Anying Group Pty Limited v Wang

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 32

Counsel for the First, Second and Third Appellants: The Appellants did not appear

Counsel for the First, Second and Third Respondents: Mr C Brown SC

Solicitor for the First, Second and Third Respondents: Colin Biggers & Paisley

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 2199 of 2011

BETWEEN: ANYING GROUP PTY LIMITED (ACN 126 282 657)

NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568)

JUDGE: FLICK J DATE OF ORDER: 29 JUNE 2012 WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The Notice of Appeal as filed on 6 December 2011 is dismissed.
2. The Appellants are to pay the costs of the Respondents including the costs of the present Interlocutory Application and such other costs as may have been incurred in respect to the appeal. Note: Entry of orders is dealt with in r 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 2199 of 2011

BETWEEN: ANYING GROUP PTY LIMITED (ACN 126 282 657)

NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568)

JUDGE: FLICK J DATE: 29 JUNE 2012 PLACE: SYDNEY

REASONS FOR JUDGMENT 1 On 21 October 2011 a judge of this Court published his reasons for decision in Wang v Anying Group Pty Ltd [2011] FCA 1196. His Honour there noted that the parties to that proceeding were "… fighting for control of the trade name or business name 'Anying' … and a trade mark comprising the Anying name, a logo and four Chinese characters …": [2011] FCA 1196 at [1]. Orders were made on 21 October 2011 directing the parties to bring in Short Minutes of Orders giving effect to those reasons. Further orders were made by his Honour on 16 November 2011. 2 The orders made on 16 November 2011 included: orders that the question of any entitlement to pecuniary remedies was to be heard "separately from and after all other questions in the proceedings"; orders that the registration of Australian Registered Trade Mark No 1100722 be cancelled; declarations that the first respondent had passed off its business as those of the third applicant and engaged in misleading or deceptive conduct; and declarations that the second and third respondent had "aided, abetted, counselled or procured the contraventions by the first respondent of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law". The orders also noted that the applicant had elected "to claim an account of profits from the respondents (rather than damages) for passing off and for contraventions of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law" and further included: an order that the proceeding be listed for directions "in respect of the third applicant's claim for an account of profits". 3 The Respondents to that proceeding, Anying Group Pty Ltd, Yanyan Sun and Yun Chen filed a Notice of Appeal on 6 December 2011. That Notice of Appeal (without alteration) stated in part that: The Appellant appeals from the whole of the judgment of the Federal Court given on at Sydney There are a number of difficulties with respect to this Notice of Appeal. One difficulty is that it fails to identify by date the "judgment" the subject of the appeal. Presumably the Appellants seek to appeal, not so much from the orders made on 21 October 2012, but rather from the orders made on 16 November 2012. But so much is not apparent from that part of the Notice of Appeal which purports to identify the "judgment" appealed from. That lack of certainty, however, may assume little immediate relevance because the Notice of Appeal further states (without alteration) that one of the orders sought is an order "setting aside the Judgement and Orders of the Honourable Justice Foster made on 21 October 2011 and 16 November 2011…". 4 The proceeding first came before Emmett J on 8 February 2012. At that stage an issue emerged as to whether leave to appeal was required and the proceeding was adjourned. 5 An Interlocutory Application was filed on 13 April 2012 seeking a variety of orders, including an order that the appeal be dismissed "pursuant to FCR 35.13 and 36.74". That Interlocutory Application first came before the Court on 7 June 2012. It was stood over for hearing today. Directions were made (inter alia) to address deficiencies in the Notice of Appeal.

