Austin, Nichols & Co Inc v Lodestar Anstalt - [2009] FCA 1228 - FCA 2009 case summary — Zoe

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Austin, Nichols & Co Inc v Lodestar Anstalt

[2009] FCA 1228

Federal Court of Australia|2009-10-23|Before: Lindgren J

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At a glance

Source facts

Court

Federal Court of Australia

Decision date

2009-10-23

Before

Lindgren J

Source

Original judgment source is linked above.

Judgment (30 paragraphs)

[1]

Introduction 1 By notice of motion filed on 27 August 2009 the respondent seeks an order that the applicants give security for costs in a sum of $111,630.00.

[2]

Background 2 This proceeding arises out of the use of the expressions "WILD GEESE" and "WILD TURKEY" as trade marks or parts of trade marks. 3 The mark "WILD GEESE" was registered in the Australian Register of Trade Marks No 839740 in the name of the respondent, Lodestar Anstalt (Lodestar), in respect of the following goods: Class 32 - Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages. Class 33 - Alcoholic beverages (except beers). 4 Wild Geese Wines Pty Limited, which is a locally owned Australian company, filed an application for removal from the Register of the WILD GEESE trade mark in respect of "alcoholic beverages (except beers)", that is to say, the goods described in class 33. 5 The first applicant, Austin, Nichols & Co Inc (Austin Nichols), filed a separate application for removal of the same trade mark in respect of all goods covered by the registration. 6 As part of a wider agreement between them, on or about 1 June 2007 Wild Geese Wines Pty Limited assigned application No 106646 for the registration of "WILD GEESE WINES" and application No 106650 for the registration of "WILD GEESE" to Austin Nichols. 7 Austin Nichols remained the only party moving for the removal of "WILD GEESE". Austin Nichols is a subsidiary of the French company, Pernod Ricard S.A., and part of the international Pernod Ricard Group. 8 On or about 7 April 2009, Pernod-Ricard S. A. with two of its subsidiaries, Austin Nichols & Co., Inc. and Pernod Ricard USA, LLC entered into an agreement with an Italian company, Davide Campari-Milano S.p.A. (Campari or DCM) and an associated entity, Redfire, which provided for certain assets and agreements of Pernod Ricard S.A. or its subsidiaries to be acquired by a Campari affiliate (Asset Purchase Agreement). That affiliate was the second applicant, Rare Breed Distilling LLC (Rare Breed). 9 Rare Breed was incorporated in Delaware, and its business address is in the United States of America. 10 On 13 May 2009, the Registrar of Trade Marks' delegate (Delegate) refused the application for removal. However, the Delegate directed a removal of the trade mark in so far as it related to "wine, fortified wine and wine based spirits, namely brandy, grappa and cognac" in class 33 (apparently Lodestar had offered to submit to such a partial removal). 11 On 29 May 2009, closing took place in relation to the Asset Purchase Agreement. 12 Pursuant to s 104 of the Trade Marks Act 1995 (Cth) (TM Act), on 3 June 2009 Austin Nichols filed the notice of appeal from the Delegate's decision which commenced this proceeding. 13 Pursuant to an order made by consent on 26 August 2009, Rare Breed was added as second applicant. 14 Accordingly, Austin Nichols' role has become, in a sense, only "nominal", even though it applied for the removal before the Delegate and was originally the sole appellant in this Court. In substance, the moving party in the appeal is Rare Breed, a United States subsidiary of DCM. 15 In its notice of appeal, Austin Nichols gave its address as an address in New York. It was incorporated in Delaware. 16 In its notice of appearance, Lodestar gave its address as an address in Liechtenstein. 17 For the purpose of informing the market of its acquisition from the Pernod Ricard Group, the Campari Group issued an "Information Memorandum". As will appear below, the applicants have relied on the contents of this document to show that Rare Breed and the Campari Group of which it forms part are corporations of substance.

