defendant. Leave to file the proposed further amended statement of claim was refused. The proceedings were dismissed under UCPR r 13.4(1). Karlsson was ordered to pay the University's costs of and incidental...
Key principles
Leave to file a proposed amended pleading may be refused where the pleading would be liable to be struck out because it discloses no reasonable cause of action or is...
For the proposed Trade Marks Act infringement claim, the pleading needed to identify particular uses by Griffith University of the relevant sign, the dates of those uses, and...
For the proposed Australian Consumer Law claim, the pleading needed to identify each allegedly misleading representation, when and by whom it was made, and the facts supporting...
A pleading that is unintelligible, ambiguous or imprecise enough to deprive the defendant of proper notice of the real substance of the claim is embarrassing for the purposes of...
Issues before the court
Whether Karlsson should have leave to file the proposed further amended statement of claim dated 21 October 2019.
Whether the proceedings should be summarily dismissed under UCPR r 13.4(1).
Plain English Summary
Karlsson's proposed pleading did not set out enough clear facts to explain how Griffith University had infringed her registered trade mark or made misleading representations. In particular, it did not identify the relevant uses or representations, when they occurred, and why they met the legal tests. The Court considered the pleading unclear and found no reasonable prospect that the proceedings could be successfully prosecuted in their existing course. It therefore refused leave to file the pleading and dismissed the proceedings. The Court ordered costs against Karlsson but did not bar her from starting future proceedings or make that dependent on paying the costs first.
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Whether future proceedings about the same subject matter should be prohibited without leave or made conditional on payment of the University's costs.
In Karlsson v Griffith University [2020] NSWSC 365, Wright J considered two connected applications. Annika Karlsson sought leave to file a proposed further amended statement of claim. Griffith University sought dismissal of the proceedings under the Uniform Civil Procedure Rules 2005 (NSW) (UCPR), and orders restricting any future proceedings about the same subject matter.
The dispute concerned the slogan “Know more. Do more.” The University applied to register that mark on 10 May 2013 and its registration was granted in February 2015. Karlsson applied for registration of the same words on 3 August 2014. In August 2018, the University consented to registration of Karlsson’s mark and applied to cancel its own registration. The University’s registration was cancelled on 20 August 2018, and Karlsson’s mark was registered on 31 October 2018.
Karlsson alleged that the University continued using the slogan and sought compensation or a purchase of her trade mark. In correspondence during April and May 2019, she sought increasing sums, from approximately $200,000 to $800,000, before commencing proceedings. The proposed pleading sought $2 million, along with damages, equitable compensation or an account of profits. It also referred to trade mark infringement and misleading representations.
The procedural history mattered. Karlsson’s earlier amended statement of claim had been struck out by Adamson J on 1 October 2019. Adamson J had provided a process for a proposed further pleading to be considered. Karlsson submitted her proposed pleading on 21 October 2019, but the University objected to it. Wright J heard the leave application and the University’s dismissal application together on 14 February 2020.
Wright J refused leave to file the proposed pleading, dismissed the proceedings under UCPR r 13.4(1), and ordered Karlsson to pay the University’s costs, in addition to the costs ordered earlier. The Court did not impose the requested general restriction on commencing future proceedings without leave, or a condition that new proceedings could be brought only after payment of the costs.
Why the court decided this way
The Court assessed the proposed pleading against the basic function of pleadings: to state the case the defendant must meet, define the issues, and provide procedural fairness. It applied the principle that leave should not be granted for a pleading that would itself be liable to be struck out. The relevant strike-out grounds included no reasonable cause of action and embarrassment under UCPR r 14.28(1).
For trade mark infringement, the judgment examined the statutory framework in the Trade Marks Act 1995 (Cth). Section 20 sets out rights conferred by registration, while s 120 addresses infringement and s 122 provides circumstances in which use is not infringement. The Court considered that the timing of the registrations and the University’s prior registration made the timing and character of any alleged use central. It said the pleading needed to identify particular uses of the relevant sign, the dates of those uses, and the facts showing that the University used the sign “as a trade mark” at a time when Karlsson was registered owner and the University was not.
The proposed pleading did not identify a specific use on a specified date. It did not plead the circumstances supporting the allegation that the University had made the use or that the words had been used as a trade mark. The Court also observed that the pleading did not clearly explain how a particular infringement caused the alleged loss. References to Trade Marks Act ss 92 and 44 did not fill these gaps. The judgment describes s 92 as providing for an application to remove a mark from the Register on grounds including non-use, and s 44 as dealing with rejection of certain applications in light of earlier registered marks. Neither supplied the missing facts for the pleaded infringement claim.
The proposed Australian Consumer Law claim had similar deficiencies. The only apparent allegation was that the University “caused commercially misleading conduct by using two slogans as trade mark Know more. Do more. , and Remarkable”. The Court said a claim under s 29 needed to identify each representation, when and by whom it was made, the facts supporting attribution to the University, and the circumstances that gave the representation its misleading character. The pleading did not do so and did not explain how any representation caused the claimed loss.
The Court separately found the pleading embarrassing in the procedural sense. It was not using “embarrassing” as a description of a person or a criticism of a litigant. Rather, the question was whether the document could perform the procedural function of telling the opposing party the case it had to meet. The Court acknowledged Karlsson’s first language was not English and said it had made allowances for that. It nevertheless found the pleading partly unintelligible, ambiguous and generally too imprecise to give the University proper notice.
For dismissal, the Court recognised the high threshold for summary intervention. It cited Dey v Victorian Railways Commissioners, General Steel Industries and Spencer v Commonwealth of Australia for the need for a clear case and a claim that is clearly untenable. The Court then considered the course of the proceedings, the failed pleading attempts, Karlsson’s position about obtaining professional assistance, and the burden on the University of continuing to respond to a case it could not discern. It also considered the pre-proceedings demands and the evidence of alleged post-cancellation use. It found that the material did not unequivocally demonstrate that the University had used the mark as a trade mark after cancellation.
The Court concluded that the proceedings had no reasonable prospect of successful prosecution and that their continuation would require the University to incur substantial expense and inconvenience beyond the ordinary burden of defending a properly pleaded claim. It therefore characterised the proceedings as frivolous, vexatious and an abuse of process and dismissed them under r 13.4(1). The conclusion was tied to the pleaded case, evidence and procedural history before Wright J, not a general rule that self-represented litigants’ proceedings are liable to dismissal.
Before and after state of the law
The judgment applied existing pleading and summary-dismissal principles; it did not purport to create a new test for trade mark infringement or misleading representations. Before this decision, the authorities cited by Wright J established that a claim must plead material facts and be sufficiently clear to give the defendant notice. The Court drew on Banque Commerciale and Gould and Birbeck for the purpose of pleadings, and on Szanto v Bainton for the meaning of an embarrassing pleading.
For summary dismissal, the Court restated the cautious approach in Dey, General Steel and Spencer: a proceeding should not be summarily stopped merely because a claim appears weak or difficult. The judgment’s application of that demanding threshold is important. Wright J did not treat the absence of a properly pleaded cause of action in isolation as automatically sufficient to dismiss the proceedings. The Court also assessed whether there was a real prospect that the case could be properly formulated and prosecuted, and the practical prejudice of requiring the University to continue responding.
The decision also applied established abuse-of-process principles. It cited Ridgeway v the Queen, Williams v Spautz and Council of Trinity Grammar School v Anderson in describing improper purpose, oppressive use of court procedures and harm to the administration of justice. The Court’s reasoning combined the pleading deficiencies with the history and likely burden of continuation. It did not establish that a demand for a settlement sum, by itself, makes later proceedings abusive.
On prospective restrictions, the Court did not extend the outcome into a general filing prohibition. It accepted that substantially the same case might be liable to dismissal as an abuse of process if brought again, referring to Jeffery & Katauskas. But it saw no sufficient basis to require leave before a new claim could be commenced. Nor did it order that future proceedings be conditional on paying the existing costs. Its discussion recognises that unpaid costs may be relevant to a later stay application, while cautioning that a blanket payment condition could cause injustice.
Key passages with plain-English translation
The judgment describes the role of a statement of claim as stating “with sufficient clarity the case that must be met by the defendant”, defining the issues and meeting procedural fairness requirements. In plain English, a defendant should not have to guess what conduct is alleged, what legal wrong is claimed, or what facts support it.
