Bickford's Australia Pty Ltd v Trink Tank Pty Ltd [2025] FCA 683

(a) Informed Trink Tank's solicitors that Bickford's had recently issued proceedings in this Court against another party for infringing the trademark i.e. the Noot proceedings; and

(b) They held instructions to issue proceedings in this Court against Trink Tank and Mr Matthew James Bax, the second respondent, unless certain undertakings were given and an application by Trink Tank to the Registrar of Trademarks to have the trademark revoked was withdrawn by 4.00pm on Friday, 11 April 2025.

1. No undertakings were given by Trink Tank and Mr Bax, although the revocation application to the Registrar was withdrawn.
2. On 14 April 2025, Bickford's issued proceedings in this Court alleging infringement of its trademark by Trink Tank pursuant to s 120(1) of the TMA_._ It also alleges that Mr Bax, who is the sole director and secretary of Trink Tank, is a joint tortfeasor in Trink Tank's infringement of the trademark.

1. There are two interlocutory applications before the Court. The first forms part of Bickford's originating application by which it seeks an order pursuant to s 32AC of the Federal Court of Australia Act 1976 (Cth) that the FCFCoA proceeding be transferred to this Court.
2. The second was filed by Trink Tank on 24 April 2025 in which it seeks orders setting aside Bickford's originating application in these proceedings pursuant to r 13.01(1)(a) of the Federal Court Rules (2011) and FCA s 32AA(1). It also seeks an order striking out the statement of claim filed in these proceedings and an order that these proceedings be dismissed. In the alternative, it seeks an order pursuant to FCA ss 32AB and 32AA(2) and FCR 27.02 that these proceedings be transferred to the FCFCoA.
3. The issue arising on the applications is whether the FCFCoA proceeding should be transferred from the FCFCoA to this Court or whether the proceedings in this Court should be dismissed, or in the alternative, transferred to the FCFCoA.
4. It is for the reasons which follow that:

(1) There will be an order on Bickford's interlocutory application transferring the FCFCoA proceeding to this Court;

(2) Trink Tank's interlocutory application seeking removal of the within proceedings to the FCFCoA is dismissed;

(3) The within proceedings are dismissed;

(4) Trink Tank is to pay Bickford's costs of and incidental to its interlocutory application; and

(5) In the event Bickford's recasts its statement of claim in this matter as a statement of cross-claim in the transferred FCFCoA proceedings, Trink Tank is to pay Bickford's costs thrown away by reason of having to undertake that exercise.

32AA Proceedings not to be instituted in the Court if an associated matter is before the Federal Circuit and Family Court of Australia (Division 2)

(1) Proceedings must not be instituted in the Court in respect of a matter if:

(a) the Federal Circuit and Family Court of Australia (Division 2) has jurisdiction in that matter; and

(b) proceedings in respect of an associated matter are pending in the Federal Circuit and Family Court of Australia (Division 2).

(2) If:

(a) proceedings are instituted in the Court in contravention of subsection (1); and

(b) the proceedings are subsequently transferred to the Federal Circuit and Family Court of Australia (Division 2);

the proceedings are taken to be as valid as they would have been if subsection (1) had not been enacted.

