Karlsson v Griffith University

RARES J: 1 The applicant, Annika Karlsson, has applied for leave to appeal from (and to stay) the orders of the primary judge that the proceeding below be dismissed with costs and summary judgment be entered in favour of the respondent, Griffith University. Her Honour also dismissed Ms Karlsson's interlocutory application seeking default judgment against the University for its failure to file a defence, notwithstanding that her Honour had not required it to do so in light of the pendency of the University's application for summary dismissal.

Background 2 Ms Karlsson sought relief in her originating application, supported by a statement of claim, that were largely unintelligible. She sought orders under the Trade Marks Act 1995 (Cth) and under s 236 of the Australian Consumer Law in Sch 2 of the Competition and Consumer Act 2010 (Cth) against the University in respect of its past use of the trade mark, "Know More, Do More" (the mark). The University had been the registered owner of the mark in class 41 (education services) until 2018 when it obtained cancellation of its registration so that Ms Karlsson could become its registered owner, as she did, and then could use it. 3 Ms Karlsson claimed that she had previously owned the mark before the University. It had become registered as its owner on 21 November 2014, with a priority date of 10 May 2013 (being the date of its application for registration). The University had commenced using the mark on 14 August 2011. In 2016, the University embarked on a new marketing campaign using the slogan "Be Remarkable" and, by 2018, had ceased to employ the "Know more, do more" mark. 4 Ms Karlsson's complaint was that, in effect, the University should have removed past images of its prior use of the mark that remain accessible on the internet, that were uploaded before it ceased to be its registered owner, despite, as the primary judge found, its entitlement to do so under s 124 of the Trade Marks Act. 5 The proceeding below came about after Ms Karlsson had previously sued the University on essentially the same claims in the Supreme Court of New South Wales. She accepted that the claims were essentially the same before the primary judge and today.

The proceedings in the Supreme Court 6 On 7 April 2020, Wright J summarily dismissed Ms Karlsson's claim in the Supreme Court: Karlsson v Griffith University [2020] NSWSC 365. His Honour found that Ms Karlsson had not pleaded, in an intelligible manner, any of the claims which she sought to make. He considered the third version of her statement of claim in some detail in his reasons and explained why Ms Karlsson's pleading was defective. Earlier, Adamson J had struck out the previous version of the statement of claim but granted Ms Karlsson leave to apply for an order that she be allowed to file the further amended statement of claim, the subject of Wright J's decision. His Honour gave clear explanations as to why that document did not plead an intelligible claim in accordance with principles of pleading, which she could have used (but did not) in formulating the fourth version of her statement of claim, that she relied on before the primary judge. 7 His Honour found that, unless she had professional assistance, having regard to all of the material before him, including Ms Karlsson's statements to him, she would never be able to formulate a pleading that satisfied the requirements of the pleading rules in the Supreme Court and fulfilled the function of informing the University of the case that it had to meet. His Honour found that Ms Karlsson was not willing to seek professional legal advice as to whether there were causes of action reasonably available to her which could be properly pleaded, and if so, to use such assistance to prepare a properly pleaded statement of claim. In those circumstances, given the multiple deficiencies in the pleading, his Honour found that there was no reasonable prospect that her proceeding could be successfully prosecuted and that, accordingly, it was frivolous. He dismissed the Supreme Court proceeding as an abuse of process. 8 Ms Karlsson sought filed a summons for leave to appeal in the Court of Appeal of the Supreme Court. It dismissed the summons for want of jurisdiction, since an appeal under the Trade Marks Act must be brought to a Full Court of this Court pursuant to s 7(5) of the Jurisdiction of Courts (Cross-Vesting) Act 1987 (Cth) and the Schedule to that Act: Karlsson v Griffith University (2020) 103 NSWLR 131. Their Honours made no order as to costs on the basis that the Court itself had raised the jurisdictional point. 9 In the meantime, the University proceeded to have the costs that Wright J and Adamson J ordered against Ms Karlsson, assessed in accordance with the costs assessment procedures applicable in New South Wales. 10 On 10 February 2021, the High Court refused Ms Karlsson special leave to appeal from the decision of the Court of Appeal: Karlsson v Griffith University [2021] HCASL 12. 11 On 16 April 2021, the University obtained a judgment in the sum of $63,552.80 in the Local Court of New South Wales against Ms Karlsson in respect of the assessments of the costs orders which the Supreme Court judges had made against her.

The proceedings before the primary judge 12 Ms Karlsson then turned to this Court, in October 2021, and began the proceeding, the subject of this application. The primary judge gave detailed, cogent and correct reasons for finding, first, that the proceeding was an abuse of process because it was seeking to relitigate the same claim that Wright J had summarily dismissed, secondly, Ms Karlsson's statement of claim was hopelessly defective so as to amount to it being oppressive or vexatious and, thirdly, were the proceeding not to be summarily dismissed, the statement of claim should be struck out and Ms Karlsson should not have leave to re-plead for essentially the same reasons as Wright J found. Her Honour found that Ms Karlsson would not be able to formulate a coherent pleading that complied with the Federal Court Rules 2011 as to pleading any more than she was able or willing to do so in the Supreme Court, and she still was not willing to engage a lawyer to assist her to do so.