The passage on embarrassment explains that a pleading is deficient if it is unintelligible, ambiguous or so imprecise that the opposing party does not know the real substance of the claim. In practical terms, the court’s concern is whether the document can be answered and used to identify the issues for decision. A document can contain many pages or legal labels yet still fail that function if the material factual allegations are not stated clearly.
For the trade mark claim, Wright J identified the need to plead the relevant uses and their dates, and to explain why they were uses “as a trade mark”. This reflects the particular significance of registration periods in this dispute. The Court did not decide, after a trial, whether any specific instance of use infringed Karlsson’s registration. Its conclusion was that the proposed pleading did not set out the facts needed to present that question as a properly constituted claim.
For the misleading-representation claim, the Court required identification of each representation, its maker and timing, and facts showing why it was misleading. Plainly, simply labelling conduct “false and misleading” does not tell the defendant which statement is challenged or what about it is said to be untrue or misleading.
The Court’s statement that the plaintiff’s case must be “so clearly untenable that it cannot possibly succeed” captures the caution required for summary dismissal. It should not be read as reducing the pleading requirements. Rather, it explains that dismissal without a trial is an exceptional step, while the case before the Court was assessed in light of both the pleading failures and the broader circumstances.
Finally, the Court’s refusal to impose a leave requirement or costs precondition is a significant limit on the orders made. It left open that substantially the same claim might be vulnerable to dismissal if brought again, but it did not impose a prospective bar. It also identified possible injustice if a costs condition prevented a viable claim from proceeding because costs had not been assessed or circumstances made payment inappropriate.
What fact patterns trigger this precedent
The decision is most relevant where a party seeks leave to file an amended pleading after an earlier pleading has been struck out, and the proposed replacement still fails to set out material facts. It illustrates the need to plead identifiable events rather than broad conclusions: dates, conduct attributed to the defendant, the legal character of the conduct and the link between that conduct and the loss claimed.
For trade mark claims, the judgment is particularly relevant where the parties’ registrations or rights changed over time. A pleading may need to distinguish uses made during different registration periods and explain why the alleged conduct satisfies the statutory test in the relevant period. The decision does not resolve what evidence would ultimately prove infringement; it concerns what needs to be pleaded for the claim to be intelligible and legally complete.
For misleading-representation claims, it is relevant where a pleading relies on general descriptions such as “misleading conduct” without identifying the statements or representations, who made them, when they were made, and what made them misleading. A claim that also seeks substantial damages needs to plead a clear causal connection between the alleged conduct and the claimed loss, as the Court noted was missing here.
The summary-dismissal reasoning is relevant where repeated pleading attempts do not identify a viable cause of action and continuation would impose substantial, unjustified burdens on the opposing party. The judgment also shows that a court may take account of the case’s procedural history and the practical prospect of the plaintiff being able to present a properly pleaded claim. The result remains fact-sensitive: the decision does not say that one failed pleading, self-representation, or a large damages claim alone justifies dismissal.
The decision also bears on requests for broad restrictions on future proceedings. It distinguishes the possible dismissal of a substantially repeated, abusive claim from a prospective order requiring leave for any new proceeding. It warns that costs-related restrictions can have consequences beyond the immediate dispute, particularly where costs are not yet quantified.
How later courts have treated it
The supplied judgment identifies itself as a principal judgment dated 7 April 2020. The material provided for this analysis contains no subsequent judgments discussing, following, distinguishing or applying Karlsson v Griffith University. It is therefore not possible, on this source alone, to describe how later courts have treated it.
Within the judgment itself, Wright J relied on earlier authorities rather than claiming a new doctrine. For pleadings, the judgment referred to Banque Commerciale, Gould and Birbeck, Szanto and McKellar. For summary dismissal and the required caution, it referred to Dey, General Steel, Spencer and Perera. For abuse of process, it discussed Ridgeway, Williams v Spautz, Dowling and other authorities. Those citations explain the legal framework Wright J applied; they are not evidence of later treatment of the 2020 decision.
Any assessment of the decision’s subsequent precedential use would require later case-law materials not included in the supplied text. No later-case trend or status should be inferred from the judgment’s own list of authorities.
Still-open questions
The judgment did not decide the substantive question whether any particular post-cancellation use by the University infringed Karlsson’s registration. The Court found that the proposed pleading did not identify a specific use on a specific date and that the evidence before it did not unequivocally demonstrate relevant post-cancellation use. Because leave was refused and the proceedings dismissed, there was no trial determination of infringement.
Nor did the Court determine whether any particular representation by the University was misleading under s 29 of the Australian Consumer Law. The pleading did not identify a sufficiently particular representation or plead the facts needed to show its misleading character and causal connection to loss.
The judgment also did not decide what amount, if any, would be recoverable for loss, equitable compensation or an account of profits on a properly pleaded and proven claim. The amounts sought in correspondence and in the proceedings were not adjudicated as damages. The Court discussed the changing demands as part of its assessment of the proceedings’ context and abuse of process, not as a final determination of any compensation entitlement.
The decision leaves open how a future court would approach a different, properly particularised claim based on identified uses, dates and evidence. Wright J expressly said that a viable statement of claim formulated with appropriate professional advice should not be impeded by a requirement to obtain leave. It also left open whether a stay could be sought if viable new proceedings concerning the same subject matter were commenced before the original costs were paid.
This is general legal information, not legal advice. Zoe can make mistakes. Before acting on this, relying on it, or using any draft, have a qualified Australian lawyer check it.
Judgment (20 paragraphs)
[1]
Background to the claims
On applications such as the present, it is not appropriate to attempt to resolve evidentiary disputes relating only to the substantive claims. However, it is helpful to record certain aspects of the evidence in order to attempt to understand what Ms Karlsson's proposed further amended statement of claim might mean. In addition, where the facts are uncontroversial, they may be relied upon when relevant. Finally, findings may be made concerning what steps have been taken preparatory to and during the proceedings and in relation to issues to be determined in respect of both parties' notices of motion. Potentially relevant aspects of the evidence, uncontroversial facts and findings relevant to preparatory steps and other matters relating to the proceedings are set out in the paragraphs which follow.
According to her résumé, which was in evidence, Ms Karlsson owned a Thai restaurant between 1999 and 2002. Her tax returns indicated that this was on the Gold Coast. Her evidence included photographs of a business card and a receipt stamp for "Thai Banquet Restaurant" both of which included the words "Know more. Do more." under the name of the restaurant. There was, however, no indication when the photographs were taken or when the card and stamp were created.
The résumé also recorded that Ms Karlsson was a volunteer office administrator for Blue Care from 2002 to 2004 and for Gecko from 2005 to 2006 and undertook a course in hospitality management in 2007 and 2008 and then part-time language and literacy studies in 2009-2010.
At some time prior to 10 May 2013, and probably as early as 2011, Griffith University decided to adopt and use the slogan "Know more. Do more." in the marketing of its services.
On 10 May 2013, Griffith University filed an electronic application for Trade Mark No. 1556369 "Know more. Do more."
Griffith University used the trade mark "Know more. Do more." in marketing its courses on the internet and on booklets, brochures and other publications before and after May 2013.
On 3 August 2014, an electronic application for the registration of Trade Mark No. 1638546 which also consisted of the words "Know more. Do more." was filed on Ms Karlsson's behalf.
On 4 February 2015, the Registrar of Trade Marks issued a certificate of registration in respect of Trade Mark No. 1556369. The certificate recorded that Griffith University was the owner of the trade mark. In accordance with the filing date, the relevant priority date was 10 May 2013 and it was due for renewal on 10 May 2023. In addition, the certificate stated that the trade mark was registered for the following goods and services:
"Provision of tertiary education services; arranging and conducting colloquiums, congresses, conferences, seminars, symposiums, and training workshops; publication of educational text, books and journals; provision of educational information; provision of on-line electronic publications, text, books and journals being services in class 41".
During 2016 and possibly at other times, Griffith University used not only the trade mark "Know more. Do more" but also the slogan "Be Remarkable" and related expressions, in its marketing.
In 2016, 2017 and 2018, Ms Karlsson applied to IP Australia for "extensions of time due to special circumstances" in respect of trade mark application No. 1638546, and paid the relevant fee.
