ACCESS GROUP AUSTRALIA PTY LTD -v- TOPPER HYDRAULIC PLATFORMS PTY LTD [2019] WASC 265 (24 July 2019)

1. For the purpose of the current transfer application, the following facts are relevant.
2. THP's managing director, Timothy Nuttall, became aware that AGA had opened a branch in the Hunter Valley in New South Wales. He subsequently learned that AGA had commenced operations in Queensland and then Sydney. In mid to late 2016, he became aware of a post on AGA's website that AGA would be opening for business in Victoria in February 2017. Although this did not eventuate, Mr Nuttall initiated correspondence between the parties in May 2017.
3. On 18 July 2017, AGA wrote to THP's solicitors, Davies Collison Cave Law (DCC Law) stating that AGA acknowledged and respected that THP had been operating in Victoria for some time in the EWP industry and had built a reputation and goodwill using the name Access Hire. Therefore, should AGA plan to expand to Victoria it would respect THP's presence in Victoria and would not deliberately act with any bad intentions. In a further letter, AGA stated that it did not intend to commence trading in Melbourne under the business name Access Hire and instead would be trading under a different business name.
4. THP says that AGA has premises in Victoria and 'Access Hire' is being used on equipment at those premises. THP says that AGA has expanded its business into Victoria under the Access Hire name.
5. DCC Law drafted court documents on behalf of THP in anticipation of THP issuing legal proceedings in the Federal Court. DCC Law wrote to AGA on 17 August 2018 enclosing the draft court documents and stating that if the undertakings sought by THP in DCC Law's letter of 25 May 2017 were not received by 24 August 2018, THP would issue the foreshadowed proceeding.
6. On 24 August 2018, after THP's deadline for the supply of undertakings had expired, AGA's solicitors, Mills Oakley, informed THP that they were acting for AGA and had filed proceedings in this court seeking to have the Trade Marks cancelled (i.e. the WA proceeding).
7. On 27 August 2018, THP issued the Federal Court proceeding alleging infringement of the Trade Marks, misleading or deceptive conduct and passing off based on AGA and Mr Jones' use of 'Access Hire' and in relation to the assurances made by AGA that it would not enter the Victorian market.

1. THP filed a conditional memorandum of appearance in the WA proceeding. On 4 October 2018, THP filed a summons seeking to have the WA proceeding transferred to the Federal Court or alternatively stayed. On 20 December 2018, AGA filed a statement of claim. This transfer application was heard on 27 March 2019. No other steps have been taken in the WA proceeding.
2. On 19 October 2018, the first case management hearing occurred in the Federal Court proceeding. THP filed an amended statement of claim and an amended originating application which added AEHA as a respondent. On 7 December 2018, AGA, Mr Jones and AEHA (the AGA respondents) filed a defence dated 30 November 2018 and an interlocutory application that the Federal Court proceeding be stayed until further order and, in any event, not before the determination of the WA proceeding. At a case management hearing on 14 December 2018, O'Callaghan J made orders for the parties to file and serve affidavits and written submissions on which they seek to rely in relation to the stay application and adjourned the case management hearing to 22 March 2019. THP filed 11 affidavits in the Federal Court as its evidence on liability.
3. The AGA respondents' stay application of 30 November 2018 came before O'Callaghan J on 22 March 2019. In the course of the hearing, counsel for the AGA respondents submitted that whether or not the Trade Marks cancellation application is determined by the Supreme Court of Western Australia (WA) or the Federal Court, the Trade Marks cancellation application should proceed and all subsequent matters before the Federal Court should be stayed. O'Callaghan J ordered that the resolution of the stay application be deferred pending the hearing and determination of THP's application to the Supreme Court of WA to transfer the WA proceeding to the Federal Court.

