Karlsson v Griffith University

Judgment

THE COURT: On 14 August 2020, we dismissed the applicant's summons for leave to appeal for want of jurisdiction. These are our reasons for making that order.
The applicant sought leave to appeal from two decisions of the Supreme Court in Karlsson v Griffith University [2019] NSWSC 1335 (the first judgment) and Karlsson v Griffith University [2020] NSWSC 365 (the second judgment).
In the first judgment, Adamson J struck out the applicant's pleading and set out a regime to facilitate the matter being re-pleaded. In the second judgment, Wright J refused the applicant leave to file a proposed further amended statement of claim dated 21 October 2019 and dismissed the proceedings under UCPR r 13.4(1) with costs. Wright J considered that the applicant's proposed further amended statement of claim sought to plead a trade mark infringement and the making of false and misleading representations (at [55]). In that further amended statement of claim, the applicant sought damages, and/or equitable compensation, and/or an "equitable an account of profits" and interest, totalling $2,000,000.
On 13 July 2020, this Court made orders listing the matter for a leave only hearing on 14 August 2020. The question of whether this application for leave to appeal was competent was also stood over to 14 August 2020.
The issue concerning competence is whether the question of relief and jurisdiction in this Court is governed by s 7(5) of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth) (the Cross-vesting Act) which provides as follows: 7 Institution and hearing of appeals … (5) Subject to subsections (7) and (8), where it appears that a matter for determination in a proceeding by way of an appeal from a decision of a single judge of the Supreme Court of a State or Territory (not being a proceeding to which subsection (6) applies) is a matter arising under an Act specified in the Schedule, that proceeding shall be instituted only in, and shall be determined only by: (a) the Full Court of the Federal Court or of the Family Court, as the case requires; or (b) with special leave of the High Court, the High Court.
That section prohibits both the institution and the determination of appeals which include a matter for determination in a proceeding by way of an appeal being a matter "arising under" an Act specified in the Schedule to the Cross-vesting Act.
As this Court reiterated in Eberstaller v Poulos (2014) 87 NSWLR 394; [2014] NSWCA 211 at [20], it is critical to determine at the outset whether a court whose jurisdiction is sought to be invoked in fact has jurisdiction. There is no doubt that the judges of the Common Law Division in the first judgment and the second judgment had jurisdiction to consider the alleged infringement of a registered trade mark arising under the Trade Marks Act 1995 (Cth). The NSW Supreme Court is a "prescribed court" with jurisdiction to hear an action for an infringement of a registered trade mark: ss 125, 190 and 192 Trade Marks Act 1995. [1]
If s 7(5) of the Cross-vesting Act applies, however, this Court does not have jurisdiction to hear the proceeding because the application can only be instituted in and determined by the Full Court of the Federal Court of Australia: Eberstaller v Poulos, at [25]; Morris Finance Ltd v Brown (2016) 93 NSWLR 551; [2016] NSWCA 343, at [21]-[23]; Boensch v Pascoe; [2016] NSWCA 191; (2016) 311 FLR 101, at [10]. [2]
In Bramco Electronics Pty Ltd v ATF Mining Electrics Proprietary Ltd (2013) 86 NSWLR 115; [2013] NSWCA 392 Meagher JA held (at [5]) that the expression "arising under" in s 7(5) is to be given the same meaning as it has in Chapter III of the Constitution.
Where a party seeks to bring an appeal from a decision of a single judge of the Supreme Court of a State or Territory where the litigation involves the federal statutes identified in the Schedule to the Cross-vesting Act it is essential to bear in mind s 7 of the Cross-vesting Act. That provision presupposes that an appeal may contain a number of matters for determination. If it appears that the "only matters for determination" in the appeal are matters which do not arise under an Act in the Schedule, an appeal from a decision of a single judge lies to the relevant State or Territory appellate court: s 7(3).
However, where it appears that "a matter for determination" in an appeal is a matter arising under an Act specified in the Schedule then the prohibition in s 7(5) applies. The applicant in such a case is prohibited from instituting an appeal other than in an appropriate federal court, subject to ss7(7) and 7(8) which here do not apply. A State or Territory court is prohibited from determining an appeal, should the appeal be instituted in a non-federal court in contravention of the first prohibition. In the seminal authority concerning the interpretation of s 76(ii) of the Constitution, Latham CJ in R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett (1945) 70 CLR 141; [1945] HCA 50 said at 154: "Paragraph (ii) is limited to matters arising under federal statutes, and does not extend to matters involving the interpretation of such statutes if they do not arise thereunder ... the inquiry to be made is not whether the determination of the matter involves the interpretation of a federal law. The relevant inquiry is whether the matter arises under the law."