Ms Karlsson's evidence indicated that a business called the Roxburgh Group prepared a business plan dated 12 June 2018 for her in relation to an "International Education & Migration Agency".
By a letter dated 7 August 2018, Baxter IP, trade mark attorneys acting for Ms Karlsson, requested that Griffith University sign a letter of consent allowing Ms Karlsson to register and use her trade mark. The letter included the following:
"Our client intends to start a new business and use the trademark NO MORE. DO MORE. as a slogan for her new business. The nature of the business of our client will be an immigration and education agency, which will provide services in relation to studying in Australia and immigrating to Australia. The business will also provide language training classes for clients who need to meet language requirements of visas.
… [After referring to Ms Karlsson's trademark application 1638546 in class 41 including education services and the University's trademark 1556369 in class 41 claiming the services referred to above, the letter continued:]
Taking into consideration the different industries which our client and you operate in, we believe that our client's use of the trademark will not conflict with the Griffith University, nor would it cause confusion to consumers. Due to the similarity in the trademarks, however, your registration has been cited against our client's application. As such our client has instructed us to seek a letter of consent from you in relation to their application.
A suitable letter of consent is attached for your consideration and execution. Should you agree to sign the letter our client's application will proceed to acceptance.
Should you not agree to sign the letter of consent and alternative approach for our client to overcome the citation is a non - use action against your trademark under section 92 of the Trade Marks Act 1995.
Our client would prefer not to take any hostile legal action against your registration and would prefer to resolve the matter amicably.
…"
In response to this letter, Griffith University signed a letter of consent dated 9 August 2018 to the Registrar of Trade Marks in the form attached to Baxter IP's letter, consenting to the use and registration of Ms Karlsson's trade mark under application No. 1638546:
"in respect of the following goods [sic] in Class 41:
Academies (education); Consult to see services relating to education; Designed of educational courses, examinations and qualifications; Education Academy services; Education advisory services; Education information; Education services; Educational advisory services; Educational consultancy services; Educational research; Educational services".
On 14 August 2018, Griffith University also filed a request for cancellation of registration of its existing Trade Mark No. 1556369. Consequently, the defendant's trade mark was cancelled on 20 August 2018 and the cancellation of entry on the register in respect of this trade mark was published on 30 August 2018.
Thus, between 10 May 2013 and 20 August 2018, Griffith University was taken to be the registered owner of the trade mark "Know more. Do more."
Ms Karlsson's Trade Mark No. 1638546 was then registered on 31 October 2018 with a term of registration of 10 years from 3 August 2014, the date when the application for the trade mark was first made by her.
On 25 April 2019, Ms Karlsson wrote a letter to Griffith University which included the following:
"I Annika Karlsson an owner of Trademark 1638546 NO MORE. DO MORE.
I can't operate a training business after Trademark has been registered on 31 October 2018.
As Griffith University is aware the University use this Trademark NO MORE. DO MORE.
After 14 August 2018 cancellation of registration trademark number 1556369.
We are instructed that the Griffith University has continued to use the trademark NO MORE. DO MORE.
On Internet clearly showing the Griffith University continuing use. Trademark during in period that I has owner of the Trademark
We are instructed that this has cause considerable confusion in the market and for potential customers.
This is I considerable loss in terms of additional marketing costs and loss of sales.
…
I have instructions to attempt to settle of matter in one of two ways.
1. The Griffith University immediately cease using the trademark and compensate for losses, which are estimate to be approximately $200,000.00 to date OR
2. The Griffith University purchase the trademark NO MORE. DO MORE. for use with legitimate, rightful, legal.
If Griffith University wishes to purchase the trademark please provide a suggest price.
We await your urgent reply, please contact by e-mail OR post address"
By a letter dated 8 May 2019 to Griffith University, Ms Karlsson made similar claims and proposed similar settlement options except that the claim for compensation for losses was now "approximately $500,000.00AUD to date". It also included after the settlement proposal:
"If Griffith University wishes to purchase the Trademark please provide a prefer price
EARN A QUICK
TRADEMARK
KNOW MORE. DO MORE.
I'm informed glad offer incentive selling Trademark. In the last 7 years was a great year for your organization privileges several large from enrolment students worldwide. Because of Trademark, it's easier increasing students worthy turn into generating business. I'm settlement private agreement, and then transfer with system IPaustralia.
We waiting please response within two weeks working day, contract by e-mail or post address
If not determine perhaps a letter on a lawyer's, depending on the scale or type of breach
Thank you for your cooperation to establishing a business in the future"
On 10 May 2019, Griffith University referred this correspondence to their solicitors, who wrote to Ms Karlsson requesting her to address all future correspondence in relation to the matter to them.
On 11 May 2018, Ms Karlsson sent the University a letter in almost identical terms to the letter dated 8 May 2019.
On 13 May 2019, the University sent a detailed response to Ms Karlsson outlining its understanding of the relevant facts, circumstances and law and indicating that it would not compensate Ms Karlsson or purchase her registered Trade Mark No. 1638546.
In the following days, Ms Karlsson wrote a number of emails to the University's solicitors pressing her claims.
By letter dated 28 May 2019 to the University's solicitors, Ms Karlsson put forward a further suggestion that Griffith University should buy her trademark for $2 million or she wanted compensation of $800,000.00.
The University's solicitors responded on 7 June 2019 rejecting Ms Karlsson's allegations and noting that no payment of any amount would be made to her. They also recommended that she seek independent legal advice.
As noted above, Ms Karlsson commenced the present proceedings in July 2019 but, on 1 October 2019, her amended statement of claim was struck out and further orders were made.
Ms Karlsson's evidence included photographs and printouts of webpages containing images in which "Know more. Do more." was used in connection with Griffith University as well as photographs and printouts where the "Be Remarkable" slogan was being used in connection with the University. Some of these photographs and print outs indicated that the webpages were accessed in 2019 or 2020 but were created, or related to documents or events from, before 20 August 2018. Some of the webpages had no indication of the date on which they were accessed or the date of the material depicted.
Against that background, Ms Karlsson's application for leave to file the proposed further amended statement of claim is to be considered.
[2]
The further amended statement of claim
Omitting formal parts, Ms Karlsson's proposed further amended statement of claim was as follows:
"RELIEF CLAIMED
1 Damages
2 Further or alternatively, equitable compensation
3 Further or alternatively, equitable an account of profits
4 Interest under s100 of the civil procedure Act 2005 to the date of any judgment
Amount of claim $2,000,000.00
TOTAL $2,000,000.00
PLEADINGS AND PARTICULARS
5 Trade mark infringing, False and Misleading representations
The Parties
6 The First Plaintiff ANNIKA KARLSSON an owner Trade mark is able to sue; and
6.1 Is a trade mark an owner number 1638546 registered on 31 October 2018
6.2 Previous operates a training of cooked and distribution business from Gold Coast Queensland
7 The second defendant GRIFFITH UNIVERSITY and legal representative; Bartley Cohen The first defendant Griffith University
7.1 Is a Trade mark number 1556369 registered on 4 February 2015
7.2 cancelled register Trade mark on 20 August 2018
8 Confirm Priority of Used the Mark FIRST and used Trade mark longer used by an owner of Trade mark prior used of the "know more. Do more." From 1999 on 88 Surf Parade Broadbeach QLD 4218 Australia
Particulars
8.1 Plaintiff have used the "Know more. Do more." Slogan as a trade mark of Plaintiff business since commencement and intend to continually use the slogan as trade mark of Plaintiff business education in the future
8.2 Exhibit 1 contains an image of the business cards and an image of the stamp used by Business the business cards were placed on the counter of the restaurant customers could take and keep it and contact for made reservations
8.3 The stamp was used on invoices
By reason of the matters pleaded in Paragraph 8.3 however Plaintiff have not kept a copy of the invoices since 1999 it is twenty years
8.4 Exhibit 2 the THIEL PARTNERS accountants letter state concerning
By reason of the matters pleaded in paragraph 8 Plaintiff created "Know more. Do more."