[3]

Consideration 18 Lodestar relies on s 56 of the Federal Court of Australia Act 1976 (Cth) (FCA Act) and O 28 r 3 of the Federal Court Rules. Section 56 provides that the Court or a Judge may order an applicant in a proceeding in the Court or an appellant in an appeal to the Court to give security for the payment of costs that may be awarded against him or her. 19 Order 28 r 3 provides that when considering an application by a respondent for an order for security under s 56, the Court may take into account the matters listed in that rule, including the fact "that an applicant is ordinarily resident outside Australia". Clearly, this does not limit the matters that the Court may take into account when exercising its jurisdiction under s 56: see to this effect Bell Wholesale Co. Ltd v Gates Export Corporation (1984) 2 FCR 1 at 2-3. 20 Lodestar does not rely on s 1335 of the Corporations Act 2001 (Cth). Section 1335(1) provides that where a corporation is plaintiff in any action or other legal proceeding, the court having jurisdiction in the matter may, "if it appears by credible testimony that there is reason to believe that the corporation will be unable to pay the costs of the defendant if successful in his, her or its defence", require sufficient security to be given for those costs and stay all proceedings until the security is given. There is no express condition of this kind in s 56 of the FCA Act. While the prospect of an applicant's inability to satisfy an adverse costs order is obviously a relevant consideration, it is not a condition of the availability of the power conferred by s 56. Indeed, the present case is one in which I am satisfied that the applicants would be able to satisfy an adverse costs order, yet will order them to provide security. 21 In Energy Drilling Inc. v Petroz N.L. [1989] ATPR 40-954 (Energy Drilling), Gummow J said (at p 50,422): The purpose of ordering security for costs against an applicant ordinarily resident outside the jurisdiction is to ensure that a successful respondent will have a fund available within the jurisdiction of this Court against which it can enforce the judgment for costs, so that the respondent does not bear the risk as to the certainty of enforcement in the foreign country and as to the time and complexity of the action there which might be necessary to effect enforcement: Kent Heating Ltd. V. Cook-on-Gas Products Pty. Ltd. & Anor (1984)59 A.L.R. 277 at p. 279. On the other hand, the mere circumstance that an applicant is resident outside the jurisdiction does not necessarily invite an exercise of discretion in favour of ordering security, the question being how justice will best be served in the particular case: Barton v. Minister for Foreign Affairs (1984) 2 F.C.R. 463; CBS Records Australia Ltd. & Ors v. Telmak Teleproducts (Aust.) Pty. Ltd. (1987) ATPR ¶40-783 at pp. 48,554-48,555, (1987) 72 A.L.R. 270 at pp. 284-285. [My emphasis] 22 The applicants submit that I should find that they would be likely to satisfy any adverse costs order and that this consideration, made on the basis of evidence of what they submit are assets available within the jurisdiction and other factors, should lead me to refuse Lodestar's application. The applicants refer to: · the very significant resources of both applicants, but particularly Rare Breed, outside the jurisdiction;

[7]