In Felton v Mulligan (1971) 124 CLR 367; [1971] HCA 39 each of the members of the Court addressed the differences in language between a "matter ... involving its interpretation" in s 76(i) and "matter ... arising under…" in s 76(ii) of the Constitution. Barwick CJ (part of the majority in that case), at 374, explained: "The point at which interpretation of the federal statute, prima facie an apparently incidental consideration, may give rise to a matter arising under the statute is not readily expressed in universally valid terms. But the distinction between the two situations must be maintained."
In CGU Insurance Limited v Blakeley (2016) 259 CLR 339 at 351-2; [2016] HCA 2 at [29] the High Court per French CJ, Kiefel, Bell and Keane JJ elaborated on the statement of Latham CJ in R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett about the words "arising under" in s 76(ii) of the Constitution: [28] … By virtue of s 76(ii) of the Constitution the matters in respect of which jurisdiction may be conferred upon the High Court include 'any matter ... arising under any laws made by the Parliament'. In addition to the general jurisdiction conferred by s 39(2) of the Judiciary Act, s 1337B of the Act invests the Supreme Courts of the States with jurisdiction 'with respect to civil matters arising under the Corporations legislation.' The term 'civil matter' is defined in s 9 of the Act as 'a matter other than a criminal matter.' The term 'criminal matter' is not defined. The use of the constitutional term 'matter in the statutory investing of Supreme Courts with general and specific federal jurisdiction directs attention to the frequently quoted observation of Latham CJ in R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett: 'a matter may properly be said to arise under a Federal law if the right or duty in question in the matter owes its existence to Federal law or depends upon Federal law for its enforcement, whether or not the determination of the controversy involves the interpretation (or validity) of the law.' [29] It is a particular application of that general statement to say that a matter will arise under a federal law if it involves a claim at common law or equity or under a law of a State where the claim is 'in respect of a right or property which is the creation of federal law'. If the source of a defence to a claim at common law or equity or under a law of a State is a law of the Commonwealth, then on that account also the matter may be said to arise under federal law. The existence of such a claim in a proceeding will meet the subject matter condition necessary to enliven the federal jurisdiction invested in a court of a State pursuant to s 77(iii) of the Constitution, read with s 76(ii) [citing LNC industries Ltd v BMW (Australia) Ltd (1983) 151 CLR 575 at 581]…" (some footnotes omitted))
A claim for infringement of a trade mark is a claim in respect of property which is the creation of federal law, relevantly the Trade Marks Act 1995.
That is not the end of the present enquiry. The Schedule to the Cross-vesting Act identifies the Trade Marks Act 1955 (Cth) but not the Trade Marks Act 1995. Griffith University contends that s 10 of the Acts Interpretation Act 1901 (Cth) has the effect of treating the reference to the Trade Marks Act 1955 as a reference to the Trade Marks Act 1995.
The Trade Marks Act 1955 was repealed by s 232 of the Trade Marks Act 1995. By s 2 the Trade Marks Act 1995, Part 1 (Preliminary) commenced on the day of Royal Assent (17 October 1995) and the other Parts commenced on 1 January 1996. The Trade Marks Act 1995 is and has been the relevant Act dealing with any trade mark rights asserted by Ms Karlsson.
By reason of the reference to the repealed Trade Marks Act 1955 in the Schedule to the Cross-vesting Act resort must be had to s 10 of the Acts Interpretation Act 1901 if a reference to that Act is to be read as a reference to the Trade Marks Act 1995. Section 10 provides: "10 References to amended or re-enacted Acts Where an Act contains a reference to a short title that is or was provided by law for the citation of another Act as originally enacted, or of another Act as amended, then: (a) the reference shall be construed as a reference to that other Act as originally enacted and as amended from time to time; and (b) where that other Act has been repealed and re-enacted, with or without modifications, the reference shall be construed as including a reference to the re-enacted Act as originally enacted and as amended from time to time; and (c) if a provision of the other Act is repealed and re-enacted (including where the other Act is repealed and re-enacted), with or without modifications, a reference to the repealed provision extends to any corresponding re-enacted provision (whether or not the re-enacted provision has the same number as the repealed provision)."
The issue is whether the whole of the repealed Trade Marks Act 1955 can be construed as a reference to the Trade Marks Act 1995 by reason of the operation of s 10 of the Acts Interpretation Act.