9 LOSS AND DAMAGE ALSO SUFFER
Particulars
9.1 Defendant caused non-use non-remove under ( s) 92 from 14 September 2016
By reason of the matters pleaded in paragraph 8 that Plaintiff application delay to entre register under (s) 44
By reason of the matters pleaded in paragraph 9 was defendant caused to suffer stressful requires medical surgical injuries serious or illness treatment under the medical practitioner a hospital
9.2 Defendant caused commercially misleading conduct by using two slogans as trade mark Know more. Do more. , and Remarkable
By reason of the matters pleaded in paragraph 9 with defendant cause the facts to Plaintiff advantage for business that trade mark regarded quantifiable asset may not have built up a significant reputation of in Plaintiff market; or a business diversion of trade mark and valuable of goodwill
The element of damage to goodwill may be loss of trade mark or dilution
By reason of the matters pleaded in paragraph 9 and Plaintiff need not prove actually that special damage real or tangible probability of damage is insatiable
By reason of the matters pleaded in paragraph 9 with are foreseeable
By reason of the matters pleaded in paragraph 2, 3, 9 an after owner register trade mark on 31 October 2018 all establish infringement with defendant third-party commissioned any potential defences, the defendant using sing as trade mark Know more. Do more., in Australia and sign using is substantially identical to the registered trade mark owner"
[3]
Application for leave to file the proposed further amended statement of claim
Given the way in which Ms Karlsson's proceedings were commenced, Part 14 of the Uniform Civil Procedure Rules 2005 (UCPR) applies to the proceedings: UCPR r 14.1.
Because her amended statement of claim was struck out by Adamson J on 1 October 2019 and leave to replead was not granted at that time, Ms Karlsson requires leave to file a further pleading. To this end, Adamson J made orders 3, 4, 5 and 6 on 1 October 2019. Ms Karlsson provided a proposed further amended statement of claim, as envisaged in those order, and now seeks leave to file it.
Pleadings are important and, if a statement of claim cannot be formulated that accords with the rules in Pt 14, this may indicate that the plaintiff does not have a viable claim. The function of pleadings by way of a statement of claim is:
1. to state with sufficient clarity the case that must be met by the defendant;
2. to provide a basis for defining the issues for decision; and
3. to ensure that the basic requirement of procedural fairness, that defendants should have the opportunity of meeting the case against them, is met,
Banque Commerciale SA En Liquidation v Akhil Holdings Ltd (1990) 169 CLR 279 at 286-287 (Mason CJ and Gaudron J); [1990] HCA 11; Gould and Birbeck and Bacon v Mount Oxide Mines Ltd. (In Liq) (1916) 22 CLR 490 at 517 (Isaacs and Rich JJ); [1916] HCA 81.
In relation to pleadings for which leave to file is required, the general principle is that a Court will not grant leave to file a proposed pleading if it would be liable to be struck out: Nguyen v QTQ Mechanical Services Pty Ltd [2019] NSWSC 1629 at [39] (Ward CJ in Eq); Horton v Jones (No. 2) (1939) 39 SR(NSW) 305 at 310 (Jordan CJ, Halse Rogers and Roper JJ).
A pleading may be struck out, under r 14.28(1) of the UCPR, if:
1. it discloses no reasonable cause of action; or
2. it has a tendency to cause prejudice, embarrassment or delay; or
3. it is otherwise an abuse of process of the Court.
Furthermore, if the proceedings as a whole also suffer from substantially the same difficulties, the proceedings may be liable to be dismissed under r 13.4(1) of the UCPR.
A pleading will not disclose a reasonable cause of action unless all the material facts necessary to constitute a complete cause of action are pleaded and the cause of action, when considered only in light of the allegations of fact contained in the challenged pleading, has some chance of success: McKellar v Container Terminal Management Services Ltd [1999] FCA 1101 at [23] -[25]; (1999) 165 ALR 409 (noting that the Federal Court Rules at that time, quoted at [20], were in a form substantially similar to the relevant provisions of the UCPR).
[4]
Trade mark infringement causes of action
Ms Karlsson in her proposed further amended statement of claim appears to be alleging that Griffith University infringed her trade mark by using the words "Know more. Do More." in its marketing and on its publications, and she seeks damages or other relief for that infringement.
Section 20(1) and (2) of the Trade Marks Act specify the rights given by registration of trade mark and relevantly provide:
"(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark;
in relation to the goods and/or services in respect of which the trade mark is registered.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.
…"
Section 20(3) provides that these rights are taken to have accrued to the registered owner as from the date of registration of the trade mark. In a case such as the present, the date of registration of the trade mark is taken to be, by operation of ss 6 and 72(1) of the Trade Marks Act, the date of filing the application for registration.
As a result of those provisions, Ms Karlsson had no right to obtain relief for infringement before she was taken to be the registered owner of the trade mark on and from 3 August 2014.
Where, however, two trade marks that are substantially identical or deceptively similar have been registered by more than one person, s 23 of the Trade Marks Act provides that:
"the registered owner of any one of those trade marks does not have the right to prevent the registered owner of any other of those trade marks from using that trade mark except to the extent that the first‑mentioned owner is authorised to do so under the registration of his or her trade mark".
In the present case, there was no suggestion or indication that either one of Griffith University or Ms Karlsson was relevantly authorised for the purposes of s 23.
Infringement is dealt with in s 120 of the Trade Marks Act which relevantly provides:
"(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to … services in respect of which the trade mark is registered.
…
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
…
(c) services of the same description as that of services ("registered services") in respect of which the trade mark is registered; or
…
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion."
[5]
False or misleading representations causes of action
The only pleading in relation to "False and Misleading representations" in the proposed further amended statement of claim appears to be:
"Defendant caused commercially misleading conduct by using two slogans as trade mark Know more. Do more. , and Remarkable"
In order for a pleading to disclose a cause of action for false or misleading representations under s 29 of the Australian Consumer Law, it must:
1. identify each representation that was allegedly made, when it was made and by whom it was made;
2. set out the facts and circumstances which support the allegation that the representation was, or is to be taken to have been, made by the defendant; and
3. set out the facts and circumstances which gave the representation its deceptive and misleading character at the time it was made: McKellar v Container Terminal Management Services Ltd [1999] FCA 1101 at [25]; (1999) 165 ALR 409.
The proposed further amended statement of claim failed to do this. No specific representations by Griffith University were alleged in that document. Nor was there any pleading of the circumstances which might support the allegation that "using two slogans as trade mark Know more. Do more. , and Remarkable" was false or misleading. Thus, the proposed further amended statement of claim failed to disclose a reasonable cause of action in relation to false or misleading representations.
Once again, there were also no facts and circumstances set out which could support the allegation that Ms Karlsson suffered the loss and damage referred to in the proposed further amended statement of claim were caused by the University making any false and misleading representations as alleged.
[6]
Conclusion on failure to disclose reasonable causes of action
Accordingly, since Ms Karlsson's proposed further amended statement of claim failed to disclose any reasonable causes of action, I shall not grant leave to file it.
[7]
Embarrassing pleading
Although I acknowledge that Ms Karlsson's first language is not English and I have made allowances for that, the proposed further amended statement of claim was in part unintelligible, in part ambiguous, and generally so imprecise in its identification of material factual allegations as to deprive the University of proper notice of the real substance of the claims made against it.
For example, the following allegations were entirely unclear as to what they meant and how they might be relevant to the causes of action apparently relied upon:
1. "Defendant caused non-use non-remove under ( s) 92 from 14 September 2016";
2. "By reason of the matters pleaded in paragraph 8 that Plaintiff application delay to entre register under (s) 44";
3. "By reason of the matters pleaded in paragraph 9 with defendant cause the facts to Plaintiff advantage for business that trade mark regarded quantifiable asset may not have built up a significant reputation of in Plaintiff market; or a business diversion of trade mark and valuable of goodwill"; and
4. "By reason of the matters pleaded in paragraph 2, 3, 9 an after owner register trade mark on 31 October 2018 all establish infringement with defendant third-party commissioned any potential defences, the defendant using sing as trade mark Know more. Do more., in Australia and sign using is substantially identical to the registered trade mark owner".
Griffith University and the Court were left in the position where they could only speculate on what the pleader was attempting to allege.
The proposed further amended statement of claim does not perform the function required of a pleading in this Court.
For these reasons, I am satisfied that the proposed pleading is embarrassing, in the technical sense explained above, and leave to file it should not be granted.
[8]
Conclusion on leave to file
For all of these reasons and having regard to other defects in the proposed pleading, I propose to refuse leave to Ms Karlsson to file the proposed further amended statement of claim.