· the availability of reciprocal enforcement mechanisms in the applicants' "home" jurisdictions in the United States of America. 23 Lodestar, on the other hand, submits that the "assets within the jurisdiction" on which the applicants rely are so problematical that they do not displace a presumption that is made in favour of an award of security in the case of foreign resident applicants, and that I should not, in effect, "trust" the applicants merely on account of their capacity to pay and other considerations on which they rely and to which I will refer below. In effect, Lodestar submits that the Court should approach the matter from the viewpoint of a respondent seeking to enforce a costs order and inquire whether that respondent would be subject to an unacceptable disadvantage by reason of the foreign residence of the applicants. 24 As appears below, in my opinion Lodestar's submissions should prevail. 25 Lodestar relies on P S Chellaram & Co Ltd v China Ocean Shipping Co (1991) 102 ALR 321 (Chellaram). In that case, the respondents to an appeal pending in the High Court sought an order that the appellant provide security for the costs of the appeal. The application was made pursuant to the provisions of O 70 r 7 of the High Court Rules, s 1335 of the Corporations Law and the inherent jurisdiction of the High Court. McHugh J summarised the ground of the application as being that the appellant was a company incorporated in Hong Kong, had no assets in Australia, and had a deficiency of shareholders' funds of more than $HK22 million. His Honour stated (at 323): To make or refuse to make an order for security for costs involves the exercise of a discretionary judgment. That means that the court exercising the discretion must weigh all the circumstances of the case. The weight to be given to any circumstance depends not only upon its own intrinsic persuasiveness but upon the impact of the other circumstances which have to be weighed. A circumstance which may have very great weight when only two or three circumstances have to be weighed may be of minor significance when many circumstances have to be weighed. However, for over 200 years, the fact that a party, bringing proceedings, is resident out of the jurisdiction and has no assets within the jurisdiction has been seen as a circumstance of great weight in determining whether an order for security for costs should be made. Indeed, for many years the practice has been to order such a party to provide security for costs unless that party can point to other circumstances which overcome the weight of the circumstance that that person is resident out of and has no assets within the jurisdiction. In the following paragraph, his Honour remarked that not only was the appellant resident out of, and without assets within, Australia, but also it was "hopelessly insolvent". 26 An individual who was a major shareholder in the appellant's business proffered an undertaking to meet any costs ordered to be paid by the appellant up to the amount of the security being sought by the respondent, but there was no evidence concerning his financial position, the financial position of the other major shareholder of the appellant, or evidence of how the appellant's own costs were being funded. 27 The present applicants correctly point out that the circumstances of the present case differ from those in Chellaram in relation to the insolvency of the party against whom the order for security was sought. 28 This point of difference does not, however, automatically deny the proposition that great weight should be given to the fact that a party against whom the order for security is sought is a foreign resident without assets within the jurisdiction. Indeed, the present applicants accept that an order for security will be made in those circumstances unless other factors overcome the weight to be accorded to them. 29 The application raises the question what is meant by "assets within the jurisdiction" for present purposes.

[8]

(i) Overall solvency of the applicants 30 As noted earlier, Austin Nichols is part of a large international group of companies, the Pernod Ricard Group, and Rare Breed is 100%-owned by DCM and therefore part of the Campari Group. 31 There is extensive evidence of the assets of the Campari Group, most of it being in an Information Memorandum issued by DCM in connection with the acquisition of the WILD TURKEY business by its subsidiary Rare Breed. 32 DCM has a fully paid up share capital of €29,040,000. In the year ended 31 December 2008, DCM had net sales of more than €1,015,900,000 (approximately AUD1.6 billion) and a group net profit of €136.9 million. 33 DCM's balance sheet shows shareholders' equity of some €940 million. DCM has undrawn banking facilities specifically referable to the purchase of the WILD TURKEY business of at least €50 million (approx AUD80 million). 34 On 29 May 2009, the Pernod Ricard Group received USD581 million as the proceeds of sale of its WILD TURKEY business to the Campari Group. It should be noted, however, that this was not simply for the sale of the 17 trade marks. The Information Memorandum stated (p 5): The transaction consists of the acquisition by DCM and its indirect subsidiary Rare Breed Distilling, LLC of various assets relating to the spirits brands Wild Turkey American straight bourbon whiskey (including the line extensions with a low alcoholic content Wild Turkey & Cola and Wild Turkey & Dry) and American Honey, a bourbon and honey liqueur. The sellers are the company registered under French law Pernod Ricard S.A. and its subsidiaries incorporated under US law, Austin Nichols & Co., Inc. and Pernod Ricard USA, LLC. The assets to be acquired specifically comprise: (i) the Wild Turkey and American Honey brands, as well as other minor brands, with related know-how and other intellectual property rights; (ii) the bourbon whiskey aging warehouse; (iii) stocks of finished products and packaging materials; (iv) the historic distillery located in Lawrenceburg (Kentucky, USA), as well as the new distillery under construction in its vicinity; (v) various buildings, including those used as aging warehouses, at the Lawrenceburg site or in nearby areas. 35 Michael Lloyd, Marketing Manager - Chivas Regal, employed by Pernod Ricard Pacific Holding Pty Ltd (Pernod Ricard Pacific) states in an affidavit: 7 Exhibited to this affidavit and marked "ML-1 CONFIDENTIAL" are business records from Pernod Ricard Australia showing the sales of WILD TURKEY branded products, being various types of bourbon whiskey, and pre-mixed drinks containing bourbon whiskey, in Australia between 1993 and 2008-09. In each case the trade mark WILD TURKEY appeared prominently on the label on the bottle or other container in which the drink was sold. 8 ………………………………………………………………………………… 9 WILD TURKEY bourbon whiskey is one of the best selling brands of bourbon whiskey in Australia. Of the over 30 brands of spirits distributed by Pernod Ricard Australia in Australia, WILD TURKEY bourbon whiskey is one of the top five brands in terms of sales The exhibit "ML-1 Confidential" records the volumes of annual sales in the "Pernod Ricard Australia Division" for the financial years 1993 to 2009. It suffices to say that the figures showing sales in litres are very large and show an upward trend. 36 The applicants submit that it is unlikely that a company of the size of Rare Breed and with the banking facilities that it enjoys would fail to satisfy an adverse costs order.