The Power to Dismiss 6 Section 24(1)(a) of the Federal Court of Australia Act 1976 (Cth) provides that the Court has jurisdiction to hear and determine "appeals from judgments of the Court constituted by a single Judge exercising the original jurisdiction of the Court". The term "judgment" is defined in s 4 as including a "judgment, decree or order, whether final or interlocutory…". The expression "judgment decree or order" bears the meaning which the words "all judgments, decrees, orders …" have in s 73 of the Constitution: cf. Moller v Roy (1975) 132 CLR 622 at 625 per Barwick CJ; Ah Toy v Registrar of Companies (1985) 10 FCR 280 at 285 per Toohey, Morling and Wilcox JJ. 7 Section 24(1A) provides, however, that "[an] appeal shall not be brought from a judgment referred to in subsection (1) that is an interlocutory judgment unless the Court or a Judge gives leave to appeal". 8 In circumstances where orders are made, some of which are final in nature and some of which are interlocutory, all of the orders are "interlocutory" for the purposes of s 24(1A). When addressing a provision previously found in s 33 of the Federal Court of Australia Act providing for appeals to the High Court from a "final judgment", Gibbs CJ in Computer Edge Pty Ltd v Apple Computer Inc (1984) 54 ALR 767 concluded at 767-768: … What is plain is that the judgment of that court comprised two orders which, viewed by themselves and apart from the rest of the judgment, were final orders, and one order which was plainly interlocutory. The result of the judgment as a whole was that some of the questions in issue in the case were determined and others were not. The question then is whether a judgment of that kind is a final judgment within the meaning of s 33(4) of the Federal Court of Australia Act, and s 35(3) of the Judiciary Act as they stood at the material time. The test for determining whether a judgment is final … is whether the judgment finally determines the rights of the parties, and the authorities have held that the court in applying the test must have regard to the legal rather than the practical effect of the judgment. So that the question in the present case is whether the whole judgment finally determined, in a legal sense, all the rights of the parties that were at issue in these proceedings. And the answer is, plainly, that it did not, because it left undetermined the question whether any, and what, damages were payable … Murphy and Wilson JJ agreed. The same approach has been taken when determining whether leave to appeal is required where an appeal is filed in respect to decisions of single Judges of this Court: Arrowcrest Group Pty Ltd v Gill (1993) 46 FCR 90 at 100-101 per French J (as his Honour then was); NZI Securities Australia Ltd v Poignand (1994) 51 FCR 584 at 594 per Beaumont, Gummow and Carr JJ; Thai v Commissioner of Taxation (1994) 53 FCR 252 at 260-261 per Lockhart, Beaumont and Whitlam JJ. 9 By way of example, in Caterpillar Inc v Sun Forward Pty Ltd (1996) 37 IPR 41 orders and declarations had been made which were final in relation to claims to passing off and for contravention of ss 52 and 53(c) and (d) of the Trade Practices Act 1974 (Cth). Outstanding was the election to be made as to whether damages or an account of profits was to be sought. The orders which had been made were nevertheless said to be interlocutory. Similarly, in Miki Shoko Co Limited v Merv Brown Pty Limited (1988) 10 ATPR ¶40-858 permanent injunctions had been granted and (by consent) the determination of damages had been adjourned. The orders, it was held, were not final. 10 There is, however, a line of authority which decides that in cases in which damage is not the gist of the action, a judgment where damages are left to be assessed is a final order: eg, Hall v Busst (1960) 104 CLR 206. In Victoria the Appeal Division of the Supreme Court has concluded (by a majority) that a judgment for breach of contract with damages to be assessed was a final judgment: City of Camberwell v Camberwell Shopping Centre Pty Ltd [1994] 1 VR 163. The majority in that decision, Marks and Gobbo JJ referred to both the decisions in Computer Edge and Busst and distinguished Computer Edge upon the basis that the question as to any entitlement to damages had not been decided in that case. Their Honours thus concluded as follows: Counsel for Podgor submitted that the facts and circumstances of Computer Edge are analogous to those here and that it supports the order in the present being interlocutory. Close attention to what was said by Gibbs C.J. shows that the circumstances were not analogous. At p.768, Gibbs CJ said: "… the question in the present case is whether the whole judgment finally determined, in a legal sense, all the rights of the parties that were at issue in these proceedings. And the answer is, plainly, that it did not, because it left undetermined the question whether any, and what, damages were payable." So it appears that the question whether damages were payable had not yet been decided in Computer Edge while the learned judge in the present case decided that they were. Moreover, in Computer Edge the judge at first instance made two orders for permanent injunctions quia timet but another that if claims for damages were pursued the claimants should file and serve notice to that effect. Thus Gibbs C.J. observed that there were two orders which viewed by themselves "and apart from the rest of the judgment, were final orders, and one order which was plainly interlocutory. The result of the judgment as a whole was that some of the questions in issue in the case were determined and others were not". In the present case, the hearing below and the appeal were conducted on the basis that all issues as to liability were canvassed and that the question of liability was wholly decided. Section 10(2) of the Supreme Court Act 1986 permits appeal to the Full Court from a "determination", so that it is a determination rather than an order which must be final, not interlocutory. The circumstances are, in our opinion, analogous to those in Hall and such that it may fairly be said that the determination of the learned judge was intended as a judgment for Podgor for damages to be assessed and that therefore it is final, if not, a determination as to liability to pay damages which is final. Thus the appeal is of right from "a determination" within the meaning of s. 10(2) of the Supreme Court Act 1986. [[1994] 1 VR at 174-175] Subsequently, in National Australia Bank Ltd v Maher (No 2) [1999] VSCA 189, 3 VR 589 it was concluded that a judgment for the respondent for a knowing participation in a breach of trust with damages to be assessed was a final judgment. See also: Major Engineering Pty Ltd v Timelink Pacific Pty Ltd [2007] VSCA 228. 11 A limited number of decisions of this Court have addressed this Victorian line of authority. In one decision, Finkelstein J granted declaratory relief before disposing of the whole of the claim: Telstra Corp Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 814. His Honour noted the difficulty with characterising declaratory relief as "interlocutory" but nevertheless went on to further note the prospect that Hall v Busst may have been overruled: [2001] FCA 814 at [4]. His Honour granted leave to appeal "[if] and insofar as necessary". And where damages are not the gist of the action, it has been also suggested that a judgment may be "final as to liability but interlocutory as to quantum …": Walker v Citigroup Global Markets Pty Ltd [2005] FCA 1678 at [82], 226 ALR 114 at 132 per Kenny J. 12 Separate from any question as to whether a decision is interlocutory - and hence attracting the need to obtain leave to appeal - are the limited powers conferred by s 25 to dismiss an appeal. Section 25 thus provides in relevant part as follows: … (2B) A single Judge (sitting in Chambers or in open court) or a Full Court may: … (ab) make an order that an appeal to the Court be dismissed for: (i) failure to comply with a direction of the Court; or (ii) failure of the appellant to attend a hearing relating to the appeal; … … (2BB) An application for the exercise of a power mentioned in subsection (2B) must be heard and determined by a single Judge unless: (a) a Judge directs that the application be heard and determined by a Full Court; or (b) the application is made in a proceeding that has already been assigned to a Full Court and the Full Court considers it is appropriate for it to hear and determine the application. (2C) The Rules of Court may make provision enabling matters of the kind mentioned in subsection (2B) to be dealt with, subject to conditions prescribed by the Rules, without an oral hearing either with or without the consent of the parties. … Rule 36.74 of the Federal Court Rules 2011 further addresses the power conferred by s 25(2B)(bb) as follows: Application to dismiss appeal (1) A respondent may apply to the Court for an order that the appeal be dismissed for the failure by an appellant to do any of the following: (a) comply with a direction of the Court; (b) comply with these Rules; (c) attend a hearing relating to the appeal; (d) prosecute the appeal. (2) An application under subrule (1) must be served on the appellant: (a) at the appellant's address for service; or (b) personally. The counterpart provision to r 36.74 was formerly found in Order 52 r 38 of the now-repealed Federal Court Rules. 13 Whatever be the particular occasion for the exercise of power to dismiss an appeal, it is considered that the discretion to make such an order should be exercised with particular caution and reservation. When considering, for example, the power to dismiss an appeal for failure to comply with a direction of the Court, it has been said that such an order will only be made in "special circumstances": Abraham v Attorney-General for the Commonwealth [2004] FCA 411 at [5] per Finn J. When considering a failure to prosecute an appeal, in Goldie v Commonwealth [2004] FCA 973 at [16] Carr J observed that the discretion would not be "lightly exercised". 14 Much will obviously depend upon the facts and circumstances which give rise to the need to consider the exercise of the discretion. What may well be perceived as but a "technical" failure to comply with a rule of Court may attract different considerations than a persistent and flagrant disregard of those rules or a persistent and flagrant failure to comply with directions.