[9]
Remainder of Ms Karlsson's notice of motion
The remainder of Ms Karlsson's notice of motion effectively sought orders by way of final, substantive relief in the proceedings. This was misconceived. She did not seek summary judgment nor would it be appropriate to grant summary judgment in her favour in any event. In the present case, final orders could only properly be made after Ms Karlsson had adequately pleaded her case and after there had been a hearing on all relevant issues. In these circumstances, the remainder of Ms Karlsson's notice of motion should be dismissed.
[10]
Summary dismissal application
By its notice of motion filed on 2 December 2019, Griffith University sought orders to the effect that:
1. the proceedings be dismissed pursuant to rr 12.7 and 13.4(1) of the UCPR; and
2. Ms Karlsson not be allowed to file any further initiating process or commence proceedings in respect of the substance of these proceedings without leave of the Court and conditional upon her paying the costs of the proceedings.
Since this matter can be disposed of without considering r 12.7 concerning dismissal of proceedings for want of due despatch, I shall deal only with the application of r 13.4.
[11]
Relevant provisions of the UCPR and principles
Rule 13.4 provides:
"13.4 Frivolous and vexatious proceedings …
(1) If in any proceedings it appears to the court that in relation to the proceedings generally or in relation to any claim for relief in the proceedings -
(a) the proceedings are frivolous or vexatious, or
(b) no reasonable cause of action is disclosed, or
(c) the proceedings are an abuse of the process of the court,
the court may order that the proceedings be dismissed generally or in relation to that claim.
(2) The court may receive evidence on the hearing of an application for an order under subrule (1)."
The general principles to be applied when considering an application for summary dismissal on grounds such as those in r 13.4(1) include:
1. a case must be very clear indeed to justify the summary intervention of the court to prevent a plaintiff submitting the case for determination in the appointed manner by the court and once it appears that there is a real question to be determined, whether of fact or law, and that the rights of the parties depend upon it, then proceedings should not be dismissed as frivolous and vexatious and an abuse of process: Dey v Victorian Railways Commissioners (1949) 78 CLR 62 (Dey) at 91 (Dixon J); [1949] HCA 1;
2. there will be a "real question" unless the defendant can show that it was so certain that the question must be answered in the defendant's favour that it would amount to an abuse of the process of the court to allow the action to go forward for determination: Dey at 90; Spencer v Commonwealth of Australia (2010) 241 CLR 118; [2010] HCA 28 (Spencer) at [54] (Hayne, Crennan, Keifel and Bell JJ);
3. in substance, the test to be applied is that the case of the plaintiff must be so clearly untenable that it cannot possibly succeed: General Steel Industries Inc v Commissioner of Railways (NSW) (1964) 112 CLR 125 at 130 (Barwick CJ); [1964] HCA 69; and
4. as a result, exceptional caution should be exercised and demonstrated certainty of the outcome of the litigation is required before proceedings are summarily dismissed under r 13.4(1): Spencer at [55]; Perera v Genworth Financial Mortgage Insurance Pty Ltd (2017) 94 NSWLR 83; [2017] NSWCA 19 at [30] (Leeming JA).
Nonetheless, it has been held that where "the processes and procedures of the court, which exist to administer justice with fairness and impartiality, may be converted into instruments of injustice or unfairness", a proceeding should be stayed or dismissed: UBS AG v Tyne [2018] HCA 45 at [126] (Gordon J); (2018) 92 ALJR 968.
[12]
Should the proceedings be dismissed?
Ms Karlsson's attempts at pleading her case, thus far, have all been unsuccessful. The first was apparently rejected by the registry on about 24 July 2019. Adamson J struck out the second attempt on 1 October 2019 and I propose to refuse leave to file the third attempt for the reasons set out above.
During the hearing Ms Karlsson was given a choice:
"You have a choice. You can try to convince the court that the problems that I have tentatively identified are not problems and you should be allowed to file this document, or you can seek to file a new document which is properly expressed and contains all the necessary allegations of material fact and explanations of law."
Eventually, Ms Karlsson did not take up the opportunity to seek to file a new document because, as she explained:
"I have contacted legal advisers, more than 10. I have spent a lot of money, but when they heard this is against Griffith University, they said; no, it has a lot of money. They don't want to deal with it. That is why I have to do it on my own."
The documentary evidence provided by Ms Karlsson established that she had sought legal assistance on ten or more occasions between about February and September 2019. In addition, Ms Karlsson spent not insignificant sums of money obtaining registration of her trade mark and the preparation of her business case.
Having regard to all of the documentation prepared by Ms Karlsson that was before me, I am satisfied that, without professional legal assistance, Ms Karlsson will never be able to formulate a pleading that satisfies the requirements of the UCPR and fulfils the function of a pleading to inform the other party of the case that is to be met. Furthermore, from her response referred to above and her conduct of the proceedings, I understood that Ms Karlsson was not willing to seek:
1. professional legal advice as to whether there were causes of action reasonably available to her which could be properly pleaded; and
2. if so, professional legal assistance to prepare a properly pleaded statement of claim.
This being so, I concluded that there was no reasonable prospect of these proceedings being successfully prosecuted by Ms Karlsson. In that sense, they can be seen as frivolous.
I am confirmed in this view by the comments of the Victorian Court of Appeal in Karam v Palmone Shoes Pty Ltd [2012] VSCA 97 at [36] (Nettle and Osborn JJA):
"…A self-represented litigant cannot be allowed forever to stand behind the shield of his [sic] own ignorance; especially when it [sic] continues to subject other parties to cost and inconvenience and to add pointlessly to the load on the court's already limited resources. There comes a point at which a self-represented litigant must be required to take responsibility for his [sic] choices…"
[13]
Other matters
I was confirmed in my view that the proceedings should be dismissed on the bases referred to above, having regard to the additional documents provided by Ms Karlsson, which became exhibits B, C and D.
[14]
Exhibit B - "Summarizing"
An indication of the nature of this document can be discerned from the first three paragraphs which stated:
"1. Plaintiff pursuant to court order relief of claim $2,632,982.00 AUD
2. Plaintiff pursuant to the whole following order made by Justice Adamson J Be annulled date of order 01 October 2019, the decision below and paragraph 8 Jurisdiction do not to deal with costs orders made be annulled
3. An order for loss of time, an opportunity, suffers pursuant relevant
3.1 Australian consumers law Act 2010
3.2 Trade mark Act 1995 section 44, section 92, section 120(1), (3a), section 124, section 126 section 84a, section 84b, section 31
3.3 Trade mark dilution law Act 1995
3.4 Further or alternatively equitable on investment advertising
3.5 Further or alternatively equitable on account of profit
3.6 The amount claims payable within 3 business date, the date of Judgment
3.7 To destroy and remove overall previous advertising in publication and establish world-wide with third-party and internet home-page within 14 date, the date of Judgment".
There followed various paragraphs which contained further confused material.
[15]
Exhibit C - "Defence"
This document was headed "Defence" and appeared to contain Ms Karlsson's paragraph by paragraph responses to Adamson J's judgment of 1 October 2019. For most of the paragraphs of the judgment, Ms Karlsson said that she "denies the allegations" in the paragraph and then provided some further confused information or argument. The same approach was also taken to respond to paragraphs in "Defendant notice of motion filed 02 December 2019".
At the end of the "Defence", there was an "affidavit verifying" by Ms Karlsson sworn on 29 January 2020 which stated:
"2 I believe that the allegations of fact contained in the defence are true.
3 I believe that the allegations of fact that are denied in the defence are true."
[16]
Exhibit D - "Trade mark: infringing efforts to mint profits"
The document headed "Trade mark: infringing efforts to mint profits" appeared to contain a confusing summary of Ms Karlsson's case. In the first part of the document, she repeated her claim for $2,632,982.00 AUD and that "the whole following order made by Justice Adamson J be annulled", then she appeared to identify the Australian Competition and Consumer Act 2010 and ss 84A, 84B and 84C, 44, 31, 120, 127 and 126 of the Trade Marks Act 1995 as bases for her claims.
In the next part of the document, Ms Karlsson was apparently responding to the University's submissions and asserted, among other things, that "defendant infringe a trade mark at a time effect of which is after defendant trade mark was cancellation from 20 August 2018".
