FEDERAL COURT OF AUSTRALIA Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd [2012] FCA 1383 Citation: Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd [2012] FCA 1383 Parties: HARCOURTS WA PTY LTD v ROY WESTON NOMINEES PTY LTD File number: SAD 224 of 2012 Judge: BESANKO J Date of judgment: 6 December 2012 Catchwords: PRACTICE AND PROCEDURE – Application to transfer proceeding to Western Australia District Registry – where majority of persons involved in proceeding based in Western Australia – where applicant consented to part or all of substantive trial being heard in Western Australia – where applicant represented by legal practitioners in South Australia – relevance of availability of video-link facilities – balance of convenience – s 48 of Federal Court of Australia Act 1976 (Cth). Held: the proceeding should be transferred to the Western Australia District Registry of this Court. Legislation: Federal Court of Australia Act 1976 (Cth) s 48 Federal Court Rules 2011 (Cth) rules 2.02, 5.04 Trade Marks Act 1995 (Cth) s 88 Australian Consumer Law s 236 Cases cited: Gun Capital Management Pty Ltd v Solamind Pty Ltd [2010] FCA 1360, cited Lamb v Hog's Breath Corporation Pty Ltd (No 1) [2007] FCA 49, cited Macks v Garrett (2008) 174 FCR 151, cited National Mutual Holdings Pty Ltd v Sentry Corporation (1988) 19 FCR 155, cited Rafferty v Time 2000 West Pty Ltd [2008] FCA 1925, cited Date of hearing: 12 November 2012 Place: Adelaide Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 26 Counsel for the Applicant: Mr T Duggan SC Solicitor for the Applicant: Minter Ellison Counsel for the Respondent: Ms R Lee Solicitor for the Respondent: Elevation Legal IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION SAD 224 of 2012 BETWEEN: HARCOURTS WA PTY LTD Applicant AND: ROY WESTON NOMINEES PTY LTD Respondent JUDGE: BESANKO J DATE OF ORDER: 6 DECEMBER 2012 WHERE MADE: ADELAIDE via Video Link with Perth THE COURT ORDERS THAT: 1. The proceeding be transferred to the Western Australia District Registry of this Court. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION SAD 224 of 2012 BETWEEN: HARCOURTS WA PTY LTD Applicant AND: ROY WESTON NOMINEES PTY LTD Respondent JUDGE: BESANKO J DATE: 6 DECEMBER 2012 PLACE: ADELAIDE via Video link with Perth REASONS FOR JUDGMENT 1 This is an application brought by the respondent, Roy Weston Nominees Pty Ltd ("Roy Weston"), to have this proceeding transferred from the South Australia District Registry to the Western Australia District Registry of the Court. The application is brought pursuant to s 48 of the Federal Court of Australia Act 1976 (Cth) ("Federal Court Act") and rule 2.02 of the Federal Court Rules 2011 (Cth) ("the Rules"). 2 The applicant is Harcourts WA Pty Ltd ("Harcourts") and it is a franchisor of a real estate services business as well as a provider of real estate services in the State of Western Australia. It is said to own various trade marks including the mark "Roy Weston". 3 On 6 September 2012 the applicant commenced this proceeding in the South Australia District Registry of the Court. In its Originating Application, Harcourts alleged that Roy Weston engaged in conduct that infringed its trademarks by use of the name "Roy Weston" in connection with the provision of real estate services in Western Australia. Harcourts seeks injunctive relief restraining Roy Weston from engaging in the alleged infringing conduct, rectification of the Register of Trade Marks by the cancellation of the respondent's alleged infringing trademarks pursuant to s 88(1) of the Trade Marks Act 1995 (Cth) and declarations in relation to claims of passing off and misleading and deceptive conduct and damages, pursuant to s 236 of the Australian Consumer Law. 4 On 27 September 2012, I made an order that Roy Weston's obligation under the Rules to file a defence be suspended until further order. That was done in anticipation of the present application, which was made on 26 October 2012. 5 Section 48 of the Federal Court Act provides, relevantly: (1) The Court or a Judge may, at any stage of a proceeding in the Court, direct that the proceeding or a part of the proceeding be conducted or continued at a place specified in the order, subject to such conditions (if any) as the Court or Judge imposes. 6 Rule 2.02 of the Rules, allows a party to apply at the proper place for an order that the proceeding be transferred to another place. "Proper place" is defined in Schedule 1 to the Rules to be the place where the proceeding is started which, in this case, is the South Australia District Registry. Furthermore, under Rule 5.04(1) of the Rules, "the Court may make directions for the management, conduct and hearing of a proceeding" and item 34 in Rule 5.04(3) expressly provides that the Court may make a direction for the transfer of the proceeding to another place at which there is a Registry. 