1. Trink Tank submits that s 32AA provides a statutory bar to the issue of proceedings in this Court where the prescribed circumstances apply.
2. It refers to the observations of Branson J in Carantinos v Magafas [2008] FCA 1107 where her Honour was considering an application for an injunction to prevent the respondent from taking any further steps to obtain a sequestration order in proceedings in what was then the Federal Magistrates Court.
3. The issue before her Honour was whether the application for an injunction should be transferred to the Federal Magistrates Court. Her Honour considered the proceedings in the Federal Magistrates Court was an "associated matter" within the meaning of s 32AA(1)(b) and dismissed the application.
4. Trink Tank refers to Isser v BHP WAIO Pty Ltd [2023] FCA 580 where Snaden J was considering proceedings instituted in this Court under the Fair Work Act 2009 (Cth) alleging adverse action in circumstances where the applicant had also commenced proceedings against the respondent in the FCFCoA alleging she had been subjected to adverse action. There was no issue that the reasons advanced for the alleged adverse action in this Court were the same or very closely linked to the reasons advanced for the alleged adverse action in the FCFCoA.
5. There was also no issue that the two sets of proceedings involved common issues of fact and law such that the FCFCoA proceedings were associated with the Federal Court proceedings.
6. His Honour considered that the proceedings in the Federal Court was commenced in contravention of s 32AA(1) of the FCA Act. Neither party supported the transfer of the proceedings in the Federal Court to the FCFCoA and whereas the applicant sought for the proceedings to remain in this Court, the respondent sought orders in the nature of summary dismissal under s 32AA.
7. His Honour utilised s 32AB(1) of the FCA Act, which concerns a discretionary transfer of civil proceedings in this Court to the FCFCoA, together with FCR 27.01, finding that it was clear the two sets of proceedings were associated and that the requirements of s 32AB(6) of the FCA Act were satisfied.
8. His Honour observed, obiter, that s 32AA(1) is clear and the only way that the subject matter of the proceedings in this Court could be spared from summary judgment was for the matter to be transferred.
9. Trink Tank also refers to Boumelhem v Commonwealth Bank of Australia [2008] FCA 1121, in which Buchanan J dealt with an application in this Court which was an attempt to obtain orders relating to the conduct of proceedings in the then Federal Magistrates Court. His Honour observed that s 32AA appears to act as a statutory bar to the issue of proceedings: at [9].
10. Whilst accepting that s 32AA operates as a statutory bar, Bickford's submits, first: that s 32AC(2)(a) of the FCA Act operates such that where a proceeding is pending in the FCFCoA, this Court may proceed under that section to transfer the proceedings into this Court where, amongst other things, proceedings in respect of an associated matter are pending in this Court: 32AC(6)(b).
11. Second, as a part of that submission, Bickford's submits that the Noot proceeding is an associated matter with the within proceedings, as well as the FCFCoA proceedings.
12. Sections 32AC(1), (2) and (6) provide:

32AC Discretionary transfer of civil proceedings from the Federal Circuit and Family Court of Australia (Division 2)

(1) If:

(a) a proceeding is pending in the Federal Circuit and Family Court of Australia (Division 2); and

(b) the proceeding is not a family law or child support proceeding;

the Court may, by order, transfer the proceeding from the Federal Circuit and Family Court of Australia (Division 2) to the Court.

(2) The Court may transfer a proceeding:

(a) on the application of a party to the proceeding; or

(b) on its own initiative.

...

(6) In deciding whether to transfer a proceeding from the Federal Circuit and Family Court of Australia (Division 2), the Court must have regard to:

(a) any Rules of Court made for the purposes of subsection (4); and

(b) whether proceedings in respect of an associated matter are pending in the Court; and

(c) whether the resources of the Court are sufficient to hear and determine the proceeding; and

(d) the interests of the administration of justice.

1. Trink Tank submits that the Noot proceedings are not associated with the subject proceedings.
2. In Philip Morris Inc v Adam P Brown Male Fashions Proprietary Limited (1981) 148 CLR 457, 495-496, Gibbs J observed that, "[s]peaking generally, given the identity of parties, one matter is associated with another if the two matters arise out of substantially the same, or closely connected, facts."
3. The significance of the Noot proceedings being associated with the FCFCoA proceedings cannot be understated. That is because if they are associated, s 32AC(6)(b) provides for the discretionary transfer of civil proceedings from the FCFCoA (Division 2) to this Court.
4. In my view, the Noot proceedings are associated with the FCFCoA proceedings in that:

(a) Both proceedings concern an alleged infringement of the same trademark;

(b) The relevant trade appears to be a niche market;

(c) Both proceedings turn on whether the trademark is cancelled or not. If Noot is successful in their proceedings, such that the trademark is cancelled, that may well provide an answer to the current FCFCoA proceedings;

(d) If the FCFCoA proceedings are not transferred to this Court, there is a risk of inconsistent findings and inconsistent decisions across two courts. The position is made all the worse by the prospects of appeals from both decisions;

(e) Although Mr Bax deposes in his affidavit sworn 16 May 2025, which was read on Trink Tank's application, to not having any intention to instruct Trink Tank's solicitors to advance in the FCFCoA proceedings any claim questioning the validity of the trademark, that does not preclude instructions been given to do so at some stage in the future; and

(f) So too, although Trink Tank's solicitor, Mr Widdowson, deposes that at the date of swearing his affidavit on 24 April 2025, he held no instructions to make any claim for cancellation or amendment of the trademark, nor did he anticipate receiving such instructions, that that does not mean he will not receive those instructions in the future. Indeed, as I have noted earlier in these reasons, a previous application by Trink Tank for revocation of the trademark was filed in the Trademarks Office on 27 February 2025 by Trink Tank, but subsequently withdrawn.