In the last part of the document headed "This dissemble the case behind -the- scenes of trade mark", Ms Karlsson explained how she had created the slogan but it was stolen at Fitness First on the Gold Coast in 2011. Later the University applied to register the trade mark, as did another person who used it in the United States. Subsequent events were recounted. It was then concluded:
"These are all evidence of steal slogan with business plain on (USB) storage from Plaintiff bag, and forward for registered trade mark, Plaintiff confident that's crime
All the Plaintiff relief of claim for economic loss, damages, suffer, loss of time and bulling harassment continue".
[17]
Costs
Griffith University sought an order that Ms Karlsson pay the defendant's costs of the proceedings on the ordinary basis.
Section 98 of the Civil Procedure Act 2005 (NSW) provides the Court with a wide discretion in relation to costs in a matter such as this. The general rule is that costs follow the event, as provided in the Uniform Civil Procedure Rules r 42.1. The event, being the practical result of the hearing of the two notices of motion, is that Griffith University has been successful.
There are no circumstances that were brought to my attention which would render it inappropriate to order Ms Karlsson to pay the costs of the proceedings, including the costs of the two motions and all interlocutory steps, in addition to the costs which have already been ordered to be paid.
An order for the payment of costs forthwith is not required as the proceedings are to be dismissed and will consequently be concluded.
[18]
Should Ms Karlsson's commencement of further proceedings be subject to leave?
As noted above, Griffith University sought a further order:
"That the Plaintiff may not file any further initiating process or commence proceedings in respect of the subject matter of these proceedings without leave of the Court, and conditional upon the Plaintiff paying the Defendant's costs of the proceedings."
In the written submissions provided on behalf of Griffith University, this order was not addressed. In the proposed form of orders provided at the end of the hearing, however, an order to this effect was included.
No submissions were addressed to the nature and extent of the Court's power to impose such a leave condition and I do not propose to address that issue, since I am of the view that it would be inappropriate, in any event, to order that the plaintiff could not commence further proceedings concerning the subject matter of these proceedings without leave of the Court.
If Ms Karlsson were to file a new statement of claim and it did not advance a different case from that which was put forward in the amended statement of claim or proposed further amended statement of claim relied on in these proceedings, the new proceedings would be liable to be dismissed as an abuse of process: Jeffery & Katauskas Pty Ltd v SST Consulting Pty Ltd (2009) 239 CLR 75 at [27(d)] (French CJ, Gummow, Hayne and Crennan JJ); [2009] HCA 43. If she were required to obtain leave, there would still be a need for a hearing of that leave application. In either case, Griffith University would be required to incur the expense of dealing with an application, the substance of which would be the same. Thus, the University would be in no better position if the order requiring leave was made.
If, however, Ms Karlsson obtained appropriate professional legal advice and assistance and a viable statement of claim were able to be formulated that disclosed a reasonable cause of action, I can see no reason why she should be impeded from commencing such proceedings by the requirement to obtain leave.
As to making commencement of new proceedings conditional on the payment of costs, I accept that Griffith University has been put to considerable expense and inconvenience as a result of the present proceedings which I have found are frivolous and vexatious and involve an abuse of process. In my view, fairness and justice would generally require that, if a viable statement of claim disclosing a reasonable cause of action were able to be formulated on Ms Karlsson's behalf, she should not be entitled to prosecute new proceedings without first paying Griffith University's costs that have been incurred because of the defective and unsatisfactory nature of these original proceedings.
[19]
Orders
For all of these reasons, the orders of the Court are:
1. Leave to file the proposed further amended statement of claim dated 21 October 2019 is refused.
2. Pursuant to r 13.4(1) of the Uniform Civil Procedure Rules 2005 (NSW), the proceedings are dismissed.
3. The plaintiff is to pay the defendant's costs of and incidental to the proceedings, in addition to the costs ordered to be paid by Adamson J on 1 October 2019, on the ordinary basis as agreed or assessed.
4. The plaintiff's amended notice of motion filed on 10 December 2019 and the defendant's notice of motion filed on 2 December 2019 are otherwise dismissed.
[20]
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: 07 April 2020
SA & Anor v Zhang (2002) 210 CLR 491; [2002] HCA 10
Ridgeway v the Queen (1995) 184 CLR 19; [1995] HCA 66
Rogers v The Queen (1994) 181 CLR 251; [1994] HCA 42
Spencer v Commonwealth of Australia (2010) 241 CLR 118; [2010] HCA 28
Szanto v Bainton [2011] NSWSC 985
UBS AG v Tyne [2018] HCA 45; (2018) 92 ALJR 968
Williams v Spautz (1992) 174 CLR 509; [1992] HCA 34
Category: Principal judgment
Parties: Annika Karlsson (Plaintiff)
Griffith University (Defendant)
Representation: Plaintiff in person
Procedural history
On 24 July 2019, the plaintiff, Ms Karlsson, apparently attempted to file a document described as a statement of claim but it was not in proper form. On 31 July 2019, she filed a document entitled "Amended Statement of Claim" commencing the proceedings, which in essence involved a claim for damages based on allegations that the defendant, Griffith University, had infringed Ms Karlsson's trademark "Know more. Do More".
On 28 August 2019, Griffith University filed a notice of motion seeking that the amended statement of claim be struck out, together with related orders. That application was heard and determined on 1 October 2019. On that occasion, Adamson J made orders relevantly including the following (Karlsson v Griffith University [2019] NSWSC 1335 at [23]):
"(1) Pursuant to UCPR, r 14.28, the whole of the amended statement of claim filed on 31 July 2019 be struck out.
…
(3) The plaintiff to serve on the defendant a proposed further amended statement of claim (Proposed Further Claim) by 22 October 2019.
(4) The defendant is to provide to the plaintiff its response to the Proposed Further Claim, by indicating whether it consents or objects to the plaintiff filing the Proposed Further Claim, by 5 November 2019.
(5) In the event that the defendant consents to the filing of the Proposed Further Claim:
(a) the plaintiff has leave to file and serve the Proposed Further Claim by 12 November 2019;
(b) the defendant is to file and serve its defence to the Proposed Further Claim by 10 December 2019;
(c) the matter be listed before the Registrar for further directions on 12 December 2019.
(6) In the event that the defendant does not consent to the filing of the Proposed Further Claim:
(a) the plaintiff is to file and serve any notice of motion and supporting affidavit seeking leave to file the Proposed Further Claim by 19 November 2019;
(b) the defendant is to file and serve any affidavit in response by 3 December 2019;
(c) the plaintiff's notice of motion be set down for hearing on 10 December 2019.
…
(8) Order the plaintiff to pay the defendant's costs of, and incidental to, the defendant's notice of motion dated 28 August 2019 on the ordinary basis, to be assessed or agreed, and to be payable forthwith thereafter under UCPR, r 42.7(2).
…"
On 21 October 2019, in accordance with order 3 made by Adamson J, Ms Karlsson sent a proposed further amended statement of claim to the University by email.
On that same day, Griffith University's solicitors sent a letter by email to Ms Karlsson proposing that costs be agreed in the sum of $12,000.00 for the purposes of order 8 made by Adamson J.
On 23 October 2019, the solicitors for Griffith University responded to Ms Karlsson indicating that it objected to her filing the proposed further amended statement of claim and sought a response on the proposal concerning costs.
Leave to file the proposed further amended statement of claim was refused. The proceedings were dismissed under UCPR r 13.4(1). Karlsson was ordered to pay the University's costs of and incidental to the proceedings, in addition to the costs ordered on 1 October 2019, on the ordinary basis as agreed or assessed. The parties' notices of motion were otherwise dismissed.
In light of the wording of the proposed further amended statement of claim, it appears that Ms Karlsson is seeking to rely on:
1. s 120 of the Trade Marks Act 1995 (Cth) in relation to the claims described as "Trade mark infringing" in par 5 of the proposed further amended statement of claim; and
2. s 29 of the Australian Consumer Law in relation to the claims described as "False and Misleading representations" in par 5 of the proposed further amended statement of claim.
