Crossmark Asia v Retail Adventures [2013] NSWSC 55

Supreme Court New South Wales

Medium Neutral Citation: Crossmark Asia v Retail Adventures [2013] NSWSC 55 Hearing dates: 23/01/2013 Decision date: 23 January 2013 Jurisdiction: Equity Division - Corporations List Before: McDougall J Decision: Declaration as sought by plaintiff. Catchwords: CONTRACT - agreements - termination cancellation. TRADE MARKS - registered trade marks - whether consent of registered owner was obtained. PRACTICE & PROCEDURE - application for declaratory relief - circumstances in which granting declaratory relief appropriate - declaration made. Legislation Cited: Corporations Act 2001 (Cth) Personal Properties Securities Act 2009 (Cth) Sale of Goods Act 1923 (NSW) Trade Marks Act 1995 (Cth) Cases Cited: Toll (FGCT) Pty Limited v Alphapharm Pty Limited (2004) 219 CLR Category: Principal judgment Parties: Crossmark Asia Limited (Plaintiff) Retail Adventures Pty Limited (Administrators Appointed) ACN 135 890 845 (Defendant) Representation: Counsel: M K Condon SC (Plaintiff) N Kabilafkas (Defendant) Solicitors: Price & Company Solicitors (Plaintiff) Herbert Smith Freehills (Defendant) File Number(s): 2012/399011

Judgment (EX TEMPORE - REVISED 23 JANUARY 2013) 1HIS HONOUR: I am concerned with a dispute as to the ownership of and right to sell a consignment of electric convection ovens and a consignment of electric pedestal fans. In each case, the goods were sold by the plaintiff (Crossmark) to the defendant (RAPL). The goods carried RAPL's brands. 2The matter has been dealt with in circumstances of urgency. It is obviously desirable that the fans be sold in summer, whilst people have need of them. Equally, whilst the goods remain unsold, storage charges are accruing at a substantial rate. 3Common sense would suggest that the parties might have agreed to the sale of the goods, on the most advantageous terms, with the proceeds to be held in an agreed fashion whilst the court decided the question of entitlement. Unfortunately - and I express no view as to why - common sense did not prevail. 4In those circumstances, the matter was heard, on a final basis, during the vacation. The circumstances of urgency require me to give my reasons orally, on the day following the day when the hearing concluded. Thus, what I have to say will be neither as detailed nor as polished as I might otherwise have wished. In particular, it will focus on what I perceive to be the decisive issues, and leave unresolved the other issues that might have arisen. Further, I do not propose to recount in any detail the very helpful submissions put for each party. The real issues 5The parties agreed that the real issues arising on the pleadings may be stated as follows: (1) Were the contracts made on the terms set out in Crossmark's pro-forma invoice (PFI) or set out or incorporated in RAPL's purchase orders (POs)? (2) Have the contracts of sale (on whatever basis made) been terminated, and if they have, has property in the goods revested in (if ever it left) Crossmark? (3) If the contracts were made on Crossmark's terms, what is the effect of s 267(2) of the Personal Properties Securities Act 2009 (Cth)(the PPSA) on the retention of title, or ROT, clause in the PFIs? (4) What, if any, are Crossmark's remedies under s 24 and s 42 of the Sale of Goods Act 1923 (NSW)? (5) Would any sale by Crossmark in Australia of the goods infringe RAPL's trademarks? (6) If Crossmark otherwise makes good its case, should it be granted declaratory relief? 6There had been an issue raised on the pleadings as to the grant of leave pursuant to s 440D of the Corporations Act 2001 (Cth) (RAPL having entered voluntary administration on 26 October 2012, and being under voluntary administration at all material times since). Mr Kabilafkas of counsel, for RAPL, withdrew that issue in the course of the hearing.