7 The decision whether or not to transfer a proceeding involves the exercise by the Court of a broad and unfettered discretion. A respondent must show a sound reason for a change of venue. The relevant principles were considered by the Full Court of this Court in National Mutual Holdings Pty Ltd v Sentry Corporation (1988) 19 FCR 155 ("National Mutual Holdings"). The Court said (at 162): The balance of convenience is important, but its weight must vary from case to case. Ultimately the test is: where can the case be conducted or continued most suitably, bearing in mind the interests of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the Court? It cannot and should not, in our opinion, be defined more closely or precisely. 8 In Rafferty v Time 2000 West Pty Ltd [2008] FCA 1925 ("Rafferty v Time 2000 West Pty Ltd") at [3], I summarised some of the other principles stated in National Mutual Holdings: The power in s 48 is wholly unfettered and should be exercised flexibly, having regard to the circumstances of the particular case. The power in s 48 should not be circumscribed by inflexible rules or inelastic constraints and, while the balance of convenience will generally be a relevant consideration, it will not necessarily be determinative of each case. Although there is no onus of proof on a party seeking a change of venue, there must be a sound reason to order a change of venue. No weight will be placed on a party's choice of venue if that choice was made capriciously. 9 In Lamb v Hog's Breath Corporation Pty Ltd (No 1) [2007] FCA 49, French J (as his Honour then was) said (at [7]): The question of the Registry from which the proceedings should be conducted does not raise matters of high principle. It is essentially a matter of case management and proper recognition of the legitimate interests of each of the parties reflected, in part, in the balance of convenience as between them and, of course, the convenience of the Court and any economies and efficiencies that may attach to one choice or another. 10 In Macks v Garrett (2008) 174 FCR 151, Lander J said (at [153]): The power conferred by s 48 recognises the national character of this Court. The factors which the Court is entitled to take into account in considering whether one place is more appropriate than another for interlocutory hearings or for the trial itself are numerous. The Court must weigh those factors in each case. Residence of parties and of witnesses, expense to parties, the place where the cause of action arose, and the convenience of the Court itself are some of the factors that may be relevant in particular circumstances. The balance of convenience will generally be a relevant consideration but not necessarily determinative of each case. 11 In support of its application, Roy Weston relied on three affidavits. The first is that of Ms Grace Ng, which was sworn on 11 October 2012. Ms Ng is a lawyer and a member of the firm of solicitors which represents Roy Weston, namely, Elevation Legal. She deposes to the fact that on 22 July 2011, Roy Weston through its solicitors filed an application with IP Australia for the revocation for non-use of Harcourt's relevant "Roy Weston" trademarks ("the revocation proceedings"). Harcourts has filed a notice of opposition to the revocation proceedings, and has subsequently sought and obtained several extensions of time from IP Australia for the filing of evidence in support of its opposition. Ms Ng deposes to the fact that on 6 September 2012, Harcourt's solicitors filed with IP Australia a request for a stay of the revocation proceedings, pending the determination of the proceeding in this Court. 12 The second affidavit relied on by Roy Weston is an affidavit of Mr Daniel Davies, which was sworn on 22 October 2012. Mr Davies is an intellectual property consultant at Elevation Legal and he is a solicitor of the Supreme Court of England and Wales. He deposes to the fact a company search reveals that Harcourts was incorporated in Western Australia and that up to 12 August 2007, its registered office was in Perth, Western Australia. After that date the company's registered office was an address in Brisbane, Queensland. He deposes to the fact that one of Harcourt's two directors appears to reside in Perth and the other appears to reside in Brisbane. Mr Davies deposes to the fact that the sole current shareholder of Harcourts is based in Brisbane. The vast majority of Harcourts' former directors live in Western Australia and all of its former shareholders reside in Perth. Mr Davies also deposes to the results of a company search of Roy Weston. Roy Weston's registered office is in Perth and its directors and shareholders reside in Perth. Mr Davies produces correspondence which has passed between Elevation Legal, and Harcourts' solicitors, Minter Ellison, in which Roy Weston sought Harcourts' consent to the proposed transfer. In this correspondence, Roy Weston's solicitors contended that most, if not all of the witnesses in the matter were in Perth, Western Australia, that both parties' place of business was in Perth and that the only apparent connection between the proceeding and South Australia was the location of the offices of Harcourts' solicitors. By letter dated 4 October 2012, Minter Ellison said that Harcourts would not object to the trial in this proceeding being held in Perth, to the extent necessary to accommodate Roy Weston's witnesses. 