The Interlocutory Application - A Failure to Comply? 15 The Interlocutory Application filed on 13 April 2012 initially relied upon r 6.74(1)(b), namely a failure to comply with the Federal Court Rules 2011. 16 The particular rule which the Appellants were said to have not complied with was r 35.13. Division 35.2 of the Federal Court Rules 2011 deals with "[w]ritten applications for leave to appeal". Within that Division, r 35.13 provides as follows: Time for filing application The application must be filed: (a) within 14 days after the date on which the judgment was pronounced or the order was made; or (b) on or before a date fixed for that purpose by the Court from which leave to appeal is sought. 17 The applicant on the Interlocutory Application contends that leave to appeal is required because - at least in part - a number of the orders made by the primary Judge were interlocutory (and not final). The fact that his Honour's judgment did not resolve all of the issues, it was submitted, rendered the judgment "interlocutory" for the purposes of s 24(1A) of the Federal Court of Australia Act. Some of the orders as made on 16 November 2011, it may be accepted, were final orders: eg, the order cancelling the registration of Australian Registered Trade Mark No 1100722 and the order restraining the first, second and third respondents from engaging in specified conduct. Other orders were, however, interlocutory in nature: eg, the order that directions be made in respect to the applicant's claim for an account of profits. 18 Notwithstanding the granting of declaratory and injunctive relief, together with an order in respect to the outstanding matter that an account of profits was to be undertaken, it is nevertheless concluded that the decision of the primary Judge remained an interlocutory decision for the purposes of s 24(1A). All of the questions surrounding the rights and entitlements of the parties had not been resolved. Actual or anticipated damage is, of course, an essential element of the tort of passing off: Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 309 per Lockhart J. It is concluded that the decision in Computer Edge has been the authority which has prevailed in this Court. Leave to appeal from the decision of the primary Judge is thus required. 19 A further difficulty which confronted the First Appellant on 7 June 2012 was that it appeared through its director, Ms Yanyan Sun, who was herself unrepresented. The solicitors who had previously represented the Appellants, including the Appellant corporation, had filed a Notice of Ceasing to Act on 4 April 2012. This difficulty arose because r 4.01(2) of the Federal Court Rules 2011 provides as follows: A corporation must not proceed in the Court other than by a lawyer. As the note to that rule makes clear, r 1.34 confers a discretionary power upon the Court to "dispense with compliance with any of these Rules". If the First Appellant sought to continue to proceed with any appeal, or any application for leave to appeal, it should either be represented by a lawyer or formally seek an order dispensing with the need for compliance with r 4.01(2). Whichever choice it makes is obviously a matter for the First Appellant. But the requirement imposed by r 4.01(2) cannot be ignored.

