British American Tobacco Australasia Limited v Taleb

BETWEEN: BRITISH AMERICAN TOBACCO AUSTRALASIA LIMITED (ACN 002 717 160)

JUDGE: DODDS-STREETON J DATE: 25 SEPTEMBER 2012 PLACE: MELBOURNE

INTRODUCTION 1 On 25 September 2012, I made the orders set out above for the reasons that follow. 2 By an interlocutory application dated 21 September 2012, the applicant, British American Tobacco Australasia Ltd, urgently sought, pursuant to rules 10.23 and 10.24 of the Federal Court Rules 2011 (Cth) ("the Rules") orders for deemed service of documents previously left at particular addresses and for substituted service of documents to be served in future, on the first respondent, Khaled Ahmad Taleb, and on the seventh respondent, Zhi Liu. 3 The application was supported by: (a) the affidavit of Georgina Pay O'Farrell, sworn on 20 September 2012; (b) the affidavit of Thomas Edmund Kelleher, sworn on 21 September 2012; (c) the affidavit of Gino Alfredo Zitignani, sworn on 21 September 2012; (d) the affidavit of Lisa Dibiagio, sworn on 24 September 2012; and (e) written submissions dated 24 September 2012.

background 4 The applicant is the registered owner of a number of Australian trade marks ("WINFIELD trade marks") including WINFIELD, in respect of goods in Class 34, including cigarettes, tobacco, tobacco products and smokers' articles. 5 By an originating application and statement of claim dated 7 September 2012, the applicant alleges that the first and seventh respondents have, from a date unknown to the applicant, infringed the applicant's WINFIELD trade marks by, inter alia, without licence or authority offering for sale and selling goods bearing one or more of the WINFIELD trade marks.

Attempts to serve first respondent 6 Thomas Kelleher, a private investigator and process server, deposed that on 7 September 2012, he was instructed to personally serve a number of documents, including the originating application and statement of claim, on the first respondent at his business "Manor Lakes Fruit & Vege" at an address in Manor Lakes, Victoria. Mr Kelleher deposed that when he attended the address, the incumbent trader informed him that the first respondent's business had ceased trading at the location. 7 Mr Kelleher deposed that he was then, on 10 September 2012, instructed to attempt service on the first respondent at 22 Lantana Avenue, Hoppers Crossing, which was listed as the first respondent's address on a current business name extract. When Mr Kelleher attempted service at that address on 10 September 2012, he was informed by a woman who had been living at the address for about six months that she did not know the first respondent. 8 Georgina O'Farrell, a senior associate of the applicant's solicitors, deposed that the first respondent had telephoned her firm on 6 September 2012 in order to discuss a letter of demand he had received in connection with the present proceeding. On 20 September 2012, Ms O'Farrell telephoned the first respondent on the mobile telephone number he had previously provided. After confirming the first respondent's identity, she asked for his address for the purpose of giving him some documents, to which he answered "It's 14 Vernon Court in Hoppers Crossing". The first respondent then spelt out the street name at Ms O'Farrell's request and confirmed that it was his home address. Ms O'Farrell deposed that when she explained that she was from the applicant's lawyers and her call was in relation to the sale of products from his business in Manor Lakes, the first respondent stated that he no longer had the business, fell silent and did not resume the conversation. When it was clear that the first respondent no longer wanted to participate in their conversation, Ms O'Farrell ended the telephone call. 9 Ms O'Farell then instructed Mr Kelleher to serve the first respondent with the originating application and statement of claim at the Vernon Court address and, if that were not possible, to leave the documents with someone over the age of 16 at that address and request they bring them to the first respondent's attention. 10 Mr Kelleher deposed that on 20 September 2012, in accordance with Ms O'Farrell's instructions, he attended the Vernon Court address, where a woman identified herself as the estranged wife of the first respondent. In response to Mr Kelleher's queries about the first respondent's whereabouts, the woman responded "No, he doesn't live here. We are separated and I have no contact with him". Mr Kelleher deposed that some time later, having observed two vehicles parked in the driveway, he left the documents with the woman and asked that they be brought to the first respondent's attention. 11 Ms O'Farrell deposed that about half an hour after Mr Kelleher left the documents at the Vernon Court address, she sent a text message to the first respondent's mobile telephone, which stated: Mr Taleb, we have tried to reach you at the address that you gave me earlier today. We have left the court documents with your wife at 14 Vernon Court. We urge you to collect the documents and deal with them as soon as possible. There is a direction hearing for this matter scheduled for 28 September. Georgina O'Farrell, Corrs."