(a) a proceeding (in this subsection referred to as the relevant proceeding) is pending in the Supreme Court of a State or Territory (in this subsection referred to as the first court); and

(b) it appears to the first court that:

(i) the relevant proceeding arises out of, or is related to, another proceeding pending in the Federal Court or the Family Court and it is more appropriate that the relevant proceeding be determined by the Federal Court or the Family Court;

(ii) having regard to:

(A) whether, in the opinion of the first court, apart from this Act and any law of a State relating to cross-vesting of jurisdiction and apart from any accrued jurisdiction of the Federal Court or the Family Court, the relevant proceeding or a substantial part of the relevant proceeding would have been incapable of being instituted in the first court and capable of being instituted in the Federal Court or the Family Court;

(B) the extent to which, in the opinion of the first court, the matters for determination in the relevant proceeding are matters arising under or involving questions as to the application, interpretation or validity of a law of the Commonwealth and not within the jurisdiction of the first court apart from this Act and any law of a State relating to cross-vesting of jurisdiction; and

it is more appropriate that the relevant proceeding be determined by the Federal Court or the Family Court, as the case may be; or

(iii) it is otherwise in the interests of justice that the relevant proceeding be determined by the Federal Court or the Family Court;

the first court shall transfer the relevant proceeding to the Federal Court or the Family Court, as the case may be.

1. The parties agreed that in the circumstances of this case s 5(1) of the WA Act is to the same effect as s 5(1) of the Commonwealth Act.
2. Section 194(1) of the Trade Marks Act provides:

A prescribed court in which an action or proceeding under this Act has been started may, on the application of a party made at any stage, by an order, transfer the action or proceeding to another prescribed court having jurisdiction to hear and determine the action or proceeding.

1. In relation to the Commonwealth and WA Acts, counsel for THP, Mr Willinge, submitted that there was no doubt that the WA proceeding and the Federal Court proceeding are related. Mr Willinge submitted that, to put the matter shortly, the entirety of the WA proceeding is pleaded as a partial defence within the Federal Court proceeding. That is correct. Paragraph 5 of the AGA respondents' defence in the Federal Court proceeding pleads that the Trade Marks are trade marks that ought not to have ever been registered and are liable to expungement. The particulars given by the AGA respondents refer to the writ of summons with indorsement of claim filed in the WA proceeding.
2. Mr Willinge submitted that in any event the power in s 194(1) of the Trade Marks Act, to transfer a proceeding from one prescribed court to another prescribed court, is conferred in very broad terms. In Old Digger Pty Ltd v Pasdonnay Pty Ltd [2003] FCA 292; (2003) 57 IPR 502, Selway J said, in relation to s 157 of the Patents Act 1990 (Cth), which is in similar terms to s 194(1) of the Trade Marks Act:

The discretionary power under s 157 may be broader than under the Cross-vesting Act. The power to transfer is both a power to transfer and a power to decide not to do so. It is discretionary. Whatever the breadth of the discretion it is to be exercised judicially. Clearly it would be inappropriate to transfer a proceeding unless it were in the interests of justice to do so [16].

1. The parties proceeded on the basis that this court has power to transfer the WA proceeding to the Federal Court under the Commonwealth Act, the WA Act and the Trade Marks Act and in each case this court should exercise the power if, and only if, it is in the interests of justice that this proceeding be transferred to and determined by the Federal Court.

1. The principles and purposes underlying the cross-vesting legislation in Australia were summarised by Street CJ in Bankinvest AG v Seabrook (1988) 14 NSWLR 711, 714:

As a very broad generality it can be said that the ordinary day to day administration of the cross-vesting scheme in its operation on a given proceeding is placed in the hands of whatever court it may be in which they are commenced. Ordinarily it could be expected that a single judge of that court would decide whether it is in the interests of justice to transfer the proceedings to one of the other nine courts. If such an order be made then in practical terms it effects what might be likened to an administrative re-direction of the proceedings to the other court selected. In the hands of that other court the proceedings will continue to attract the Australiawide jurisdiction and law which would have been exercisable and applicable by the court from which they were transferred.

Viewed from this standpoint it can be seen to be highly desirable that the judicial administration of the day to day working of the cross‑vesting scheme is not encumbered by an encrustation of judge‑made pronouncements of principles to be applied when considering making a transfer order. It calls for what I might describe as a 'nuts and bolts' management decision as to which court, in the pursuit of the interests of justice, is the more appropriate to hear and determine the substantive dispute.