1. That being the case, s 32AC(6)(a) requires the Court to have regard to any rules of Court which set out the factors that are to be taken into account by the Court in deciding whether to transfer a proceeding from the FCFCoA to this Court.
2. Those rules are to be found in FCR 27.02 which provides:

27.02 Transfer from the Federal Circuit and Family Court of Australia (Division 2)

(1) The Court must not make an order under subsection 32AC(1) of the Act on its own initiative transferring a proceeding from the Federal Circuit and Family Court of Australia (Division 2) to the Court unless the parties to the proceeding have been notified of the proposed transfer and have been given an opportunity to be heard in relation to the proposed transfer.

Note: Subsection 32AC(1) of the Act provides that the Court may, by order, transfer a proceeding that is pending in the Federal Circuit and Family Court of Australia (Division 2) and is not a family law or child support proceeding to the Court. Subsection 32AC(2) of the Act provides that the Court may transfer the proceeding on the application of a party to the proceeding or on its own initiative.

(2) Before the Court makes an order under subsection 32AC(1) of the Act transferring a proceeding from the Federal Circuit and Family Court of Australia (Division 2) to the Court:

(a) the Court must consult the Chief Justice of the Court in relation to the proposed transfer; and

(b) the Chief Justice of the Court must consult the Chief Judge of the Federal Circuit and Family Court of Australia (Division 2) in relation to the proposed transfer.

(3) A failure to comply with this rule in relation to a proposed transfer of a proceeding under subsection 32AC(1) of the Act does not affect the validity of an order made under that subsection transferring the proceeding.

1. FCR 27.02(1) does not apply.
2. Pursuant to FCR 27.02(2), the Chief Justice of this Court has been consulted in relation to the proposed transfer and has consulted with the Chief Judge of the FCFCoA in relation to the proposed transfer.
3. The resources of this Court are sufficient to hear and determine the FCFCoA proceedings and given the prospects of inconsistent findings it is clearly in the interests of justice for the FCFCoA matter to be heard in this Court.
4. It is for these reasons that the Court's discretion is enlivened and in the exercise of that discretion, there will be an order on Bickford's interlocutory application transferring the FCFCoA proceedings to this Court.

1. That is sufficient to dispose of Bickford's interlocutory application for the transfer of the FCFCoA proceedings to this Court and Trink Tank's interlocutory application in which it seeks orders transferring these proceedings to the FCFCoA.
2. However, that still leaves Trink Tank's interlocutory application seeking that Bickford's originating application in these proceedings be set aside and that Bickford's claim filed in these proceedings be struck out and the proceedings dismissed pursuant to FCR 13.01(1)(a) and s 32AA.

1. Trink Tank seeks an order dismissing these proceedings on the basis that they were instituted in breach of s 32AA.
2. Both parties accept that s 32AA(1) is a statutory bar to the institution of proceedings in this Court where the requirements of this section are met.
3. There is no doubt that is the case.
4. Given that the FCFCoA proceedings are to be transferred to this Court, there is no point in transferring these proceedings to the FCFCoA. That being the case, s 32AA(2) does not operate.
5. The consequence is that these proceedings were instituted in the face of a statutory bar and should be dismissed for that reason.
6. Since there has been no consideration of the merits of Bickford's substantive application, there is no prejudice to it that cannot be compensated by an appropriate order as to costs because it is able to pursue its claim against Trink Tank as a cross-claim in this Court, if so advised.
7. Trink Tank issued proceedings in the FCFCoA when it was on clear notice that Bickford's was going to file proceedings in this Court unless undertakings were given by 11 April 2025. In what appears to be a pre-emptive strike, Trink Tank issued proceedings in the FCFCoA. It was entitled to do so, but it did so when on notice, both of the Noot proceedings and Bickford's intention to issue out of this Court imminently. Had Trink Tank waited but a few days, it could have issued the unjustified threats claim as a cross-claim in these proceedings. By not doing so, Trink Tank has caused unnecessary costs to be incurred in relation to the FCFCoA matter which was clearly dependant on other proceedings which had been instituted in this Court. Further, in view of the Noot proceedings, there was always the potential of inconsistent findings as between the two courts. Trink Tank's actions created that potential.
8. Should Bickford's file a cross-claim in the transferred proceedings, Trink Tank is to pay Bickford's costs thrown away on an indemnity basis to be assessed as a lump sum in the absence of agreement.
9. As to the costs of Bickford's interlocutory application and Trink Tank's interlocutory application, there will be an order that Trink Tank pay Bickford's costs of and incidental to both applications on a party and party basis to be assessed as a lump sum if not agreed.

I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice O'Sullivan.