13 Finally, Roy Weston relied on a supplementary affidavit of Mr Davies, sworn on 9 November 2012. In this affidavit, Mr Davies deposes to Roy Weston's understanding, following the receipt by it of a statutory declaration of Ms Adrienne Denise Musca, described as the executive assistant of Harcourts, and filed by Harcourts in the revocation proceedings on 24 October 2012, that Harcourts' principal witness in this proceeding (at least with respect to Harcourts' use of the relevant "Roy Weston" trademarks) will be Ms Musca and that she resides in Perth. Mr Davies also notes that Roy Weston has identified thirteen potential witnesses for Roy Weston in this proceeding and that all of those potential witnesses reside in Perth. 14 In opposition to Roy Weston's application, Harcourts relied on an affidavit of Mr Joshua Simons, sworn on 1 November 2012. Mr Simons is a solicitor employed by Minter Ellison. In his affidavit, Mr Simons deposes to the fact that Harcourts is a wholly owned subsidiary of Harcourts Group (Australia) Pty Ltd, which, together with Harcourts, forms part of the Harcourts International Group. The chairman of the group resides in South Australia. More importantly for present purposes, Mr Simons deposes to the fact that Minter Ellison's Adelaide office has acted as the sole legal advisers to Harcourts Group (Australia) Pty Ltd since 2008, and has been instructed in this matter and the related revocation proceedings since July 2011. Mr Simons states that while Harcourts will call "numerous witnesses", it is likely that its primary witness will be Mr Michael Barry Green, a director and the company secretary of Harcourts, as well as the CEO of Harcourts Group (Australia) Pty Ltd, which is the sole shareholder of Harcourts. Mr Green is based in Brisbane. Mr Simons states that on 14 September 2012, Harcourts indicated that it would consent to "part or all" of any future trial being held in Perth. 15 I have reached the conclusion that the proceeding should be transferred to the Western Australia District Registry. I have considered a number of matters. 16 First, it seems clear that the majority of the people relevantly involved with both parties, for the purposes of this proceeding, are based in Perth. This includes Roy Weston's directors and shareholders as well as the location of its registered office. The place of business of both parties is in Perth, and one of Harcourts' two directors resides in Perth. While I accept that Harcourts' second director and company secretary, Mr Green, resides in Brisbane, Queensland, the difficulty in Mr Green travelling to attend the proceeding in Perth does not seem to be much greater than the difficulty or inconvenience involved in travelling to Adelaide. Although the chairman of the Harcourts International Group resides in South Australia, counsel for Harcourts said that he was not involved in providing day to day instructions in this matter. The events which underpin Harcourts' causes of action occurred in Western Australia. While I accept that Harcourts' causes of action arise under federal legislation, such that no question of the application of a State law arises (see Rafferty v Time 2000 West Pty Ltd at [16]), the location of the majority of persons possibly involved in the dispute underlying this proceeding and the place where the events occurred is a factor in determining the location at which considerations of efficient case management and convenience are best served. 17 A further consideration is, as Roy Weston submits, that the transfer of the proceeding will allow for the personal attendance of its directors, as well as at least one of Harcourts' directors, at any pre-trial mediation. In order for Mr Green to attend, he would be required to travel irrespective of the outcome of this application. The importance of the personal attendance of those involved in the proceeding at pre-trial mediation conferences was noted by Siopis J in Gun Capital Management Pty Ltd v Solamind Pty Ltd [2010] FCA 1360 ("Gun Capital Management") at [13]. 18 Secondly, on the material before me, it seems likely that most of those persons who may be witnesses at the trial are based in Perth. Mr Davies' affidavits sworn on 22 October 2012 and 9 November 2012 respectively indicate that all of Roy Weston's witnesses are located in Western Australia. Whilst the proceeding is at a very early stage and a defence has not yet been filed, and that as a result it is difficult to be confident of the identity of relevant witnesses, it is important to note that Harcourts has not suggested that any of its potential witness are in Adelaide. To the contrary, the affidavit of Mr Simons states Harcourts' "primary witness" will be Mr Green, who is based in Brisbane. 