Karlsson v Griffith University - [2020] NSWSC 365 - NSWSC 2020 case summary — Zoe

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Karlsson v Griffith University

[2020] NSWSC 365

Supreme Court of NSW|2020-02-14|Before: Wright J, Adamson J

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At a glance

Source facts

Court

Supreme Court of NSW

Decision date

2020-02-14

Before

Wright J, Adamson J

Source

Original judgment source is linked above.

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.

[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"
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.

[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).
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.

[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."
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.

[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.
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.

[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…"
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.

[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.
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.

Parties

Applicant/Plaintiff:

Karlsson

Respondent/Defendant:

Griffith University

Legislation Cited (5)

Australian Consumer Law Trade Marks Act 1995(Cth)

Uniform Civil Procedure Rules 2005(NSW)

Civil Procedure Act 2005(NSW)

Competition and Consumer Act 2010(Cth)

Trade Marks Act 1995(Cth)

Cases Cited (38)

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.