Attempts to serve seventh respondent 12 Gino Zitignani, an investigator and process server, deposed that he was instructed by the applicant's solicitors to serve a number of documents, including the originating application and statement of claim, on the seventh respondent, at the registered principal place of her business known as Hang Lee Market at 137 Merrylands Road, Merrylands, New South Wales. 13 Mr Zitignani deposed that on 11 September 2012 he attended the Merrylands address, where he met a man who identified himself as the seventh respondent's husband. When Mr Zitignani explained that he needed to give some documents to the seventh respondent and inquired about her whereabouts, the man stated that she was not at the premises, but might return at some later time. 14 Mr Zitignani deposed that on 12 September 2012, he returned to the Merrylands address and spoke to the man again. When questioned about the seventh respondent, the man responded that she "is not here, she has gone to the doctors". Mr Zitignani then asked for the seventh respondent's mobile telephone number, home telephone number and home address, to which the man replied "No". 15 Mr Zitignani deposed to four further attempts to serve the seventh respondent at the Merrylands address on 13 (twice), 14 and 15 of September 2012. He deposed that on each occasion, the man stated that the seventh respondent was not at the premises and declined to assist him. 16 Mr Zitignani deposed that on 20 September 2012, he again returned to the Merrylands address to inquire about the seventh respondent's whereabouts. The man refused to provide her home address and stated that she was sick. Mr Zitignani deposed that he then left the documents on the counter in front of the man and asked that they be brought to the seventh respondent's attention. 17 Lisa Dibiagio, a paralegal employee of the applicant's solicitors, deposed that on 16 April 2012, she or her team member conducted a business name search of the seventh respondent's business "Hang Lee Asian Food Market" on the ASIC database, which showed that the principal place of business was 137 Merrylands Road, Merrylands, New South Wales, 2160, the address at which Mr Zitignani repeatedly attempted service. 18 On 24 September 2012, Ms Dibiagio conducted an up-to-date business name search for the business, which showed the primary place of business as "Merrylands NSW 2160".

The rules 19 Rule 8.06 of the Rules requires personal service of an originating application and statement of claim and r 10.01 sets out the requirements for personal service on an individual respondent: 20 Rule 8.06 states: Service of originating documents The applicant must, at least 5 days before the return date fixed by the Registrar, serve a copy of the originating application and the statement of claim or accompanying affidavit personally on each respondent named in the originating application. 21 Rule 10.01 states: Service on individual A document that is to be served personally on an individual must be served by leaving the document with the individual. 22 Rule 10.23 provides for deemed service. It states: Deemed service A party may apply to the Court, without notice, for an order that a document is taken to have been served on a person on a date mentioned in the order if: (a) it is not practicable to serve a document on the person in a way required by these Rules; and (b) the party provides evidence that the document has been brought to the attention of the person to be served. Note Without notice is defined in the Dictionary. 23 Rule 10.24 provides for substituted service. It states: Substituted service If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the Court without notice for an order: (a) substituting another method of service; or (b) specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or (c) specifying that the document is taken to have been served: (i) on the happening of a specified event; or (ii) at the end of a specified time. Note Without notice is defined in the Dictionary.

relevant Legal principles 24 An originating application and statement of claim must ordinarily be served personally on a respondent (r 8.06). Where the respondent is an individual, personal service is effected by leaving the document with the individual (r 10.01). Where personal service is "not practicable", an applicant may apply for an order for deemed service (r 10.23) or substituted service (r 10.24).