[9]

(ii) Assets in Australia 37 The applicants rely on two classes of assets of Rare Breed in Australia: registered trade marks and the benefit of a certain distribution agreement. 38 In his affidavit made on 16 September 2009, Maurice Gonsalves of the applicants' solicitors, Mallesons Stephen Jaques (Mallesons), refers to the trade marks registered in Australia that were assigned by Austin Nichols to Rare Breed. There are 17 of them, according to the Trademark Assignment Agreement. 39 The applicants submit that the trade marks are very valuable, although no separate consideration is specified for them in the Trademark Assignment Agreement or in the Information Memorandum. I accept that they would be very valuable to the registered proprietor, Rare Breed. As noted at [34] above, however, it is impossible to accept figures in the Information Memorandum as indicating the value of the trade marks as separate items of property. 40 How easily realisable are the trade marks? 41 In NV Sumatra Tobacco Trading Company v British American Tobacco Australia Services Ltd (ACN 004 069 649) (2008) 79 IPR 286 (NV Sumatra), Greenwood J made an order that the applicant, NV Sumatra Tobacco Trading Company(NVS) provide security for certain costs that might be awarded against it in favour of the respondent, British American Tobacco Australia Services Ltd (BAT), notwithstanding the fact that NVS was the registered proprietor of 29 trade marks in Australia and the applicant in a number of pending applications to register trade marks. 42 His Honour accepted that by being the registered proprietor of the trade marks, NVS had assets within the jurisdiction, but said that the question was whether they represented assets "of sufficient liquidity so as to constitute a realistic fund against which a successful respondent might enforce an order for costs" (at [20]). Greenwood J continued: A party seeking to enforce a costs order might consider whether a receiver might be appointed to stand in possession of the registered trade marks and the rights conferred by registration so as to realise those marks and convert the assets into a fund of money. However, such a process, if available, is one which bears a risk of certainty and complexity even within the jurisdiction. Although no doubt the registered trade marks have a value which can be calculated by reference to the discounted cash flows referable to the exclusive rights conferred by registration to sell goods bearing the marks, determining that value and effecting a sale might not be easy. His Honour did not regard the registered trade marks as assets within the jurisdiction against which an order for costs might easily be enforced. 43 The applicants seek to distinguish NV Sumatra. They submit that in that case there was no evidence that the marks were in use in Australia, whereas in the present case there is ample evidence to that effect. Moreover, they submit that two problems associated with the trade marks in NV Sumatra do not exist in the present case. One problem was the difficulty of valuing the marks, and the other the difficulty of selling them. The applicants say that the present trade marks were valued as recently as April 2009 as part of an arm's length sale, that they are in use, and that at least two major companies (the respective applicants or their parent groups) have been willing buyers in the recent past. The applicants further submit that there is no reason to suppose that a receiver would have any difficulty in selling the trade marks at a price many times the amount of the respondent's costs. 44 With respect, the applicants' submissions fail to grapple with the critical question whether the bare trade marks would be readily convertible into cash by sale to satisfy an adverse order for costs. 45 The evidence to which the applicants refer is not evidence of a sale of the trade marks as items of property distinct from a sale of the underlying business. 46 Considerable difficulty might be experienced in realising the trade marks if Lodestar ever had to take that course. The underlying business would remain that of Rare Breed. A prospective buyer of the trade marks would know that Rare Breed would remain a competitor in the Australian market, albeit under a mark or name dissimilar to the trade marks. 47 Moreover, the only prospective buyers would be sizeable corporations that were in the same line of business in Australia or wished to embark upon such a line of business in Australia. If they already traded under a trade mark or business name, they might not be prepared to abandon it in order to buy and use Rare Breed's trade marks. Would they be interested to acquire those trade marks in addition? 48 It may be that a receiver would eventually be able to sell the trade marks but the course of doing so would or might well be fraught with considerable difficulty and delay. 49 The other asset to which reference was made concerned the distribution arrangement under which Pernod Ricard Pacific distributes Campari products in Australia and pays money, apparently to the Campari Group, perhaps to Rare Breed. Apparently Rare Breed has no bank account in Australia. The money that is paid by Pernod Ricard Pacific is paid for the supply of bulk whiskey by Rare Breed, and for the right to manufacture, pack and sell mixed drinks in Australia under the WILD TURKEY brand. The distribution agreement itself, however, is not in evidence. 50 The nature of the relationship between the Campari Group and the Pernod-Ricard Group is summarised in the Information Memorandum issued by DCM. Elements of the relationship are as follows: · a three-year agreement with Pernod Ricard USA, LLC for it to bottle the products at the Fort Smith plant at Arkansas, USA;

