FEDERAL COURT OF AUSTRALIA Christian v Société Des Produits Nestlé S.A. (No 2) [2014] FCA 1159 Citation: Christian v Société Des Produits Nestlé S.A. (No 2) [2014] FCA 1159 Appeal from: Application for leave to appeal: Société Des Produits Nestlé SA & Anor v Christian & Anor (No.4) [2014] FCCA 2025 and Société Des Produits Nestlé SA & Anor v Christian & Anor (No. 6) [2014] FCCA 2368 Parties: JAMES WILLIAM CHRISTIAN and MARK CHARLES CHRISTIAN v SOCIÉTÉ DES PRODUITS NESTLÉ S.A. and NESTLÉ AUSTRALIA LTD ACN 000 011 316 File number(s): NSD 940 of 2014 Judge(s): YATES J Date of judgment: 28 October 2014 Catchwords: PRACTICE AND PROCEDURE – application for leave to appeal from a judgment of the Federal Circuit Court of Australia Legislation: Trade Marks Act 1995 (Cth) s 120 Cases cited: Christian v Société Des Produits Nestlé S.A 2014 [FCA] 1075 Société Des Produits Nestlé SA & Anor v Christian & Anor (No. 6) [2014] FCCA 2368 Société Des Produits Nestlé SA & Anor v Christian & Anor (No. 7) [2013] FCCA 2468 The State of New South Wales v Canellis (1994) 181 CLR 309 Date of hearing: 28 October 2014 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 19 First Applicant: In person Counsel for the Respondents: Mr S Burley SC with Mr B Mee Solicitor for the Respondents: Banki Haddock Fiora IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 940 of 2014 BETWEEN: JAMES WILLIAM CHRISTIAN First Applicant MARK CHARLES CHRISTIAN Second Applicant AND: SOCIÉTÉ DES PRODUITS NESTLÉ S.A. First Respondent NESTLÉ AUSTRALIA LTD ACN 000 011 316 Second Respondent JUDGE: YATES J DATE OF ORDER: 28 OCTOBER 2014 WHERE MADE: SYDNEY THE COURT ORDERS THAT: 1. Leave be granted to the applicant to appeal from: (a) orders 1, 2 and 3 made by the Federal Circuit Court of Australia (the Federal Circuit Court) on 3 September 2014, being injunctions granted against the applicant, and (b) orders 2, 3, 4, 5, 6 and 7 made by the Federal Circuit Court on 17 October 2014, being orders varying the injunctions granted against the applicant on 3 September 2014, and granting further injunctions, in proceeding SYG3214/2013, on the grounds that: (c) the Federal Circuit Court erred when determining the question of trade mark infringement by taking into account the applicant's logo referred to as the first A-SASHI logo, and (d) when determining the question of trade mark infringement, the Federal Circuit Court did not correctly apply the proviso in s 120(2) of the Trade Marks Act 1995 (Cth). 2. The appeal be listed for hearing on a date to be fixed during the Full Court and Appellate sitting period from 9 February to 6 March 2015. 3. The hearing be listed with an estimate of half a day. 4. The leave granted to the applicant is to be exercised by no later than 4 pm on 4 November 2014. 5. The respondents file any cross-appeal by no later than 4 pm on 11 November 2014. 6. If a notice of appeal is filed within the time provided by order 4, the appeal is to be listed for directions before Justice Yates at 9.30 am on 20 November 2014. 7. Leave be granted to the applicant to appear at the directions hearing on 20 November 2014 via telephone. 8. The applicant pay the respondent's costs of the hearing on 2 October 2014 and the costs of, and incidental to, the interlocutory application filed on 16 September 2014. Otherwise, the costs of the application for leave to appeal be costs in the appeal. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 940 of 2014 BETWEEN: JAMES WILLIAM CHRISTIAN First Applicant MARK CHARLES CHRISTIAN Second Applicant AND: SOCIÉTÉ DES PRODUITS NESTLÉ S.A. First Respondent NESTLÉ AUSTRALIA LTD ACN 000 011 316 Second Respondent JUDGE: YATES J DATE: 28 OCTOBER 2014 PLACE: SYDNEY REASONS FOR JUDGMENT (REVISED FROM TRANSCRIPT) 1 On 2 October 2014, I commenced the hearing of the applicant's application for leave to appeal. At the conclusion of the hearing, I made an order standing over the application to a date after the Federal Circuit Court of Australia (the Federal Circuit Court) considered and determined further injunctive relief sought by the respondents: Christian v Société Des Produits Nestlé S.A 2014 [FCA] 1075 (my earlier reasons). I also stood over the applicant's interlocutory application dated 16 September 2014 seeking an order "to stay the execution of proceedings until the appeal is heard and determined pursuant to terms within r 36.08(2) under the FCR 2011". 2 In my earlier reasons, I stated at [35]-[36]: 35. I am not satisfied that, at the present time, leave to appeal should be granted. I accept the respondent's submission that, to grant leave now, would be premature, particularly in light of the fact that the respondent's claim for further injunctive relief has been listed for hearing in one week's time in circumstances where the applicant can raise his concerns about the effect that any order might have on his business interests outside Australia and where the respondents have informed me that they propose to seek, in any event, a variation of order 3, that will attempt to address its operation on the applicant's activities, if any, engaged in outside Australia. 36. However, rather that refusing the applicant's application for leave to appeal, and dismissing his interlocutory application for a stay, I am of the view that the better course is to stand over both applications for further hearing to a date after the Federal Circuit Court gives judgment in relation to the respondent's claim for further injunctive relief to be heard on 9 October 2014. 3 On 17 October 2014, the Federal Circuit Court considered and determined the question of further injunctive relief and made orders: Société Des Produits Nestlé SA & Anor v Christian & Anor (No. 6) [2014] FCCA 2368. The question of the respondents' claim for pecuniary relief against the applicant remains to be determined. Application for leave to appeal 4 In his application for leave to appeal filed on 16 September 2014, the applicant identified two grounds of appeal, as follows: (1) The Court applied an incorrect principle of law by making orders which extend to enforcement outside the jurisdiction of Australia and the Territories, and is contrary to the terms within s 18 Federal Court of Australia Act 1976; and (2) The Court made a finding of fact on an important issue, which could not be supported by the evidence. That is, the Court used the (first A-SASHI logo) as correct evidence which is shown to be incorrect evidence in the supporting affidavit affirmed 16 September 2014 when determining the critical issue of deceptive similarity and delivering the substantive hearing judgment ruling that I have infringed the Australian registered trademarks of Musashi within the meaning of section 120 of the Trade Marks Act 1995. 5 The grounds of appeal set out in the applicant's draft notice of appeal mirror the two grounds in the application for leave to appeal. The applicant has informed me today that he no longer seeks to rely on ground 1 in his application, however he seeks to expand his proposed grounds of appeal to include the following: • When determining the question of trade mark infringement, the Federal Circuit Court did not correctly apply the proviso in s 120(2) of the Trade Marks Act. • Compliance with Order (3C) made by the Federal Circuit Court on 17 October 2014 "is not technically possible". • The Federal Circuit Court erred by dismissing three applications for adjournment made by the applicant on 2 September 2014, 8 October 2014 and 16 October 2014 to obtain legal representation, and thereby denied the respondent the fair opportunity to conduct his case before that court. • The Federal Circuit Court erred in refusing to extend time to comply with an order made on 3 September 2014 and amended on 9 October 2014 that any cross-claim by the applicant be filed by 5 November 2014. 6 In my earlier reasons, I stated at [24]: 24. At the point at which a determination of liability for infringement has been made and judgment is given for declaratory and/or injunctive relief, but the question of pecuniary relief remains outstanding the judgment so given is interlocutory in character because it does not conclude or finally determine all the rights of the parties at issue in the proceeding. In such cases, leave to appeal is readily granted. I do not understand the respondents to dispute that general proposition. They do, however, point to the fact that other questions of injunctive relief remain outstanding in the present case and raise the question whether, in that state of affairs, leave to appeal should be granted at that time. 7 As the Federal Circuit Court has now determined the outstanding questions of injunctive relief, the respondents do not oppose the application for leave to appeal but submit that leave should be limited to ground 2 as originally appearing in the application for leave to appeal, as well as the ground now raised that the Federal Circuit Court erred in applying the proviso to s 120(2) of the Trade Marks Act 1995 (Cth). Consideration 8 I am satisfied that it is appropriate to grant the application on those two grounds. I am not satisfied, however, that it is appropriate to grant leave to appeal in relation to the additional grounds which the applicant now seeks to raise. 9 First, no submission was advanced by the applicant before the Federal Circuit Court that compliance with Order (3C) made on 17 October 2014 was "not technically possible". The applicant was on clear notice that this order would be sought when the matter came before the Federal Circuit Court on 9 October 2014. Indeed, as I have noted, the fact that the respondents would be seeking such an order was made clear before me on 2 October 2014. So far as I can see, the applicant has had an opportunity to address the matter he now seeks to raise but, for whatever reason, chose not to do so when the matter was before the Federal Circuit Court on 9 October 2014 and thereafter. The question of whether compliance with Order (3C) is technically possible is a factual matter that is presently disputed by the respondents. An appeal before this Court is not the occasion to determine that disputed question of fact when it has not been raised before the Federal Circuit Court and considered by that court. If the applicant wishes to pursue that matter his recourse is to seek a variation of the order from the Federal Circuit Court. In this connection, I note that on 17 October 2014 the Federal Circuit Court granted liberty to apply in relation to the implementation of any of the orders made on that date on such notice as the circumstances warrant. 10 Secondly, the Federal Circuit Court's refusal to grant the applicant adjournments to obtain legal representation essentially relate to matters of practice and procedure. In my view, it is not appropriate in the present case to grant leave to appeal in respect of those matters. The applicant has raised, in my view, no serious case that the Federal Circuit Court was in error in refusing the adjournments that were sought. Further, I should record that this ground was advanced by the applicant on the erroneous basis that he had an entitlement to legal representation. That is not the case: The State of New South Wales v Canellis (1994) 181 CLR 309 at 328. 11 Thirdly, the applicant has raised no serious case that the Federal Circuit Court erred in refusing to extend time to comply with the order that he file any cross-claim by 5 November 2014. Once again, this relates essentially to a matter of practice and procedure. The matter was fully considered in the primary judge's reasons on 17 October 2014 to which I have referred, and again, in further reasons given by the primary judge on the same day. Société Des Produits Nestlé SA & Anor v Christian & Anor (No. 7) [2013] FCCA 2468. 12 As to the question of the stay, the applicant seeks a stay of Order (3C) made on 17 October 2014 and Order 5 made on 3 September 2014 which was subsequently varied. 13 I have already briefly referred to Order (3C). It requires the first respondent, by 31 October 2014, to restrict the countries in which the website to which the domain name www.a-sashi.com resolves can be viewed to block the site of IP addresses in Australia. This is the matter which the applicant says is not technically possible and which the respondents dispute. 14 Substantially, for the reasons I have advanced for refusing leave to appeal from that order, I refuse the stay that is sought. I repeat that the applicant's recourse, if there are technical difficulties, is to take that matter up with the Federal Circuit Court pursuant to the leave that it has granted. 15 Similarly, no proper case has been established for a stay in relation to Order 5 made on 3 September 2014. I have also referred to that order, which relates to the leave granted to the applicant to file a cross-claim on certain steps being taken. As I have already noted, that order was extended to 5 November 2014, but further extensions twice sought by the applicant were refused for the reasons advanced by the primary judge. 16 I should add that the refusal to grant a stay of either order will not render an appeal on the two grounds I have identified nugatory. 17 There was a further matter raised in the applicant's interlocutory application dated 16 September 2014. It relates to a change of venue for the hearing of the appeal. On 2 October 2014, or perhaps earlier, I understood the applicant's position to be that he was not seeking that relief. However, today, he reagitated that matter. He raised, in that regard, the question of a possible difficulty in settling appeal books. In my view, that is not a sufficient reason for changing the venue of the hearing of the appeal from Sydney to Melbourne. 18 The applicant also raised his own difficulties in attending such an appeal. However, this will be the applicant's appeal, and, at the present time, I can see no good reason to subject the respondents to the significant costs of conducting the hearing of an appeal in Melbourne having regard to the fact that the applicant has already filed an affidavit in this application indicating his presently impecunious position. Secondly, it seems to me that there is no good reason why the applicant cannot travel to Sydney for the hearing of the appeal. Thirdly, it is at least possible that the hearing of the appeal can take place by either telephone or by videolink. Whether either of those courses is at all appropriate is not a matter that I propose to consider at the present time. Further, the respondents have foreshadowed the filing of a notice of cross-appeal, and I wish to have a clear understanding of what would be involved in the cross-appeal before considering any application that might be made in that regard. Disposition 19 Leave to appeal is to be granted on the grounds I have indicated. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates. Associate: Dated: 28 October 2014