More Recent Failures 20 Whatever may have been the situation as at 7 June 2012 when the Interlocutory Application was first listed for hearing, there has been further default on the part of the Appellants since that date. 21 Given that the Appellants on 7 June 2012 were then unrepresented, considerable care was then taken to explain to them: the need to or desirability of amending the Notice of Appeal; the need to identify which particular orders were intended to be appealed from and the need to obtain leave if the conclusion were to be reached that the orders of the primary Judge were characterised as interlocutory in nature; the need to seek an extension of time in which to appeal from such orders, or at least give consideration to whether leave to appeal or an extension of time should be sought; and the need for the First Appellant to either appear "by a lawyer" or to obtain the leave of the Court dispensing with compliance with r 4.01(2). Directions were made permitting the Appellants to address these matters. One of the directions made on 7 June 2012 required the Applicant on the present Interlocutory Application (the Respondent in the appeal) to forward to the Appellants a letter setting forth the difficulties addressed during the hearing on that date. That letter was in fact sent on 12 June 2012 and annexed: a copy of a relevant extract from the Federal Court Rules 2011 and the Federal Court of Australia Act; and a copy of the decision in Caterpillar Inc v Sun Forward Pty Ltd (supra). 22 None of the directions made on 7 June 2012 have been complied with. No Amended Notice of Appeal has been filed; nor has any application been made seeking an extension of time in which to appeal from the decision of the primary Judge. No application has been made by the First Appellant to dispense with the requirements of r 4.01(2). 23 The most recent failure on the part of the Appellants is a failure to attend the hearing this morning. That occasioned the Applicant on the Interlocutory Application to rely upon s 25(2B)(bb)(ii) and rr 36.74(1)(c) and (d). The hearing this morning, it was said, constituted "a hearing relating to the appeal" within the meaning of and for the purposes of s 25(2B)(bb)(ii) and r 36.74(1)(c). That submission as to r 36.74(1)(c) is correct and may be accepted. 24 In invoking r 36.74(1)(d), reliance was placed upon: the history of the conduct of the appeal since it was instituted in 6 December 2011; a further direction made on 7 June 2012, providing that the Appellants were to file "any affidavit … explaining an apparent failure to prosecute the appeal since 6 December 2011"; and a failure to file any such affidavit. Reliance upon these provisions as a separate basis for dismissing the Notice of Appeal, however, is rejected. Pursuant to the former Order 52 r 38 of the now-repealed Federal Court Rules, it was well-recognised that the discretionary power to dismiss an appeal for want of prosecution was not to be lightly exercised : Van Reesema v Giameos (1979) 41 FLR 86 at 90 per Bowen CJ, Fisher and Lockhart JJ. In Hughes v Australian Competition and Consumer Commission [2004] FCA 1271 at [8] Jacobson J acknowledged that the power "to dismiss for want of prosecution is a drastic step which would only be justified by the grossest or most contumelious delay …". Similarly, in Abraham v Attorney-General for the Commonwealth [2004] FCA 411 at [5] Finn J accepted that "it is exceptional for the court to dismiss a matter for want of prosecution under O 52 r 38(1)(a)". The same approach should be taken to r 36.74(1)(d). 25 Since 6 December 2011, some limited steps have been taken by the Appellants to prosecute their appeal. There were appearances before Emmett J by Counsel on 8 February and 18 April as well as an appearance by Ms Sun on 7 June 2012. Although the settling of an index for the appeal book has not progressed smoothly, if at all, there was nevertheless a telephone call from the former solicitor for the Appellants on 3 April 2012 stating that the Index Conference had been adjourned. Although such limited steps taken by the Appellants fall well below anything which could be properly characterised as a proper and efficient prosecution of the appeal, it is concluded that such conduct does not fall within the reach of r 36.74(1)(d).