1. If the court is of the opinion that s 5(1) of the Commonwealth Act or the WA Act is satisfied, it must transfer the proceeding. There is no question of judicial discretion: BHP Billiton Ltd v Schultz [2004] HCA 61; (2004) 221 CLR 400 (BHP v Schultz) at 481 per Callinan J (in relation to s 5(2), but equally applicable to s 5(1)).
2. Gleeson CJ, McHugh and Heydon JJ observed in BHP v Schultz at 421 that the interests of justice capture not just the interests of the parties - competing or conflicting - but may also capture interests wider than those of either party. The interests of justice concern those of both parties and, rather than the selection of the most advantageous or least disadvantageous forum for one of them, the interests of justice are to be judged by more objective factors which facilitate identification of the 'natural forum', in which objectively judged, the dispute would fall to be resolved, with its concomitant juridical advantages and disadvantages for each party, whatever they may be.
3. Each case turns on its particular facts when determining the more appropriate court or 'natural forum'. Connecting factors are relevant. Connecting factors include factors indicating that justice can be done in one forum at substantially less inconvenience or expense such as the availability of witnesses. Connecting factors also include factors which may make a forum the 'natural forum' as being the forum with which the action has the most real and substantial connection, such as where the relevant transactions took place and where the parties carry on business. An important consideration is which forum can provide more effectively for the complete resolution of the matters in issue between the parties.

1. THP submitted that it is in the interests of justice that the WA proceeding be transferred to the Federal Court for a number of reasons. First, the Federal Court proceeding will, but the WA proceeding will not, resolve all of the disputes between the parties. In the WA proceeding, AGA asserts that the Trade Marks are not capable of distinguishing THP's services in respect of which the Trade Marks are registered from the services of other persons. AGA claims that the Register of Trade Marks should be rectified by cancelling the registration of the Trade Marks. AGA has not filed a counterclaim in the Federal Court proceeding pending the outcome of this transfer application, but the question of cancellation of the Trade Marks is an issue in that proceeding. Paragraph 5 of the defence of the AGA respondents in the Federal Court proceeding pleads that the Trade Marks are trade marks that ought not to have ever been registered and are liable to expungement. The particulars given by the AGA respondents refer to the writ of summons with indorsement of claim filed in the WA proceeding.
2. The Federal Court proceeding raises a number of issues and causes of action in addition to the matters raised in the WA proceeding. THP claims that the AGA respondents have infringed the Trade Marks and claims an account of profits or damages for the infringement. THP claims that the AGA respondents have contravened, or participated in contraventions of, provisions contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (the Australian Consumer Law). The alleged contraventions arise from the AGA respondents engaging in misleading or deceptive conduct in relation to the use of 'Access Hire' in their business and passing off their business as being the business of, or connected with, the business of THP. THP also claims that the AGA respondents have contravened, or participated in the contravention of, the Australian Consumer Law by engaging in misleading or deceptive conduct in relation to representations made that they would refrain from using 'Access Hire' in Victoria in connection with their business.
3. Secondly, THP says that the Federal Court proceeding is well advanced and the WA proceeding is in its infancy. In the Federal Court proceeding the pleadings are closed and THP has filed its evidence on liability. In the WA proceeding AGA has filed a statement of claim but no defence has been filed. THP says that the statement of claim in the WA proceeding fails to address the requirements of sections of the Trade Marks Act relied upon by AGA, and therefore does not disclose a reasonable cause of action and is liable to be struck out. It is likely that if the WA proceeding is not transferred to the Federal Court, there will be interlocutory proceedings about the pleadings.
4. Thirdly, THP says that the same or similar evidence is likely to be adduced in both the WA proceeding and the Federal Court proceeding relating to the same or similar issues. That gives rise to the undesirable risk of inconsistent findings, and in any event, the waste of resources.
5. Fourthly, the WA proceeding was commenced after THP sent draft pleadings to AGA in an attempt to resolve the dispute between the parties without litigation. Notwithstanding this, AGA commenced the WA proceeding without warning THP. THP says there is a public interest in discouraging litigants from commencing proceedings in this manner.
6. Fifthly, THP says that the factors connecting the proceedings to Victoria make the Federal Court proceeding the more appropriate forum. THP identifies the following connecting factors:

(a) THP and its principal officers are based in Victoria.

(b) Almost all witnesses for both proceedings will be based in Victoria including THP employees, customers and suppliers.

(d) THP's hire contracts are primarily based in Victoria.

(e) The Federal Court proceeding concerns AGA's expansion into Victoria. AEHA/AGA has premises and employees in Victoria and has apparently undertaken major projects in Victoria. It is therefore likely that witnesses from AEHA/AGA's Victorian business will give evidence.