As to "embarrassment", Ward J (as her Honour then was) explained, in Szanto v Bainton [2011] NSWSC 985 at [107], that whether a pleading was "embarrassing" within the meaning of r 14.28(1):
"relates, in essence, to whether the pleading can serve the function of a pleading under the Rules - namely, in succinct fashion, to put the defendant properly on notice of the real substance of the claim made against it and to know what case it is that the defendant has to meet. Thus a pleading is embarrassing if it is unintelligible, ambiguous, or so imprecise in its identification of material factual allegations as to deprive the opposing party of proper notice of the real substance of the claim or defence".
Since Ms Karlsson's application for leave can be disposed of on the basis that it fails to disclose a reasonable cause of action and is embarrassing, it is not necessary to consider abuse of process at this point. I shall consider abuse of process when dealing with Griffith University's application.
As noted above, Ms Karlsson's proposed further amended statement of claim apparently attempts to raise two types of cause of action:
1. trade mark infringement; and
2. false or misleading representations.
Section 122, however, qualifies s 120 and provides in part:
"122 When is a trade mark not infringed?
(1) In spite of section 120, a person does not infringe a registered trade mark when:
…
(e) the person exercises a right to use a trade mark given to the person under this Act …"
Accordingly, in the present case, during the period when Griffith University was the registered owner of trade mark No. 1556369 and was entitled to exercise its rights conferred by s 20 of the Trade Marks Act, it would not have infringed Ms Karlsson's trade mark No. 1638546 by using its own trade mark as a trade mark. Griffith University's registration as owner of trade mark No. 1556369 was not cancelled until 20 August 2018.
In these circumstances and having regard to ss 20, 120 and 123, in order to disclose a reasonable cause of action in the requisite sense, it was essential for Ms Karlsson's pleading to identify, for each alleged infringement of her trade mark No. 1638546, the particular use or uses by Griffith University of a sign that was substantially identical with, or deceptively similar to, Ms Karlsson's trade mark at a time when Ms Karlsson was the registered owner of the trade mark and the University was not. Thus, the proposed amended statement of claim had to include, at least:
1. the date on which Griffith University used the words or "sign" "Know more. Do more."; and
2. the facts and circumstances supporting the allegations that:
1. Griffith University used the sign; and
2. used the sign "as a trade mark".
Ms Karlsson's proposed further amended statement of claim failed to do this. No specific, identified use on a specified date by Griffith University of a sign that was substantially identical with, or deceptively similar to, Ms Karlsson's trade mark was alleged in that document. Nor were any facts and circumstances alleged to support an allegation that it was the University that used the trade mark on the relevant occasion or that the sign was used as a trade mark. Thus, the proposed pleading failed to disclose a reasonable cause of action in relation to trade mark infringement.
It can also be noted here that there was no clear pleading of how any alleged particular infringement led to Ms Karlsson suffering the loss and damage mentioned in her proposed further amended statement of claim.
In addition, although ss 92 and 44 of the Trade Marks Act are referred to in the proposed further amended statement of claim, these sections do not assist to remedy the gaps or deficiencies in her pleading of the infringement causes of action. Nor is it apparent that they give rise to any other relevant cause of action in the present case. Section 44 deals with situations where the Registrar must reject an application for registration of a trade mark, including where there is an existing registered trade mark, with an earlier priority date, that is substantially identical with the trade mark for which registration has been applied in respect of similar services. Section 92 permits a person to apply for removal of a trade mark from the Register for, among other things, non-use.
The concepts included in r 13.4(1) are not necessarily distinct and they tend to overlap.
"Frivolous" in this context includes proceedings that a plaintiff has no reasonable prospects of successfully prosecuting or that are untenable, groundless or faulty: Spencer at [59]. Proceedings which are foredoomed to fail, and "frivolous" in that sense, include proceedings where no reasonable cause of action is disclosed.
"Vexatious", in this and similar contexts, refers to proceedings that are productive of serious and unjustified trouble or harassment: Regie Nationale des Usines Renault SA & Anor v Zhang (2002) 210 CLR 491; [2002] HCA 10 at [25] (Gleeson CJ, Gaudron, McHugh, Gummow and Hayne JJ).
Further, frivolous or vexatious proceedings can also be instances of proceedings that are an abuse of process: Walton v Gardiner (1993) 177 CLR 378 at 393 (Mason CJ, Deane and Dawson JJ); [1993] HCA 77.
In Ridgeway v the Queen (1995) 184 CLR 19; [1995] HCA 66 at [32], Gaudron J explained at 74-5:
"The powers to prevent an abuse of process have traditionally been seen as including a power to stay proceedings instituted for an improper purpose, as well as proceedings that are 'frivolous, vexatious or oppressive'. This notwithstanding, there is no very precise notion of what is vexatious or oppressive or what otherwise constitutes an abuse of process. Indeed, the courts have resisted, and even warned against, laying down hard and fast definitions in that regard. That is necessarily so. Abuse of process cannot be restricted to 'defined and closed categories' because notions of justice and injustice, as well as other considerations that bear on public confidence in the administration of justice, must reflect contemporary values and, as well, take account of the circumstances of the case. That is not to say that the concept of 'abuse of process' is at large or, indeed, without meaning. As already indicated, it extends to proceedings that are instituted for an improper purpose and it is clear that it extends to proceedings that are 'seriously and unfairly burdensome, prejudicial or damaging' or 'productive of serious and unjustified trouble and harassment'." (footnotes omitted)
There are three common categories of abuse of process:
1. where the court's procedures are invoked for an illegitimate purpose;
2. where the court's procedures are used in a manner unjustifiably oppressive to one of the parties; or
3. where the use of the court's procedures would bring the administration of justice into disrepute,
The Council of Trinity Grammar School v Anderson [2019] NSWCA 292 at [424] (Bathurst CJ) citing McHugh J in Rogers v The Queen (1994) 181 CLR 251 at 286; [1994] HCA 42.
There will be an improper purpose for bringing the proceedings if the purpose is not to prosecute them to a conclusion but to use them as a means of obtaining some advantage for which they are not designed or some collateral advantage beyond what the law offers. But, where the purpose of the party bringing the proceedings is to bring about a result for which the law provides in the event that the proceedings terminate in that party's favour, there will be no abuse of process, even if there is an ulterior purpose which is outside the scope of what the law provides: Williams v Spautz (1992) 174 CLR 509 (Williams v Spautz) at 526-7.
It is sufficient if the improper purpose is the predominant but not the only purpose of the party concerned: Williams v Spautz at 529.
The difficulty in applying these principles concerning abuse of process by way of proceedings pursued for an improper purpose is illustrated by Dowling v Colonial Mutual Life Assurance Society Ltd (1915) 20 CLR 509. In that case, the Society had taken an assignment of a debt owed by Dowling. Non-payment of the debt gave rise to an act of insolvency. The Society petitioned for the sequestration of Dowling but it did so because it wanted Dowling to be publicly examined so that it could discover the names of the persons who had caused him to publish defamatory material about it. Isaacs J said at 524:
"Now, in the present ease, there is no doubt the petitioning creditor wishes to use the process - that is, to attain by its means the very object for which it is designed by law, namely, sequestration, and this, notwithstanding there is a desire to use the sequestration afterwards for a certain purpose. But that subsequent purpose can only be reached, and is only intended by the creditor to be reached, if reached at all, by the act of the Court itself in compelling an answer to the questions put. …. If the facts had been different, if, for instance, it had been shown that the Society had simply threatened Dowling that unless he did what they had no right to demand from him, namely, give up certain names, they would proceed to sequestration, and they had proceeded accordingly, there would have been in law an abuse of the process.
But nothing of that kind took place. The Society did not make any demand upon Dowling; they broke no contract; they were guilty of no fraud; they have not threatened or attempted to deprive him of any right: they have, in short, done nothing illegal or inequitable, or created any relation which could be regarded in a Court of equity, or elsewhere, as a defence to their claim to exercise the statutory right of petition. All that can be said is, at most, that the power to inquire as to any persons behind him with respect to the pamphlet is not contemplated by the Insolvency Act. If so, they would not obtain the information. But the desire to get the information is no breach of law or equity. The minute found in their books was no overt act; it was merely a record of what I may term the internal resolution of the Society, which affected no one but themselves, and created no right in Dowling.
The line of law between the two classes of cases is clear, though the facts are not always easy to delimit."