Not practicable (r 10.23 and r 10.24) 25 It is a precondition for both deemed service under r 10.23 and substituted service under r 10.24 that "it is not practicable to serve a document on the [or "a"] person in a way required by these Rules". The previous equivalent rule (O 7 r 9 of the Federal Court Rules 1979 (Cth)) required ordinary service to be "impracticable" for any reason. 26 In Ricegrowers Co-Operative Ltd v ABC Containerline NV (1996) 138 ALR 480 at 482, Tamberlin J considered the phrase "not practicable" in the context of O 7 r 9. His Honour stated: … The expression "not practicable" is in my view essentially identical in meaning to the term "impractical". In order to establish impracticality some attempt, at least, should be made to effect service in accordance with the rules or evidence should be led that it is so obviously futile as not to warrant an attempt at service … In O'Neil v Acott (1988) 59 NTR 1, the Full Court of the Supreme Court of the Northern Territory considered the words "impractical to serve". Asche CJ with whom Nader and Rice JJ concurred, referred to the remarks of Mason J in Foxe v Brown (1984) 58 ALR 542 at 547, where his Honour said: Furthermore, the question is not whether reasonable effort has been shown by the plaintiff over a particular period but whether at the date on which the application for substituted service is made, the plaintiff, using reasonable effort, is unable to serve the defendant personally. (Emphasis added) 27 On one view, Tamberlin J considered that impracticality in the relevant sense required either some attempt at service in accordance with the Rules or alternatively, evidence that such service would be obviously futile. 28 If, however, Tamberlin J considered that "impracticality" necessarily required futility or inability to serve an intended recipient, in Humane Society International Inc v Kyodo Senpaku Kaisha Ltd [2007] FCA 124 at [14], Allsop J questioned that approach. His Honour stated: In that case [Ricegrowers Co-Operative Ltd v ABC Containerline NV (1996) 138 ALR 480], Tamberlin J seemed to express the view that futility or inability to serve was an essential requirement for invocation of the rule. Whether that gives full breadth to the language of the rule may be open to debate. On one view of the language of the rule, "impractical" may be wide enough to cover circumstances where in the light of the nature of the claim and the circumstances of the applicant and respondent service through the method provided for by following the Rules is not sensible or realistic, even if it is possible or feasible. It is unnecessary to deal with this question here … 29 In Statewide Secured Investments Pty Ltd v Tarrant [2011] FCA 1067 at [9], Flick J expressed the view that the change in language from O 7 r 9 did not suggest a more constrained meaning for the current r 10.24 (and, by parity of reasoning, r 10.23). His Honour endorsed, persuasively in my view, Allsop J's recognition that service may be impractical if the prescribed method is, although "possible" or "feasible", "not sensible" or "not realistic". Further, Flick J did not consider that there was any requirement to prove that service in accordance with the Rules was impossible or that further attempts at such service would be futile, not sensible or not feasible. His Honour at [9] stated: Notwithstanding the difference in language now employed in the current Rules, there is no reason why the expression in Rule 10.24, namely "not practicable", should be given any meaning more constrained than that previously given to Order 7 r 9. Concurrence is expressed with the views tentatively set forth by Allsop J in Humane Society. Rule 10.24 should not be given any meaning requiring the necessity to prove the impossibility of service of documents upon a party in accordance with the Rules or any requirement to prove that further attempts to effect service in accordance with the Rules would otherwise be futile or not sensible or feasible. 30 In Statewide Secured Investments at [10], Flick J endorsed Nicholson J's approach in Hadgkiss v Aldin [2006] FCA 1164 at [3], and held that an order for substituted service under r 10.24 must be based on a reasonable probability that the identified method of service will inform the intended recipient. In Combis (as Trustee) v Spottiswood [2011] FCA 1082 ("Combis") at [16], Logan J recognised that where experience has shown that a particular method of communication has resulted in material being brought to the attention of the person to be served, an order for substituted service according to that method will be likely to achieve the same result.