19 Thirdly, I have considered the submission made by Harcourts' counsel that the matters in issue in this proceeding are primarily questions of law and that it is doubtful whether witnesses will be required. It is difficult to draw that conclusion having regard to the stage these proceedings have reached. 20 Fourthly, I have taken into account the fact that Harcourts has chosen to instruct the Adelaide office of solicitors Minter Ellison. It is trite to say that each party is entitled to elect which solicitors it chooses to retain in any given matter. However, in this case, the location of Harcourts' solicitors appears to be the determinative factor in it deciding to commence this proceeding in the South Australia District Registry. It is, in fact, the sole matter connecting this proceeding to South Australia. While I do not think Harcourts acted capriciously in electing to commence this proceeding in the South Australia District Registry, the location of its solicitors is not sufficient to tip the balance of convenience in its favour. 21 In Gun Capital Management, Siopis J considered the same submission in a case where a respondent sought to have a proceeding commenced in Western Australia transferred to the Victoria District Registry of this Court. His Honour, in concluding that the location of the applicant's solicitors was an insufficient basis on its own to refuse the application for transfer, noted at [15]: In my view, this consideration carries only limited weight in the circumstances of this case. First, there is no evidence that the applicant will terminate the retainer of Lavan Legal and Mr Bennett, if the proceeding is transferred to the Victoria District Registry. Accordingly, there is no evidence that a transfer of the proceeding will intrude upon the liberty of the applicant to be represented by the lawyers of its choice. Secondly, the Court is a national court and it is a common occurrence for the Court to use video link communications, particularly, in interlocutory proceedings, to accommodate the fact that the parties are represented by legal practitioners located in different States. 22 Similarly, there is no suggestion in this case that the transfer of the proceeding would require Harcourts to obtain alternative legal representation. In his affidavit, Mr Simons states that if the proceeding was to be transferred to the Western Australia District Registry, he would expect that he would remain the solicitor in charge of the litigation, with a colleague of his, Ms Bronwyn Furse of Minter Ellison Adelaide, remaining the solicitor with day to day conduct of the file. Harcourts' solicitors will remain willing and able to represent it in Perth, and, in fact, must have contemplated doing so, in light of what was said to be its consent to all or part of any trial being conducted in Perth. Harcourts' solicitors are similarly able to take advantage of the video-link facilities available to parties in this Court, as, indeed, Roy Weston's solicitors did on the hearing of this application, when they appeared by way of video-link from Perth. 23 Fifthly, I have considered the submission of Roy Weston that, should IP Australia transfer the revocation proceedings to this Court, Roy Weston will apply for this matter to be dealt with as a preliminary issue. It is clear that, were this to occur, there is some advantage in one Judge hearing the preliminary issue and the trial. 24 Harcourts put an alternative submission to the effect that it was too early to determine if the proceeding should be transferred. The defence, discovery and possibly witness statements, may indicate, for example, that there are very few disputes of fact. That, to a point, may be true and no doubt there are cases where it is too early in the proceeding to determine whether it should be transferred (see, for example, Lamb v Hog's Breath Company Pty Ltd (No 1) [2007] FCA 49). However, ordinarily an application for transfer should be made at an early stage in order to obtain the advantages of an early decision as to the Registry where the proceeding is to be heard and determined. These advantages include one Judge dealing with the matter as far as possible and the parties being able to make arrangements (financial, personal and other) connected with the place of the proceeding. Those advantages will be lost in whole or in part if, in a case such as the present, Harcourts' alternative submission is accepted. 25 On balance, the interests and convenience of the parties and the convenience of the Court all point to the Western Australia District Registry as being the appropriate place for the conduct of this proceeding. 26 I will make an order transferring this proceeding to the Western Australia District Registry of this Court. I will hear the parties as to any other orders. I certify that the preceding twenty-six (26) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Besanko. Associate: Dated: 6 December 2012