(f) It was always contemplated by the parties that any litigation would be commenced in the Federal Court. AGA foreshadowed in a letter of 14 June 2018 that 'should your client proceed to commence proceedings in the Federal Court for injunctive relief, we will vigorously defend those proceedings and seek costs against your client'.

1. Sixthly, THP says that the Federal Court is an appropriate forum. The Federal Court is an experienced intellectual property court with a specialised intellectual property list and a specific intellectual property practice note designed to put in place procedures so as to provide an efficient and speedy trial. THP refers to the following statement of Emmett J in Sony Computer Entertainment Australia Pty Ltd v Stirling [2001] FCA 1852 (the Sony Computer Case):

... it is appropriate that claims for infringement of trade marks be brought in the Federal Court. The Federal Court has experience and expertise in dealing with matters involving intellectual property generally and trade mark infringement in particular [15].

1. The Federal Court is an appropriate forum for resolving intellectual property disputes, including matters related to trade marks. The Supreme Court of WA is also an appropriate forum for resolving intellectual property disputes in appropriate cases. Emmett J did not suggest otherwise in the Sony Computer Case. His Honour was addressing whether it was appropriate for the applicant to have brought the case in the Federal Court, notwithstanding that the damages to be awarded were well below $100,000 and the Federal Court Rules 2011 (Cth) provided that in such circumstances, any costs to be awarded would be reduced by one third unless the court otherwise ordered.
2. THP further says that, by reason of s 195(1) of the Trade Marks Act, any appeal against the decision in the WA proceeding will be heard by the Federal Court.

1. AGA submits that it is not in the interests of justice that the WA proceeding be transferred to the Federal Court, or at least THP has not established that it is. AGA raises a number of matters in support of that contention.
2. First, AGA says that Mr Jones and AEHA are parties to the Federal Court proceeding but not the WA proceeding. In my opinion that is of little practical significance. The AGA respondents, including Mr Jones and AEHA, are represented by the same lawyers in the Federal Court proceeding. They have filed a joint defence.
3. Secondly, AGA says that if the WA proceeding is transferred to the Federal Court they may be prevented from obtaining a determination as to the validity of the Trade Marks without resorting to expensive and protracted litigation concerning whether the AGA respondents infringed those marks, whether the AGA respondents engaged in misleading or deceptive conduct or passing off and whether, and if so to what extent, it made any profit or THP suffered any loss as a result. AGA says that such matters will be redundant if the Trade Marks are found to be invalid and THP has no intellectual property rights in the words Access Hire.
4. I do not give substantial weight to either of those matters. THP's claims based on misleading or deceptive conduct and passing off will not be redundant if the Trade Marks are cancelled. Those claims are not wholly dependent upon the registration of the Trade Marks. In any event, whether the Trade Marks should be cancelled may be tried in the Federal Court as a separate question before the other issues between the parties in the Federal Court proceeding. In a case management hearing in the Federal Court before O'Callaghan J on 22 March 2019, counsel for AGA, Mr Gough, submitted that whether or not the Trade Marks expungement application is determined by the Supreme Court of WA or the Federal Court, the Trade Marks expungement application should proceed first and all other substantial matters before the Federal Court should be stayed. O'Callaghan J stated that if THP's application to transfer the WA proceeding to the Federal Court succeeds, both cases will be in front of the Federal Court and that court can make the decision as to how to proceed with it.
5. The Federal Court is seized of, and O'Callaghan J is managing, all of the disputes between THP and the AGA respondents giving rise to the WA proceeding and the Federal Court proceeding. His Honour is best placed to decide whether it is appropriate for the cancellation of the Trade Marks issue to be tried separately and before the other issues between the parties. If his Honour determines that it is appropriate then that issue will be determined in the Federal Court before the remaining issues. If his Honour determines it is not appropriate, then it would not be appropriate for that issue to be determined separately in this court.
6. Thirdly, AGA says that it has strong prospects of success in its claims in the WA proceeding. I do not make any assessment of the relative strengths of the parties' cases. The Trade Marks cancellation issue raises factual questions. They will depend upon the evidence led at trial. In any event, as I have said, if it is appropriate for the Trade Marks cancellation issue to be determined before the other matters in dispute between the parties, then that matter may be determined as a separate question in the Federal Court.
7. Fourthly, AGA says that it commenced the WA proceeding before THP commenced the Federal Court proceeding. The commencement of the WA proceeding before the Federal Court proceeding was opportunistic. THP had foreshadowed commencing the Federal Court proceeding before AGA commenced the WA proceeding. In any event, in the circumstances of this case, which proceeding was commenced first is not significant. In the Federal Court case management hearing on 14 December 2018, O'Callaghan J observed that it does not seem to make much sense to have the proceedings in both courts and that it is desirable that one court be seized with both cases. I agree. The real question is whether it is more appropriate for the proceedings to take place in this court or in the Federal Court.
8. Fifthly, AGA says that there is a preponderance of connecting factors to Western Australia. Those factors include:

