In the matter of Sol Sana Pty Ltd [2018] NSWSC 570

Supreme Court New South Wales

Medium Neutral Citation: In the matter of Sol Sana Pty Ltd [2018] NSWSC 570 Hearing dates: 30 April 2018 Decision date: 30 April 2018 Before: Leeming JA Decision: (1) Grant leave to file an amended interlocutory process under s 1337H of the Corporations Act 2001 (Cth). (2) Dismiss the interlocutory application under s 1337H of the Corporations Act, with costs. (3) Direct the plaintiff to file and serve all remaining evidence (lay and expert) on or before 17 May 2018. (4) No further evidence in chief may be relied upon by the plaintiff not filed and served by 17 May 2018 without leave. (5) Stand the proceedings over for further directions before the Corporations Judge on Monday 21 May 2018. Catchwords: PRACTICE - transfer application under cross-vesting legislation - proceedings between substantially same parties in Supreme Court and Federal Court following termination of licence agreement for exploitation of registered trade marks - contractual obligation to sell trade marks within a reasonable time - board deadlocked on sale of marks - Supreme Court proceedings sought compulsive sale of trade marks and winding up - basis of winding up application improper commencement of Federal Court proceedings by director without directors' or members' resolution - Federal Court proceedings sought declaratory, injunctive and pecuniary orders for trade mark infringement - undetermined application for security for costs - applicant in Federal Court proceedings having no liquid assets and no source of income and large indebtedness - application to transfer Supreme Court proceeding to Federal Court under Corporations Act 2001 (Cth), s 1337H - whether "more appropriate" that Supreme Court proceedings be heard and determined in Federal Court - overlap of issues in relation to value of trade marks and means and manner in which Federal Court proceedings commenced - exceptional case where transfer not shown to be more appropriate, having regard to uncontested evidence as to damage to marks if not in market, large volume of stock and unfulfilled orders, and real prospect of Federal Court proceedings being delayed because of properly founded application for security for costs - application to transfer dismissed Legislation Cited: Civil Procedure Act 2005 (NSW), s 56 Corporations Act 2001 (Cth), ss 1337A, 1337H Federal Court of Australia Act 1976 (Cth), ss 37M and 37N Jurisdiction of Courts (Cross-Vesting) Act 1987 (NSW), s 5 Trade Marks Act 1995 (Cth), ss 126, 195 Cases Cited: Bankinvest AG v Seabrooks (1988) 14 NSWLR 711 BHP Billiton v Shultz (2004) 221 CLR 400; [2004] HCA 61 In the Matter of Webster Consolidated (Holdings) Pty Ltd [2016] NSWSC 376 K & M Prodanovski Pty Ltd v Calliden Insurance Limited [2012] NSWCA 117 Pegasus Leasing Ltd v Cadoroll Pty Ltd (1996) 59 FCR 152 Perri v Coolangatta Investments Pty Ltd (1982) 149 CLR 537; [1982] HCA 29 Vaughan v Frost [2010] NSWSC 492 Category: Principal judgment Parties: Magnamail Holdings IP Pty Ltd (Plaintiff/Respondent)