Metropage Pty Limited v Alistair Woodward Little & Ors

EX-TEMPORE Judgment (REVISED)

1. I have fully rehearsed the various reasons and difficulties which stand in the plaintiff's way, at this stage of the proceedings, of raising an amendment to the statement of claim contained in the proposed amended statement of claim, which I have marked “MFI 1”.

2. That amendment is deceptive in its simplicity because what it seeks to do, as appears in underlined words at the conclusion of [21], is to raise what is effectively a case that has never before been pleaded, that the solicitors failed to act upon the plaintiff’s express instructions to take affirmative action to seek to adjourn the District Court hearing and have the matter transferred to the Supreme Court of New South Wales. The inserted words encapsulating the proposed amendment are as follows:

"And failed to act on the plaintiff's instructions to have vacated the hearing date and to have sought leave to have put on expert evidence".

3. Ms Avery‑Williams of counsel who appears for the defendant, has taken objection on two bases. The first is as to form, and the second relates to what she submits is the absence of evidence supporting the amendment. I thought that what counsel had to say about form had some weight given the consideration that the conciseness of the proposed amendment rather masks a number of implications which ought to be spelled out.

4. I did not understand Mr Hall, solicitor who appears on behalf of the plaintiff, to take issue with that position. Were that the only matter that could have been readily cured perhaps by allowing Mr Hall to bring in another attempt at the amendment in the morning. However, the substantive objection, which again Mr Hall, in an appropriately candid manner, concedes, that there is no direct evidence (notwithstanding compliance with fairly rigorous case management directions for the exchange of evidence) that Mr Bolton, the guiding mind of the plaintiff, ever instructed the solicitors, in particular Mr Little and Ms Tran, to apply for an adjournment of the hearing dates and apply by way of summons to this Court for the removal of the case from the District Court too has force.

5. I am speaking of a previous case brought against the plaintiff's former solicitors for negligently conducting negotiations with Apple Inc in relation to the trademark, “IPAD” to which the plaintiff asserted an entitlement over the period 2005 to 2009. I am attempting to be brief, and I will not delve into the facts further than that. The only evidence relied upon to support the amendment, when refined in the course of my discussion with Mr Hall, is a statement at [23] of Mr Bolton's affidavit of 17 June 2024 that during an initial face‑to‑face conference with Mr Little and Ms Tran on 12 April 2017, and toward the end of the conference, Mr Little said, "We will need to vacate the hearing and seek leave to put on expert evidence". Mr Bolton's evidence is that he replied, "That sounds good to me."

6. It would seem also to be obvious that expert evidence was required in the case against the former solicitors. It was required because there needed to be evidence about the value of the trademark before one could make any assessment about the appropriateness of the advice given by the former solicitors, acknowledging that expert evidence as to value would have been far from conclusive. It is also apparent that there was no discussion at the initial conference, from what appears in paras [21]-[25] of Mr Bolton's first affidavit, about any need to transfer the matter to the Supreme Court. I should also say that for reasons which are fully explained in Mr Bolton's various affidavits, at the time that Mr Bolton, on behalf of the plaintiff, instructed Mr Little, the hearing date in the District Court was only two months away and time was very limited.

7. One may well accept, given the rather niche area which the case concerned, involving the value of contested trademarks, that identification of an expert and securing an expert report may have taken some time. Moreover, the matter had been case managed in the District Court, and I infer that the time limited for the filing expert evidence, if any, had expired.

8. None of those things are decisive but other evidence indicates that the solicitors for the defendant were taking a very hard-nosed attitude to any prospect of an adjournment or the introduction of new evidence at that stage. In any event, as I have said, if that is the evidence at its highest, it does not mention the need to transfer the proceeding. It is also clear that at or around 23 May 2017, when the parties participated in an informal settlement conference, after very disappointing advice had been received from counsel, there was discussion about the prospect of adjourning the case for the purpose of transferring it to the Supreme Court. Obviously, at that stage, prospects of a successful transfer application would depend upon there being evidence as to value in excess of the jurisdiction of the District Court. Even though the bar is not set very high by the judges of the Common Law Division, there would still need to be evidence in the form of, in this type of case, an expert opinion about quantum.

9. I have been taken to other evidence and I acknowledge that in his second affidavit, Mr Bolton sets out personal factors which may not have been known to the solicitors at the relevant time which may have played a part in persuading a District Court judge to allow an adjournment. However, that falls into a different category from the issue with which I am presently concerned.

10. I accept that were I to allow the amendment if brought forward in a form conforming with the rules and practice relating to common law pleadings, little time in the hearing would be lost and, although evidence would need to be obtained from Mr Little and Ms Tran in response to the pleading, that evidence would not be very complex or lengthy. It perhaps could be dealt with orally when they are called to give evidence in any event.

11. However, the factors which influence me are that, in my opinion, the evidence to which I have been taken does not, with respect, support the allegation, and at this late stage of the proceedings, I am not persuaded that the interests of justice require me to permit it. I should say this, as I referred to it in passing, there are perhaps compelling Anon Risk Services Australia v Australian National University (2009) 239 CLR 175; [2009] HCA 27 issues which also govern and inform the exercise of my discretion. With no disrespect to anybody, there is no real explanation as to why this application is being made now, some 16 years or thereabouts, after the central circumstances giving rise to this chain of litigation arose. I am not satisfied otherwise that the allegation has sufficient prosects of success to justify the amendment.

12. I refuse leave to further amend the amended statement of claim in accordance with [21] of MFI 1.

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