(b) AGA has no physical presence in Victoria and the entirety of its operations are run from its office in Western Australia;

(c) all of AGA's key employees and management are in Perth;

(e) evidence to be adduced by AGA as to the extensive use of its logos, since at least 2004, would all be delivered from Perth;

(g) THP has engaged an experienced Western Australian counsel.

1. Sixthly, AGA says that the Supreme Court of WA is capable of appropriately hearing matters arising from, or related to, the Trade Marks Act. I agree. The Federal Court is an equally appropriate forum for determining questions concerning the cancellation of the Trade Marks.

It is in the interests of justice to transfer the WA proceeding

1. I am satisfied that it is in the interests of justice that the WA proceeding be transferred to the Federal Court.
2. Each of the parties submit that the geographical connections favour the forum chosen by them. Travel between Perth and Melbourne is easy although not inexpensive. In appropriate cases, lawyers can appear and witnesses can give evidence by video‑link. Digital technology enables lawyers, parties, witnesses and courts to communicate effectively with ease and flexibility. I do not consider the location of the parties, their lawyers and witnesses to be decisive in this case. I am satisfied that the Federal Court is at least as convenient a forum as this court having regard to geographical connections.
3. AGA says that the Trade Marks are registered nationally and its claim concerns the question of whether the Trade Marks are descriptive or not distinctive throughout Australia. Nonetheless, the proceedings arise from the expansion of the AGA respondents' business into Victoria and it is likely that much of the evidence, particularly in relation to trade mark infringement, misleading or deceptive conduct and passing off will be adduced from witnesses in Victoria. The Federal Court is the 'natural forum'. Furthermore, as O'Callaghan J observed in the case management hearing in the Federal Court on 22 March 2019, the Federal Court can sit in any capital city, including Perth, if that be appropriate.
4. It is generally desirable for all matters in dispute between parties to be determined in one place. All of the matters in dispute between THP and the AGA respondents may be determined in the Federal Court if the WA proceeding is transferred. It may be that all of the matters in dispute could be resolved in this court by THP joining Mr Jones and AEHA as parties, and making a counterclaim in which it raises the matters it has raised in the Federal Court and seeking the relief that THP claims in the Federal Court. However, all matters are already in issue in the Federal Court proceeding and not in the WA proceeding. Furthermore, the very purpose for which AGA commenced the WA proceeding, and the principal basis on which AGA resists the transfer of the WA proceeding to the Federal Court, is that the cancellation of the Trade Marks issue raised in the WA proceeding be tried separately from and before the other matters in dispute between THP and the AGA respondents.
5. The practical question to be resolved is whether the Trade Marks cancellation question should be determined separately from, and before, the other matters in dispute between the parties. The Federal Court, which is seized of all matters in dispute between the parties, is better placed to determine that question than this court.
6. The progress of the Federal Court proceeding, in comparison to the preliminary stage of the WA proceeding, is an additional factor indicating that it is in the interests of justice to transfer the WA proceeding to the Federal Court. In contrast to the Federal Court proceeding, the WA proceeding is in its infancy. The only substantial step that has been taken is the filing of a statement of claim. THP submits that the statement of claim is deficient and has foreshadowed a strike out application. The proceedings in the Federal Court are more advanced.

1. I find that it is in the interests of justice that the WA proceeding be transferred to the Federal Court and I will so order.

I certify that the preceding paragraph(s) comprise the reasons for decision of the Supreme Court of Western Australia.

Research Associate/Orderly to the Honourable Justice Le Miere