Conclusions 26 Had the Appellants not been given an opportunity in which to address the deficiencies in the existing Notice of Appeal, an opportunity to redress perceived deficiences and an opportunity to file further evidence, the relief sought in the Interlocutory Application may not have been granted on 7 June 2012. The difficulties confronting the Appellants as at 7 June 2012 were, however, identified during the course of that hearing and were further particularised in the letter sent to them on 12 June 2012. 27 The Appellants have thus been given an opportunity to give informed consideration to the steps they may have thought appropriate. 28 It is concluded that the Notice of Appeal should be dismissed pursuant to s 25(2B)(bb)(i) and r 36.74(1)(a) and (b). There has been non-compliance by the First Appellant: with the direction made on 7 June 2012 that it make an application seeking dispensation from the requirements of r 4.01(2). There has also been non-compliance by all of the Appellants with the Rules of this Court, namely: a failure to seek an extension of time beyond the 14 days in which to seek leave to appeal prescribed by r 35.13. The decision of the primary Judge is interlocutory and leave to appeal is required: s 24(1A). Any application for leave to appeal should have been filed within 14 days: r 35.13. No application was made for an extension of that time prior to the Notice of Appeal being filed. No application has been made even now. 29 Given the opportunity extended to the Appellants to seek an extension of time, and their failure to do so, there should be little reservation in exercising the discretion to dismiss an appeal. There is no reservation in the present proceeding. 30 Separate consideration was also given to whether the Interlocutory Application, together with the consequential questions as to whether the judgment of the primary Judge was properly to be characterised as interlocutory, should itself be stood over to the hearing of the appeal. This course was not considered appropriate. The Interlocutory Application had been properly filed and the Applicant on that application was entitled to have it heard and resolved. To delay the resolution of the Interlocutory Application until the hearing of the appeal would only have exposed the parties to additional expense and delay. 31 It is further concluded that the Notice of Appeal should be dismissed pursuant to s 25(2B)(bb)(ii) and r 36.74(1)(c). Reliance upon r 36.74(1)(d) is rejected.

Orders 32 The Orders of the Court are: 1. The Notice of Appeal as filed on 6 December 2011 is dismissed. 2. The Appellants are to pay the costs of the Respondents including the costs of the present Interlocutory Application and such other costs as may have been incurred in respect to the appeal. I certify that the preceding thirty two (32) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick.