FEDERAL COURT OF AUSTRALIA Geneva Laboratories Limited v Prestige Premium Deals Pty Ltd [2016] FCA 1441 File number: NSD 1559 of 2015 Judge: PERRAM J Date of judgment: 2 December 2016 Catchwords: CONTEMPT OF COURT – inter partes settlement – whether Court is obliged to deal with contempt Cases cited: Witham v Holloway (1995) 183 CLR 525 Date of hearing: 24 October 2016 and 11 November 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 8 Counsel for the Applicant: Mr A Casselden SC Solicitor for the Applicant: Marque Lawyers Counsel for the Respondent: Mr D Eardley Solicitor for the Respondent: Mercantile Legal ORDERS NSD 1559 of 2015 BETWEEN: GENEVA LABORATORIES LIMITED Applicant AND: PRESTIGE PREMIUM DEALS PTY LTD Respondent JUDGE: PERRAM J DATE OF ORDER: 11 NOVEMBER 2016 THE COURT ORDERS THAT: 1. Stand the matter over for further directions on Friday, 3 March 2017 at 9.30am. THE COURT NOTES THAT: 2. On Friday, 3 March 2017, unless the conditions set out in the orders dated 24 October 2016 are not satisfied, the proceeding will be dismissed with no order as to costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT PERRAM J: 1 The present question is whether the Court should proceed to deal with the first and second respondents for contempt of Court or whether, there having been an inter partes settlement of the applicants' contempt charge against them, the matter should be left to rest. 2 On 1 December 2015, the applicants filed an Originating application and Statement of charge alleging that the first and second respondents had been guilty of contempt by breaking a formal undertaking which had been given to the Court on 13 December 2012. 3 That issue was set down for trial before me on Monday, 24 October 2016. When the matter was called on counsel for both sides indicated that a settlement of the contempt proceeding had been reached. As a consequence of that settlement I was invited to, and did, make the following orders: 1. The proceedings be dismissed after the following conditions have been met. (a) The Respondents pay the Applicants' costs in the amount of $15,000, in the following instalments: (i) $5,000 on 24 October 2016; (ii) $5,000 on or by 21 November 2016; and (iii) $5,000 on or by 28 February 2017, by depositing the amounts into the trust account of the solicitors for the Applicants, being: Bank: NAB BSB: 082-080 Account No. 11-377-8820 Name: Marque Lawyers Pty Ltd Law Practice Trust Account. (b) The Respondents provide a written apology, to be approved by the Applicants, with such written apology to be circulated by the Respondents by email to the recipients of the Prestige Emails (as defined in the affidavit of David Letschert sworn on 14 October 2016). (c) On or by 7 November 2016, the Respondents provide to the Applicants evidence of the circulation of the approved apology to the recipients of the Prestige Emails by the Respondents. (d) The Respondents acknowledge and agree: (i) that time is of the essence in respect of all amounts payable under the terms of this settlement; and (ii) that they do not dispute the debts owing under the terms of this settlement. 2. The proceedings be otherwise adjourned until 11 November 2016. 4 I then excused the applicants from further involvement in the proceeding, but raised with counsel for the first and second respondents whether the Court might still be obliged to deal with the contempt issue itself. The matter was stood over for further argument to Friday, 11 November 2016. 5 In Witham v Holloway (1995) 183 CLR 525 a plurality of the High Court (Brennan, Deane, Toohey and Gaudron JJ) said this about the settlement of contempt proceedings (at 533): Moreover, there is considerable difficulty with the notion that, in some cases, the purpose or object of the proceedings is punitive and, in others, the purpose or object is remedial or coercive. It should at once be noted that the purpose of the proceedings is not the same as the purpose or object of the individual bringing the proceedings and it is well recognised that, notwithstanding that proceedings are brought by an individual to secure the benefit of an order or undertaking, a "penal or disciplinary jurisdiction" may also be called into play. It has been held that the "penal or disciplinary" jurisdiction may be exercised even when the parties have settled their differences and do not wish to proceed further. Thus, in Canadian Transport v Alsbury, Sidney Smith JA rejected the submission that settlement precluded further proceedings saying: "Are we to be told that after a party has defied a court, the court can still do nothing because the other party is willing to swallow the contempt? Nothing short of the clearest authority would convince me that that is the law; and there is no such authority and no such law." (Emphasis added. Footnotes omitted.) 6 The critical word here is 'may'. The Court is not obliged to do anything if the circumstances are not appropriate. It may be one thing to proceed to deal with a contempt which has already been established or which is plain. But in this case, the Court knows little of the alleged contempt itself which is, at least in this case, entirely an inter partes issue. 7 In order to pursue the contempt question it would be necessary for the Court, in effect, to pick up the applicants' case and pursue it. This would extend to the calling of the applicants' witnesses. It may well be possible to do this, but I do not think in this case that that would be appropriate. 8 It was for those reasons that I did not proceed to deal with the contempt issue. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. Associate: Dated: 2 December 2016