Pearce (Dennis Pearce, Interpretation Acts in Australia, (1st ed 2018)) suggests that s 10 "(since its amendment in 2011) deals with the three situations [set out below] by requiring the reference to be read as if it included the Act or a provision of an Act as amended from time to time or as remade" (at 3.28). Pearce writes (at 3.27) that: "The Interpretation Acts are concerned with three situations: • cross-references to or incorporation of the whole of another Act where that Act is later repealed and remade in its entirety; • cross-references to or incorporation of a provision of another Act where the provision is later repealed and remade; • both the foregoing situations where the Act or provision when remade is in a different form from that to which reference was made either because of renumbering or radical restatement."
In Woolworths Ltd v Lister [2004] NSWCA 292 Handley JA (Beazley and Ipp JJA agreeing) dealt with the cognate provision to s 10 of the federal Act, s 68(3)(a) of the Interpretation Act 1987 (NSW). His Honour said: "[12] In the present case the comparison mandated by s 68(3)(a) is between the two statutes as a whole, there is no need to identify corresponding sections, and the inquiry is at a higher level of abstraction. The question whether the 1988 Act re-enacted the 1904 Act with modifications cannot be answered simply by considering whether the provisions of the new statute, in the language of Turner J, 'taken as a whole were different'. [13] The application of s 68(3)(a) is not confined to Acts which consolidate statute law without substantive amendments. Such Acts are rare in this State because for a very long time we have had legislation which authorises the reprinting of Acts in a certified form which incorporates all amendments. See Reprints Act 1972 (NSW) and earlier legislation. [14] There can be no doubt that the 1904 Commonwealth Act, in a broad sense, was re-enacted in 1988, albeit with extensive modifications. Each Act was the principal statute enacted by the Commonwealth Parliament under the conciliation and arbitration power in s 51(xxxv) of the Constitution. Each dealt with the same broad subject matter viz conciliation and arbitration for the prevention and settlement of industrial disputes extending beyond the limits of more than one State."
After conducting the high level comparison between the 1904 Act and the 1988 Act, Handley JA concluded: "[20] … My first and abiding impression is that the 1988 Act was a re-enactment of the 1904 Act with modifications. In my view the former cannot be described as "an entirely new and different enactment", and it did not alter the essential nature of the 1904 Act. "[The new Act] deals substantially with the same subjects … to achieve the same or similar ends …" - conciliation and arbitration for the prevention and settlement of industrial disputes extending beyond the limits of any one State."
It is apparent from a comparison of the two Acts here in question that the 1955 Trade Marks Act, in a broad sense, was re-enacted in 1995, albeit with extensive modifications to take account, in particular, of international developments in trade marks since the 1955 Act. The purpose of both Trade Marks Acts is to provide for the registration of trade marks and to set out the rights deriving from registration of a trade mark. In the 1995 Act, some changes have been made to reflect international trends toward uniformity and some attempts have been made to simplify language and to replace terms in the old legislation with simpler ones.
As a leading text in this area explains, the Trade Marks Act 1995 contains a significantly greater number of provisions than the 1955 Act. Shanahan's Australian Law of Trade Marks and Passing Off (Mark Davison, Ian Horak, Shanahan's Australian Law of Trade Marks and Passing Off (online ed, 2020)) states: "[1.005] Early Australian Legislation The introduction of the 1995 Act was largely a response to a report to the Minister for Science and Technology [3] (the Working Party Report) and Australia's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), annexed to the Marrakesh Agreement Establishing the World Trade Organisation (Marrakesh, 15 April 1994), which had to be met by 1 January 1996. The 1995 Act introduced some very major changes in the law concerning registered trade marks and these changes are discussed in detail in the ensuing chapters. Three major changes are worthy of mention now. First, the 1995 Act introduces the concept of a sign ('mark' under the previous legislation) and the definition of a trade mark refers to the use of a sign in a particular way, namely 'to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person'. The definition of a sign is considerably broader than the definition of 'mark' under the previous legislation. For example, the definition of a sign includes aspects of packaging, colours, shapes, sounds and scents. [4] Second, registration can be obtained for signs even if they have no inherent distinctiveness and their distinctiveness is derived exclusively from their actual use. [5] This easing of the requirements for registration is accentuated by a presumption that the Registrar should accept an application for registration unless satisfied that there are grounds for rejecting it. Third, the protection granted to registered trade marks has been significantly increased. The previous law only prevented the use of substantially identical or deceptively similar trade marks in respect of the goods or services for which the plaintiff had obtained registration. [6] Section 120 of the 1995 Act goes further and expands the zone of protection to goods and services of the same description as those in respect of which the plaintiff's trade mark is registered or goods or services closely related to those goods or services. In