[13]

· a various minor agreements related to the provision by Pernod-Ricard companies of temporary services for Rare Breed. [My emphasis] The Information Memorandum asserts that all of these agreements are at arm's length. 51 I accept that millions of dollars are paid by Pernod Ricard Pacific to the Campari Group. 52 The applicants correctly point out that s 53 of the FCA Act makes it clear that the procedure of garnishment can be used to enforce a costs order and that s 57 grants the Court a wide power to appoint receivers. Accordingly, so the applicants submit, there is a "highly liquid cash flow under the distribution contract" which is an asset in Australia potentially available to the respondent by ordinary means to enforce any costs order. 53 Again, however, there could be great difficulty in garnisheeing the amounts held by Pernod Ricard Pacific and payable to Rare Breed, if they are payable to Rare Breed. In order for a garnishee order to operate effectively, it would be necessary that at the time of service of the garnishee order on Pernod Ricard Pacific, that company was indebted to Rare Breed. Much would depend on the contractual arrangements between Rare Breed and Pernod Ricard Pacific. Lodestar would not know the detail of those arrangements. Moreover, it would have to be and remain the case that the money owed by Pernod Ricard Pacific was owed to Rare Breed, and not to some other company in the Campari Group. 54 It would be relatively easy for Rare Breed and Pernod Ricard Pacific, acting quite lawfully, to render the garnishee process useless to Lodestar by changing their contractual arrangements. 55 In relation to the distribution agreement, Lodestar relies on Jesse James v Nolmont Pty Ltd (subject to a Deed of Company Arrangement) (ACN 010 874 834) [2007] FCA 1604. In that case the applicants were all resident outside Australia and the "asset within the jurisdiction" on which they relied was a stream of royalties or a potential stream of royalties payable under a trade mark licence by a licensee or licensees in Australia in respect of the trade marks. Ryan J considered that the respondent should not have to rely on "assets as speculative as an unquantified stream of royalties flowing on some completely unidentified terms to Vanilla Gorilla [one of the applicants] or either of the other applicants". 56 The case is not on all fours with the present one but his Honour's decision points in the direction of not regarding the present distribution agreement as an adequate "asset within the jurisdiction" for present purposes. 57 While it may be that the distribution agreement would provide a satisfactory source of money against which an adverse costs order against Rare Breed could be enforced, this is doubtful for the reasons mentioned above.

Austin, Nichols & Co Inc v Lodestar Anstalt

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