Consideration 13 A decision summarily dismissing a proceeding on the ground that it is an abuse of process is interlocutory: Re Luck (2003) 203 ALR 1 at 4 [9]-[10] per McHugh ACJ, Gummow and Heydon JJ. Leave to appeal is necessary under s 24(1D)(b) of the Federal Court of Australia Act 1976 (Cth) if a proceeding is summarily dismissed under s 31A, as Ms Karlsson's was. 14 The principles that govern the grant of leave to appeal are well established. An applicant for leave must, first, establish that the decision in question is attended with sufficient doubt to warrant the grant of leave and, secondly, substantial injustice would result from a refusal for leave to appeal: Bienstein v Bienstein (2003) 195 ALR 225 at 231 [29] per McHugh, Kirby and Callinan JJ. 15 In Walton v Gardiner (1993) 177 CLR 378 at 393, Mason CJ, Deane and Dawson JJ said: proceedings before a court should be stayed as an abuse of process if, notwithstanding that the circumstances do not give rise to an estoppel, their continuance would be unjustifiably vexatious and oppressive for the reason that it is sought to litigate anew a case which had already been disposed of by earlier proceedings (See, eg, Reichel v Magrath (1889) 14 App Cas 665 at 668; Connelly v Director of Public Prosecutions [1964] AC 1254 at 1361-1362. (emphasis added) 16 Ms Karlsson filed the application for leave to appeal one day out of time because of a misunderstanding, which, the University accepted should not stand in the way of granting her leave to appeal, were she otherwise able to demonstrate a basis on which that should be granted. 17 Here, as Ms Karlsson accepted, she was seeking to relitigate, in her substantively identical proceeding before the primary judge, the same claims that Wright J summarily dismissed. 18 Her Honour was correct to dismiss the proceeding below as an abuse of process and to give the University summary judgment. The primary judge thoroughly analysed Ms Karlsson's claims. She found that they were substantially the same as those in the Supreme Court. 19 Her Honour then proceeded to explain why, in any event, the claims were so badly pleaded that they had no reasonable prospect of succeeding, although she did not need to do so, as she stated. I see no error in any of her Honour's analysis. It was, on the material before me, entirely correct. 20 Ms Karlsson put again to me, in support of her claims on the application for leave, the same submissions that both Wright J and the primary judge had rejected as untenable. For example, she contended that the University had infringed the mark, notwithstanding that at all times of its use of which she complained, it was then registered as the owner of the mark. 21 The circumstances in which Ms Karlsson came to own the mark were that, on 7 August 2018, a firm of patent and trade mark attorneys acting on her behalf wrote to the University, saying, as the primary judge pointed out in her reasons: Our client intends to start a new business and use the trade mark KNOW 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. … Taking into consideration the different industries which our client and you operate in, we believe that our client's use of the trade mark will not conflict with Griffith University, nor would it cause confusion to consumers. Due to the similarity of the trade marks, 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. … Should you not agree to sign the letter of consent an alternative approach for our client to overcome the citation is a non-use action against your trade mark under section 92 of the Trade Marks Act 1995. (emphasis added) 22 During the hearings before the primary judge and before me, Ms Karlsson explained, that she was not complaining about the University infringing the mark after she became registered as its owner. Rather, her complaint was that she was still able to find historical images of the University having used the mark before she became owner when she searched on the internet, and that the University somehow had an obligation, despite s 124 of the Trade Marks Act, to cause any images previously uploaded onto the internet to be removed so that she would be free to use the mark without those earlier uses being available online. 23 As her patent and trade mark attorney's letter stated, there was no likelihood of confusion between the use the University had made of the mark and her proposed use. 24 It follows that Ms Karlsson's claim, that she advanced before both Wright J and the primary judge, that the University somehow infringed or engaged in conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law because the historical images of the University's use of the mark, before or after it was registered as its owner, may have caused confusion, was absurd and vexatious. Each of the primary judge, and Wright J beforehand, was correct in dismissing those claims. 25 The last ground on which Ms Karlsson sought to rely, both before Wright J and the primary judge, was an allegation that, prior to the University's first use of the mark, someone had stolen her bag in Queensland in 2011 which contained a USB stick that recorded her proposed mark. She pleaded that she had a civil cause of action against the University, as a result of the alleged theft of her bag in 2011, based on a definition of theft in the Crimes Act 1958 (Vic), for, somehow, appropriating or stealing the mark and becoming its owner. 26 As Wright J and the primary judge pointed out, this claim was unsustainable. First, any theft occurred, on Ms Karlsson's evidence, in Queensland so that the Victorian statute had no relevance whatsoever to her claim, secondly, the Crimes Act 1958 (Vic) did not give Ms Karlsson a civil cause of action in tort for conversion or for any other cause of action in respect of activities that occurred in Queensland, or elsewhere, thirdly, there was no basis pleaded to suggest that the University had anything to do with the theft or otherwise came to use the mark in 2011 and thereafter as a result of the alleged theft, and fourthly, the action was statute barred. 27 Ms Karlsson was unable to articulate any arguable or coherent allegation of error in her Honour's reasons. The present application itself, like the proceeding before her Honour, is an abuse of the process of the Court and must be dismissed.

Conclusion 28 The application for leave to appeal and Ms Karlsson's application for a stay of her Honour's orders must be dismissed with costs. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rares.