addition, special protection is conferred on well-known trade marks in the circumstances defined in s 120(3) when the alleged infringing trade mark has been used in relation to unrelated goods or services. … [1.1515] Application of international conventions in Australia There are a number of other international conventions relating to intellectual property that are administered by the World Intellectual Property Organisation (WIPO), a United Nations agency. One of these that has recently had an impact on Australian trade mark law is the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 27 June 1989 (Madrid Protocol). [7] The Madrid Protocol of 27 June 1989 provides a system whereby multiple applications for registration in more than one member state can be made through one central application. The application is then assessed by the individual offices of relevant member states. Other procedural matters such as changes in the details of owners can be dealt with via this centralised system."
However, despite these additional provisions (e.g. dealing with collective trade marks), and approached in the same way as Handley JA approached a similar problem in Woolworths v Lister, the Trade Marks Act 1995 is not an entirely new and different enactment. The 1995 Act does not alter the essential nature of the Trade Marks Act 1955. It deals at a high level with essentially the same subject matter to achieve the same or similar ends, namely, the regulation of trade marks.
Accordingly, s 7(5) of the Cross-Vesting Act applies to this case it being a matter arising under the Trade Marks Act 1995. It follows that this Court does not have jurisdiction to hear any appeal. As this is not a case where the Court has commenced "to hear a proceeding by way of an appeal" s 7(7) of the Cross-vesting Act does not apply.
The respondent submitted that claims that are unarguable, doomed to fail, untenable, or not pursued bona fide are colourable, citing Burgundy Royale Investments Pty Ltd v Westpac Banking Corporation (1987) 18 FCR 212 at 219 and Cook v Pasminco Ltd (2000) 99 FCR 548; [2000] FCA 677 at [16]. The respondent relied on findings made by Wright J in summarily dismissing the proceeding that the proceeding had no reasonable prospects of success, that claims for compensation, on any increasing basis, were made arbitrarily and without any obvious basis and was an abuse of process (the second judgment at [111]-[115]).
We reject that submission. To be colourable a claim must be made for the improper purpose of fabricating jurisdiction. The mere fact that a claim is struck out as untenable does not mean it is colourable: Johnson Tiles Pty Ltd (ACN 004 576 103) v Esso Australia Ltd (2000) 104 FCR 564; [2000] FCA 1572 French J at [88] (Beaumont and Finkelstein JJ agreeing). We do not understand the judgment of Lindgren J in Cook v Pasminco Ltd to provide any different test. That was a case where it was alleged that claims under ss 75AD and 75AG of the Trade Practices Act 1974 (Cth) had been added to common law causes of action in negligence and nuisance for the purpose of attracting federal jurisdiction and were thus colourable. That is made clear by the central question posed by Lindgren J at [14] "Are the federal claims here 'genuine' and 'non-colourable' or are they fabricated in order to bring the common law claims within the Court's jurisdiction?". That was the context for his Honour's references elsewhere in the judgment to the federal claims being "doomed to fail" and "clearly untenable" and thus colourable.
In the present case it does not follow from the conclusion that the proceedings were frivolous, vexatious and an abuse of process that the Trade Marks Act claim was colourable. The first judgment concerned the application of UCPR 14.28 to strike out Ms Karlsson's document filed with the Court on 31 July 2019. Her Honour's ultimate conclusion (at [16]) was to the effect that the form of the pleading was so embarrassing Griffith University should not be required to plead to it. Nevertheless, the claim was plainly one arising under the Trade Marks Act 1995. In the second judgment, Wright J considered the factual background including the trade mark claims. His Honour's conclusions on leave to file the proposed pleading were at [54] to [79]. Wright J summarily dismissed the proceedings pursuant to r 13.4(1) of UCPR on the basis that the proceedings were frivolous, vexatious and an abuse of process. It is clear, however, that his Honour considered that the applicant's proposed further amended statement of claim sought to plead a trade mark infringement.
We reject the submission that Ms Karlsson's claim was colourable in the sense of being a claim made for the improper purpose of fabricating jurisdiction.

Amendments 08 March 2021 - At [8]: "[231]" changed to "[21]-[23]"; typographical amendment to "appeal" in fn 2. At [18]: "the" moved to after "whether". At [21]: "conducted" changed to "conducting". At [22]: last sentence amended to delete "that", change "so" to "to" and change "replaces" to "replace". At [23]: "records" omitted. At [28]: "and" omitted. At [30]: addition of "a" to first sentence. At [32]: addition of "above". DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated. Decision last updated: 08 March 2021

At a glance

Court

Decision date

Before

Catchwords

Source

Catchwords

Judgment (6 paragraphs)

Parties

Legislation Cited (8)

Cases Cited (23)