend to rely in reply on the claim and in answer on the cross-claim by 19 June 2012. 11. The directions hearing is adjourned to 25 June 2012 at 10.15 am. 12. The Respondents file and serve the evidence on which they intend to rely in reply on the cross-claim by 10 July 2012. 13. Costs be reserved. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY GENERAL DIVISION VID 1467 of 2011 BETWEEN: JACKEL INTERNATIONAL LIMITED First Applicant SANGENIC INTERNATIONAL LIMITED Second Applicant MAYBORN ANZ PTY LTD (ACN 154 703 134) Third Applicant AND: JACKEL PTY LIMITED (ACN 128 984 707) First Respondent JACKEL TRADE MARKS PTY LTD (ACN 129 846 690) Second Respondent JACKEL ANZ PTY LIMITED (ACN 133 251 546) Third Respondent JUDGE: NORTH J DATE: 16 FEBRUARY 2012 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 On 19 December 2011, an application was filed by the applicants. The application alleged that the respondents contravened the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) by representing to retailers, wholesalers and others in the market for baby care products, that the respondents owned trademarks for the words 'Closer to Nature' and the word 'SANGENIC'. The application was filed in the fast track list. Within days, the Court had heard and determined an interlocutory application for an injunction restraining further representations of that nature. 2 Thereafter, the matter proceeded in accordance with Practice Note CM8 (Fast Track Directions). In accordance with the arrangements set out in that practice note, the application was listed today for an initial directions hearing which, in the Fast Track Directions, is called a scheduling conference. The respondents applied at this scheduling conference for an order that the matter be removed from the fast track list. 3 The essential argument upon which the respondents relied was that the parameters of the case had greatly expanded since the application was filed. Following the grant of the interlocutory injunction, the applicants filed an amended application which contained additional claims under the Trademarks Act 1995 (Cth). Although the amended application itself expanded the case, the more significant expansion arose from the fast track response and cross-claim subsequently filed by the respondents. In essence, the respondents contend that they have gained permission and rights in the trademarks by a long course of business conduct between the parties in which they have acted for many years as the distributers of the applicants' products in Australia. 4 One way in which the expansion of the issues is evident is in the respondents' estimate of the likely duration of the trial. They suggest that the trial would take seven to eight days, and have filed an initial list of witnesses containing 11 witnesses. The applicants, on the other hand, suggest that the trial will be completed within five days and say they intend to call only two witnesses. Without in any way seeking to suggest that the applicants have acted other than with complete integrity, I approach their estimate with some degree of scepticism. I do so, having in mind the range of issues now before the court. It is, of course, very early in the interlocutory process for either the parties or the Court to make a fair estimate of the likely duration of the trial. However, bearing in mind the scope of the issues, and the likelihood of more than 13 witnesses being called, I would regard the respondents' outside estimate of eight days as, in itself, conservative. 5 Ms Strong SC, who appeared on behalf of the applicants, argued that the case could be prepared within the timeframe regularly contemplated by the fast track list, and therefore, should benefit from the arrangements set out in the Fast Track Directions, which would guarantee an early resolution of the issues between the parties. 6 Despite her best efforts to contend otherwise, Ms Strong SC, has not demonstrated that the respondents' central argument regarding the expansion of the parameters of the case is wrong. The likely duration of the trial, in itself, takes the matter outside the type of case which should remain in the fast track list. This is not to suggest that when the matter was first filed the applicants were not justified in utilising the fast track procedure. As the case was then constructed there was an assumption that there was no complexity in the trademark ownership issue. Had that remained the case, the applicants' claim would have succeeded with proof of the registration of the relevant trademarks and the admitted representations made by the respondents. Such a case would have occupied less than half a day. 7 However, the way in which the case has progressed since then, both by reason of the expansion of the issues and the consequent increase in the likely duration of the trial, makes it inappropriate for it to remain in the fast track list. Having said that, it was explained to the parties that the apparent advantages of the fast track list were, in any event, rather illusory. The matter is likely to receive a trial date in my docket in the early part of the second half of the year, although I cannot bind myself to such a time. The matter will be brought back for directions on 25 June 2012 and it is hoped that a trial date will then be provided. In the end, the applicants did not offer much resistance to that timeframe. 8 Ms Strong SC pointed out that the applicants would, ideally, like to have a judgment by April 2012, which is when they intend to launch their products in Australia. The desire of the applicants to launch their products in April is not a reason for any particular expedition in this case. They have had the benefit of very prompt access to the court within days of filing to obtain an interlocutory injunction. Their position is protected, to a large degree, by that injunction. 9 The history of this proceeding demonstrates that quite apart from the fast track list, the traditional procedures available in this Court are able to cater for the requirements of commerce. 10 There is a questionable assumption behind the fast track process that certain categories of cases should receive priority treatment above other work of the Court. The Fast Track Directions specify that they are to apply to the new proceedings which arise out of or relate to the following: (i) commercial transactions; (ii) an issue that has importance in trade or commerce; (iii) the construction of commercial documents; (iv) an issue that has importance in personal insolvency; or (v) intellectual property rights apart from patents. 11 The Federal Court has a very wide jurisdiction. It could be argued that the Court's most important role is in the area of public law in determining disputes between the government and individuals under Commonwealth legislation. It would be a wrong exercise of judicial power were the fast track list to result in the commercial cases to which it refers being given priority, that is to say an earlier trial date, over other competing cases simply by reason of the nature of transactions to which the fast track process applies. If this were so, cases before the Court in which persons held in mandatory detention seeking judicial review of decisions relating to their status as refugees, or cases in which the rights of consumers are sought to be upheld by regulatory bodies such as the Australian Competition and Consumer Commission or the Australian Security Investment Commission would be delayed because a commercial case was given a priority over them. This cannot have been the intention of the implementation of the fast track list. In any event, it is necessary for judges to be astute to prevent such a distortion of the fair operation of the administration of their dockets. This is a further reason why the present proceeding should be removed from the fast track list. Having indicated to the parties these conclusions, there was general agreement as to the orders which should be made. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice North. Associate: Dated: 9 March 2012