Where there is a lack of reasonable grounds for bringing proceedings manifested by a failure to disclose a reasonable cause of action, and this leads to the proceedings being seriously and unfairly burdensome and productive of unjustified trouble and harassment, then these factors may tend, if there is also evidence of apparently unjustified demands for significant amounts by way of compensation, to indicate that the proceedings have been brought for an improper purpose and are an abuse of process.
Moreover, if Ms Karlsson were permitted to continue to prosecute the proceedings, Griffith University would be put to considerable expense in: attempting to discern what case it should meet and attempting to meet that case or some other case that Ms Karlsson might subsequently seek to put. If the University could not discern a case, it would be put to the expense of making a further application or applications to have the case dismissed summarily. Being required to incur expenses in those circumstances would involve substantial detriment to the University, beyond what is inherent in defending proceedings generally, as well as unfairness and injustice. Thus, in my view the proceedings should properly be characterised as vexatious.
Furthermore, I was troubled by the inconsistency between the circumstances in which Ms Karlsson obtained the University's consent to the registration of her trade mark and her subsequent demands to the University for compensation for alleged infringement of her trade mark or for purchase of that trade mark, especially as no clear justifiable basis for those demands was or has been established.
Griffith University provided its consent to registration of Ms Karlsson's trade mark and applied for cancellation of its trade mark, on the basis of the assurances contained in Baxter IP's letter, which has been quoted above, and because it did not intend to use that trade mark after that time.
Ms Karlsson's subsequent letters, commencing with the letter of 25 April 2019, alleged continued use by Griffith University of the trade mark "[o]n Internet clearly showing the Griffith University continuing use. Trademark during in period that I has owner of the Trademark".
Ms Karlsson, in exhibit A, provided examples of this purported use which included results of internet searches such as "know more do more griffith university" using the Google search engine. The results of such searches showed documents and other material apparently produced by the University, some with dates indicating that it was produced when Griffith University was the registered owner of the trade mark in question or before, and some with no obvious date. None of the results demonstrated unequivocally that the University had used the trade mark as a trade mark after cancellation of its registration.
In addition, the terms of Ms Karlsson's letter of 25 April 2019, and the letters that followed, were somewhat extraordinary and the phraseology appeared to be copied from other letters. Although she was writing on her own behalf, she purported to have "instructions" to put certain propositions and she wrote of settling a "matter". For example, her letter of 25 April 2019 included the following:
"We are instructed that this has cause considerable confusion in the market and for potential customers.
…
I have instructions to attempt to settle of matter in one of two ways.
1. The Griffith University immediately cease using the trademark and compensate for losses, which are estimate to be approximately $200,000.00 to date OR
2. The Griffith University purchase the trademark NO MORE. DO MORE. for use with legitimate, rightful, legal.
If Griffith University wishes to purchase the trademark please provide a suggest price."
This letter, and later letters, in my view, contained the implicit threat that if Griffith University did not agree to settle the "matter", Ms Karlsson would commence proceedings.
In later letters, the compensation sought increased, over a short period of time, from the initial sum of $200,000.00 to $500,000.00 and then $800,000.00, without any credible justification for the amount initially sought or the subsequent increases being given.
From this material, it appeared to me that Ms Karlsson was effectively seeking to obtain compensation for alleged infringements which were unlikely to have occurred, by settling a "matter" in respect of which proceedings had not then been commenced and where the amount of compensation sought was arbitrarily determined and increased without any obvious basis.
The proceedings were commenced in July 2019 but:
1. $2,000,000.00 was sought by way of damages, equitable compensation or an account of profits;
2. no real question to be tried and no reasonable cause of action were identified by Ms Karlsson in her original pleading or in her proposed further amended statement of claim;
3. Ms Karlsson did not obtain professional legal assistance properly to plead her claims and was apparently unwilling to do so now; and
4. the evidence before me did not indicate that there was likely to be any substance to Ms Karlsson's claims of infringement made in her correspondence with the University.
Thus, in my view, there are no reasonable prospects of Ms Karlsson successfully prosecuting the proceedings and yet Griffith University has been and will be required to expend time and resources in dealing with these proceedings, if they are permitted to continue.
As a result, I am satisfied that Ms Karlsson's continuing to prosecute these proceedings involves an abuse of process.
In all these circumstances, the proceedings should be dismissed under r 13.4(1) of the UCPR, on the basis that they are frivolous, vexatious and involve an abuse of process.
In light of this conclusion, it is not necessary to deal with whether the proceedings should be dismissed for want of due dispatch under UCPR r 12.7, although it can be noted that, if the proceedings were not liable to be dismissed under r 13.4, I would not have been minded to dismiss them under r 12.7.
Indeed, it could be seen as an abuse of process if Ms Karlsson sought to prosecute new proceedings concerning the same subject matter without having paid the costs ordered to be paid in relation to these, original proceedings. This is the principle which underlies r 12.4 of the UCPR.
One way in which this problem can be addressed is that, if Ms Karlsson commenced new, viable proceedings before she had paid the University's costs of these proceedings, a stay of those new proceedings could be sought in the inherent jurisdiction of the Court: Phillip Morris Ltd v Attorney General of Victoria (2006) 14 VR 538; [2006] VSCA 21 at [97] (Maxwell P); Patrick Jebb as trustee for the Trafalgar West Investments Trust v Superior Lawns Australia Pty Ltd [2019] WASC 121 at [144]-[161].
I was not directed to any authority which established, however, that instead of a stay of the new proceedings, the potential abuse of process could be dealt with by way of an order prohibiting a plaintiff from commencing new proceedings concerning the same subject matter as the original proceedings if the costs ordered in respect of those proceedings had not been paid.
In my view such an order should not be made for at least two, related reasons. First, if the costs were not paid because of something beyond the control of the plaintiff or it was otherwise inappropriate to require the costs to have been paid because of circumstances at the time the plaintiff sought to commence the new proceedings, the order could work an injustice. Secondly, such an order could be used to prevent a plaintiff ever recommencing proceedings by, for example, a defendant failing to take steps to have the costs assessed so that the amount of the costs payable was never determined.
On 31 October 2019, Griffith University's solicitors again enquired concerning the costs proposal and whether Ms Karlsson intended "to engage with" them on that question. If not, it was stated that instructions would be sought from the University to proceed with an assessment of costs. That same day, Ms Karlsson responded by email saying, among other things:
"I do not agree with any an amount ; because Plaintiff do not loss the case and also Defendant do not win the case?"
On 1 November 2019, the University's solicitors responded to Ms Karlsson, made some comments concerning the costs ordered to be paid by Adamson J and reiterated the effect of Adamson J's order 6. In addition, the solicitors said that they "strongly suggest that you seek legal advice in relation to this matter generally …".
On 18 November 2019, Ms Karlsson filed and served a notice of motion, which was within the time specified in order 6(a) of Adamson J's orders. The orders sought in that notice of motion were not, however, as envisaged in order 6(a). The orders sought by Ms Karlsson appeared to be the final relief she was seeking in the substantive proceedings. They were as follows:
"1. Plaintiff pursuant to court order relief of claim $2,000,000.00 AUD
2. An order for damages loss suffers pursuant to:
2.1 Australian consumers Law Act 2010
2.2 Trade mark Act1995 section 92, section 124, section 126
2.3 Trade mark dilution law Act 1995
2.4 Further or alternatively equitable an account of profits"
In addition, the notice of motion of 18 November 2019 contained a number of allegations or submissions under the repeated headings "Fact" and "Law" which appeared to be a summary of aspects of her substantive case.
On 2 December 2019, Griffith University filed a notice of motion seeking orders that most relevantly included:
1. the proceedings be dismissed pursuant to Uniform Civil Procedure Rules 2005 (NSW) (UCPR) rr 12.7 and 13.4(1); and
2. Ms Karlsson not be allowed to file any further initiating process or commence proceedings in respect of the substance of these proceedings without leave of the Court and conditional upon her paying the costs of the proceedings.
Both applications came on before Lonergan J on 10 December 2019, on which occasion her Honour granted leave to Ms Karlsson to file an amended notice of motion which included a new prayer for relief:
"1A Leave to file the further amended statement of claim, dated 21 October 2019."
Her Honour then set a timetable for the filing and service of further evidence and listed both Ms Karlsson's amended notice of motion and Griffith University's notice of motion for hearing on 14 February 2020.
Both notices of motion came on for hearing before me on 14 February 2020.