Substituted Service 31 On the basis of the evidence, I was satisfied that it was not practicable within the meaning of rr 10.23 and 10.24 to serve either the first respondent or the seventh respondent personally in accordance with the Rules. 32 Numerous unsuccessful attempts to effect personal service in accordance with the Rules were made at the addresses notified or given by the respective respondents, and all reasonable steps to make contact with and personally serve the respondents were pursued. 33 In the circumstances, personal service of either respondent by the method prescribed by the Rules was neither sensible nor realistic. Further, if and in so far as a higher requirement of obvious futility in attempting such service applied, in my view, it was satisfied. 34 I was also satisfied that, in the circumstances, the proposed methods for substituted service gave rise to a reasonable probability that they would inform the intended recipients of the documents. 35 Accordingly, I considered it appropriate to order substituted service in the form proposed.

Deemed service 36 The question whether deemed service should be ordered, was however, more difficult, as it depended on a determination of what is necessary to satisfy the recently introduced requirement in r 10.23(b) of "evidence that the document has been brought to the attention of the person to be served". 37 In Combis, the evidence disclosed numerous attempts to serve a respondent by sending an email to her last known email address and sending material by prepaid post to the address the respondent gave in a bankruptcy examination. The material was also left at the relevant address. An unidentified person at the address informed the process servicer over the intercom that the respondent still had a connection with the address. 38 Logan J found that, in the circumstances, there was an inference open that the respondent was "keeping house" or avoiding personal service. His Honour was therefore satisfied that it was not practicable to effect service by the means ordinarily required by the Rules. 39 His Honour was not, however, persuaded that the requirement in r 10.23(b) of the Rules was satisfied. 40 Logan J stated at [13]: I am not persuaded, though, that the documents concerned, ie the originating application and supporting affidavits, have been drawn to her attention by the informal means thus far employed. There has not been any response by her personally or on her behalf by a legal practitioner. It may well be that the documents have come to her attention. It is just that I do not have evidence which is persuasive that they have indeed been brought to her attention. 41 Accordingly, Logan J concluded that the case was not for a deeming of service but rather for the making of a substituted service order (at [14]). 42 In Speedo Holdings B.V. v Evans [2011] FCA 1089 ("Speedo"), Flick J contemplated, without deciding, that r 10.23 may impose a more onerous requirement than that imposed by O 7 r 10. In Speedo, where relief was sought pursuant to, inter alia, the Trade Marks Act 1995 (Cth), the applicants applied for an order of deemed service under r 10.23. The applicants sent an email attaching copies of their originating application and statement of claim to the respondent, and, (in contrast to Combis) later received an email from the respondent confirming receipt. Flick J was satisfied that the documents had been brought to the respondent's attention and ordered that service be deemed to have been effected by the applicants' email (at [19]-[20]). His Honour stated at [10]: First, r 10.23 may now impose a more onerous requirement than that previously imposed by O 7 r 10. That rule, it will be noted, referred to steps that had "been taken to bring the document to the notice of the person to be served". Rule 10.23(b) now refers to the need for "evidence that the document has been brought to the attention of the person to be served". The significance of that difference in language, however, need not be further pursued. 43 In Combis, Logan J, on one view, required a response by the respondent or her legal practitioner in order to satisfy the requirement of evidence that the document had been brought to the attention of the person to be served. 44 On another view, his Honour simply found that the evidence in that case was not persuasive, in circumstances where documents were left at the respondent's last known address, the process server's communications took place only by intercom with an unidentified person, who indicated only that the respondent still had an unspecified connection with the address, and the process server did not, apparently, request the unidentified person to bring the documents to the respondent's attention. 45 The previous equivalent rule (O 7 r 10), referred to steps that had been taken to bring the document to the notice of the person to be served. Rule 10.23(b), however, refers to "evidence that the document has been brought to the attention of the person to be served". The current provision may suggest a shift from focus on the steps taken to bring the documents to the party's attention to the achievement of that objective. As Flick J acknowledged in Speedo, a more onerous requirement for deemed service could apply, particularly if r 10.23(b) required evidence that the person became aware of the document, in the form of confirmation from the person or direct evidence from an eye witness. 