Guttershield Systems v LBI Holdings Pty Ltd [2003] NSWSC 241

New South Wales Supreme Court

CITATION : Guttershield Systems v LBI Holdings Pty Ltd [2003] NSWSC 241 HEARING DATE(S) : 24 March 2003 JUDGMENT DATE : 24 March 2003 JURISDICTION: Equity JUDGMENT OF : Campbell J DECISION : Proceedings not transferred

CATCHWORDS : PROCEDURE - miscellaneous procedural matters - transfer of proceedings under cross-vesting legislation - whether in interests of justice for proceedings to be transferred to Supreme Court of another State LEGISLATION CITED : Jurisdiction of Courts (Cross Vesting) Act 1987 CASES CITED : Patrick Badges Pty Ltd v Commonwealth of Australia [2002] NSWSC 221 Guttershield Systems Australia Pty Ltd - Plaintiff PARTIES : Guttershield Pty Ltd - Plaintiff LBI Holdings Pty Ltd - First Defendant Leafbusters Pty Ltd - Second Defendant FILE NUMBER(S) : SC 5724/02 COUNSEL : G F Grinter - Plaintiff/Respondent S Reuben - Defendants/Applicants SOLICITORS : John Brent & Co - Plaintiff/Respondent Denes Ebner - Defendants/Applicants

IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION EQUITY LIST

CAMPBELL J

MONDAY 24 MARCH 2003

5724/02 GUTTERSHIELD SYSTEMS v LBI HOLDINGS PTY LIMITED JUDGMENT – Ex tempore 1 HIS HONOUR: This is the hearing of a notice of motion brought by the defendant in proceedings seeking the transfer of these proceedings to the Supreme Court of Victoria. The transfer is sought under s 5(2)(b)(iii) of the Jurisdiction of Courts (Cross Vesting) Act 1987. That provides that: "Where (a) a proceeding in this sub-section referred to as the relevant proceeding is pending in the Supreme Court of a State or Territory (in this sub-section referred to as the 'first court'); and (b) It appears to the first court that ... (iii) is otherwise in the interests of justice that the relevant proceeding be determined by the Supreme Court of another State ... the first court shall transfer the relevant proceeding to that other Supreme Court." 2 The parties before me are in agreement that the relevant principles have been stated by Howie J in his judgment in Patrick Badges Pty Ltd v. Commonwealth of Australia [2002] NSWSC 221, where his Honour said: "3. The subsection requires this Court to decide which is the more appropriate court to determine the proceedings brought by the plaintiff: Bankinvest AG v Seabrook (1988) 14 NSWLR 771 at 714E, 727 B ; James Hardie & Coy Pty Ltd v Barry (2000) 50 NSWLR 357 at 379. A court will be more appropriate than another if in that court the case may be "tried more suitably for the interests of all the parties and the ends of justice": Spiliada Maritime Corporation v Cansulex Limited [1987] AC 460 at 476 applied in James Hardie at 378. It has been held that a broad view is to be taken as to what are the interests of justice in this respect including both procedural and substantive law questions as well as the convenience of the parties. It has been suggested that there is strictly no burden or onus upon either party to persuade the Court either to transfer the proceedings or not to take that course: Bankinvest at 727C. However, as the defendant has brought this application, it has to persuade the Court to make the order it seeks : James Hardie at 380 par [100]. 4. In James Hardie at 379 par [95] reference was made to what was described as "a useful checklist" in deciding an application for a transfer of the proceedings and which is contained in the decision of Higgins J in Dawson v Baker (1994) 120 ACTR 11 at 22. It is as follows: · application of substantive law · forensic advantage or detriment conferred by procedural law · the choice made by the plaintiff of the forum and the reasons for that choice · balance of convenience to parties and witnesses; and · convenience to the court system." 3 The proceedings are ones which were begun by summons on 29 November 2002. All of the parties are involved in an industry which involves putting plastic devices into the guttering of buildings, so as to keep leaves out. The plaintiff are companies which carry on that business in New South Wales. The second defendant is a company which carries on that business in, amongst other places, Victoria. The first defendant is a company which holds certain patents which relate to devices which are useful for keeping leaves out of gutters. The relief which is sought in the principal proceeding is a declaration that the plaintiffs are beneficially entitled to a one-third share in five such patents, together with some consequential orders to give effect to any such beneficial entitlements. 4 The plaintiffs and the second defendant were involved in a loose arrangement from 1993 onwards whereby they co-operated in obtaining material which was suitable for use as a leaf protector, and installing it in their respective territories. There were another two companies, connected with a Mr De Graaf, who operated in South Australia in that industry. In 1999 a document was executed. It was, it appears to be common ground, a document which was drawn up by Mr Wickett, who is prominent in the affairs of the plaintiff. It is entitled "Agreement of the Alliance". It defines some terminology at the beginning. "The Alliance" is "the grouping of the six companies to act as a united body for all future business dealings within the gutter protection industry". There were then six companies identified, of which the plaintiff was one. The second defendant was another. There was an allocation of territories within Australia between the various members of the Alliance. The agreement said that each member of the Alliance agreed to restrict mesh sales and fitted gutter protection system sales to within the boundaries of their allocated territory. It continued: "Each member of the Alliance agrees to give support to the Alliance, both financially and intellectually for the following categories, as governed by paragraphs five and six: … E. Research and development of new meshes, fastening systems or any development that will improve the function of the Alliance members businesses within the Alliance F. All costs associated with the development of contracts, patents, trademarks or any intellectual property developed by the Alliance."