46 There is, however, a distinction between, on the one hand, evidence that a document has been brought to a person's attention and, on the other hand, evidence that the person accorded it attention or acknowledged it. In my view, r 10.23(b) does not require the latter. Such a requirement would materially reduce the ambit and efficacy of the provision for deemed service, which is characteristically invoked precisely because service is being evaded or is otherwise difficult. If the application of the rule depended on confirmation from or on behalf of the person or the testimony of an eye witness, as the applicant submitted, the conditions for deemed service would be satisfied mainly in circumstances where the level of access to or communication with the relevant person may, in any event, have permitted service in accordance with the Rules. 47 The Explanatory Statement to the Rules does not support the view that r 10.23(b) was intended to introduce a more onerous requirement for deemed service than hitherto applied. The Explanatory Statement does not refer specifically to r 10.23, but relevantly states: Other than Division 10.6 (Service under Hague Convention) and Rules 10.02, 10.07 and 10.08, Part 10 adopts, simplifies and streamlines the process and procedures which operated under the former Rules and does not substantially alter existing practice. 48 Further, there is nothing in the language of r 10.23(b) to indicate the imposition of a higher burden of proof, a requirement for confirmation or the exclusion of circumstantial evidence. 49 As observed in Transport Industries Insurance Co Ltd v Longmuir [1997] 1 VR 125 (at 129), (albeit in a very different context) the proper approach in a circumstantial case is to consider the weight of the combination of facts proved and then determine whether the combined weight of facts and circumstances support the inference as a matter of probability. 50 In my opinion therefore, where there is evidence of actions, steps and circumstances which alone or in combination support, on the balance of probabilities, an inference that the documents have been brought to the relevant person's attention, the requirement in r 10.23(b) will be satisfied. 51 Viewed in that light, while the best evidence for the purposes of r 10.23(b) may be a response from or confirmation by the person, or direct evidence of a witness that the document has been brought to the person's attention, such evidence will not be essential in every case. 52 In the present case, while the first respondent (or his legal practitioner) did not acknowledge that the documents were brought to his attention, I was satisfied that, in circumstances where: (a) on 20 September 2012, the first respondent, in the course of a telephone call with the applicant's solicitor on a telephone number he had previously provided to the applicant's solicitors, clearly stated the details of his current residential address; (b) the first respondent was informed by the solicitor that documents would be left for him at that address, and, on learning of their nature, demonstrated his reluctance to receive the documents by discontinuing the telephone call; (c) the documents were left later on 20 September 2012 at the address given by the first respondent, with a person who stated that she was the first respondent's estranged wife, by a process server who requested the wife to bring the documents to the first respondent's attention; and (d) half an hour after the documents were left at the address, the solicitor sent a text message to the first respondent informing him that the documents had been left for him at the given address; the evidence, on the balance of probabilities, supported the inference, and thus established, that the documents were brought to the attention of the first respondent. 53 Further, in relation to the seventh respondent, in circumstances where: (a) the process server attended on seven occasions at business premises shown in a current ASIC business name search as the seventh respondent's place of business, which was occupied by a person who expressly acknowledged that: (i) he was the seventh respondent's husband; (ii) the seventh respondent, although not currently present, was attending the premises, and (iii) he was in contact and communication with the seventh respondent, but would not facilitate the process server's direct contact with her; and (b) the process server left the documents at the relevant address with the person professing to be the seventh respondent's husband and requested him to bring the documents to her attention; I was satisfied that there was evidence which, on the balance of probabilities, supported the inference, and thus established, that the documents were brought to the seventh respondent's attention. 54 The requirement in r 10.23(b) was thus satisfied in relation to both the first respondent and the seventh respondent.

Conclusion 55 In the circumstances, it was appropriate to make the orders sought pursuant to rr 10.23 and 10.24 of the Rules. I certify that the preceding fifty-five (55) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dodds-Streeton.