Optical 88 Limited v Optical 88 Pty Limited

background 3 The notice of motion was filed and argued on the fifth day of the hearing before me of the principal proceeding, immediately before the scheduled cross-examination of the personal respondents and another of the respondents' witnesses. 4 In the principal proceeding the applicant claims relief against the respondents based on causes of action for trade mark infringement, passing-off and contravention of s 52 of the Trade Practices Act 1974 (Cth), and copyright infringement. 5 The applicant has an established business in Hong Kong and other countries as a retailer of a broad range of optical and eye care products including prescription lenses, contact lenses and solutions, frames for spectacles and sunglasses. It also provides a comprehensive range of optical services, including sight-testing, eye examinations, and after-sales servicing of spectacles. Its business is carried on from a number of stores which operate under the name "Optical 88" using various trade indicia, including logos and the name Optical 88 represented in various stylised forms. For convenience, the name "Optical 88" and the various trade indicia are referred to in the applicant's pleadings as the "Optical 88 Branding". 6 In addition to the proprietary rights it claims in certain registered trade marks and a particular copyright work, the applicant claims a reputation in Australia in the Optical 88 Branding. 7 The first respondent carries on business in Campsie, Chatswood and Eastwood (all suburbs of Sydney) as a supplier of optometry services and optical goods. The optometry services include eye-sight examination services. The optical goods include optical lenses, spectacle frames, sunglasses, clip-on sunglasses and accessories such as contact lens solutions, eye drops, spectacle cases and spectacle chains. The business is also carried on under the name "Optical 88" using various trade indicia, including logos and the name Optical 88 represented in a stylised form. It is these activities, carried on in this way, that give rise to the applicant's claims of trade mark infringement, passing-off and contravention of s 52 of the Trade Practices Act, and copyright infringement. 8 The second respondent and the third respondent are husband and wife, and are the directors of the first respondent. The third respondent is also the secretary of the first respondent. The second and third respondents have held these offices since at least the time that the first respondent, in 1993, took over the optometry practice previously carried on by the second respondent. The first respondent was apparently incorporated for this purpose. 9 A statement of claim was filed on 7 March 2008. Paragraph 13 of the statement of claim pleaded as follows (omitting particulars): 13. Since approximately July 1993 each of the respondents has, or has jointly with one or more of the other respondents, done, or directed or procured the doing by another respondent of, one or more of the following: (a) advertised, marketed or promoted; (b) offered; and/or (c) provided the Services in Australia, under or by reference to the Optical 88 Branding or marks or signs which are substantially identical or deceptively similar to elements of the Optical 88 Branding, including: (i) the name OPTICAL 88; (ii) the name OPTICAL 88 in Chinese, being the Chinese characters "an geng" followed by the number 88, depicted as : [characters] 88 (in formal characters) or [characters] 88 (in simplified characters); (iii) the OPL Logo; and/or (iv) the mark the subject of the Objectionable Trade Mark Application. 10 Paragraph 14 of the statement of claim pleaded as follows (omitting particulars) : 14. Each of the respondents or the first, second or third respondent jointly with one or more of the other respondents, intends to, or intends to direct or procure another respondent to: (a) manufacture; (b) sell or offer or expose for sale; (c) provide; and/or (d) advertise or promote the Goods in Australia, under or by reference to the Optical 88 Branding or marks or signs which are substantially identical or deceptively similar to elements of the Optical 88 Branding, including: (i) the name OPTICAL 88; (ii) the name OPTICAL 88 in Chinese, being the Chinese characters "an geng" followed by the number 88, depicted as [characters] 88 (in formal characters) or [characters] 88 (in simplified characters); (iii) the OPL Logo; and/or (iv) the mark the subject of the Objectionable Trade Mark Application. 11 The conduct pleaded in paragraphs 13 and 14 of the statement of claim was later referred to in that pleading as the "Unauthorised Conduct". 12 In subsequent paragraphs of the statement of claim (namely paragraph 21 with respect to trade mark infringement and paragraph 28 with respect to passing-off) the applicant pleaded that: The second and third respondents or either of them have directed, procured, controlled and/or have been directly or indirectly knowingly concerned in the acts of the first respondent. 13 In other paragraphs of the statement of claim (namely paragraph 23 with respect to trade mark infringement, paragraph 31 with respect to passing-off, paragraph 43 with respect to contravention of s 52 of the Trade Practices Act and paragraph 51 with respect to copyright infringement) the applicant pleaded that: Each of the respondents, or a combination of one or more of them, intends to repeat the Unauthorised Conduct. 14 The third respondent filed a defence on 23 April 2008. In that defence she pleaded the following in answer to paragraph 13 of the statement of claim: 13. The third respondent admits that since approximately July 1993 she has, or has jointly with one or more of the other respondents, done, directed or procured by another respondent of, one or more of the following: (a) advertised, marketed or promoted; (b) offered; and/or (c) provided the First Respondent's Services in Australia, but otherwise: (d) denies paragraph 13 of the statement of claim to the extent that it contains any allegations against her, and (e) does not admit paragraph 13 of the statement of claim to the extent that it concerns the other respondents. 15 She pleaded the following in answer to paragraph 14 of the statement of claim: 14. The third respondent admits that she intends to, or intends to direct or procure another respondent to: (a) manufacture; (b) sell or offer or expose for sale; (c) provide; and/or (d) advertise or promote the First Respondent's Services in Australia, but otherwise: (e) denies paragraph 14 of the statement of claim to the extent that it contains any allegations against her, and (f) does not admit paragraph 14 of the statement of claim to the extent that it concerns the other respondents. 16 In answer to each of paragraphs 21 and 28 of the statement of claim, the third respondent admitted the allegations against her but did not admit the allegations made against the other respondents. 17 In answer to paragraphs 23, 31, 43 and 51 of the statement of claim, the third respondent, in each case, repeated her pleading to paragraphs 13 and 14 of the statement of claim, admitted that she intended "to continue to engage in activities that properly concern the First Respondent's Services in Australia", denied the balance of the paragraph to the extent that it contained allegations against her, and did not admit the paragraph to the extent that it concerned the other respondents. 18 The evidence tendered on the motion shows that on 13 June 2008 the applicant requested each of the respondents to reconsider the drafting of their respective defences to make further admissions. On that day the applicant's solicitors wrote to the respondents' solicitors saying: In circumstances in which the first respondent is a small family company and the second and third respondents are its only directors, the applicant does not accept that the individual respondents have knowledge of alleged facts only to the extent that allegations are made against them, and not to the extent that they concern other respondents. A company can only act and have intentions through the individuals who are involved in its operations, management, direction and control (in this case, its directors), and those individuals axiomatically must have knowledge of facts concerning the company, including facts such as those that are alleged in the statement of claim. Similarly, the relevant knowledge of such directors can be imputed to the company We invite the respondents to reconsider their pleadings relating to allegations of fact that concern other respondents, and to provide denials or admissions as may be appropriate, so that the matters in dispute between the parties can be properly defined. This applies in particular to paragraphs 13 and 14 (and the paragraphs which repeat them) and paragraphs 21, 28 and 40 of the respondents' pleadings. 19 In a letter dated 18 June 2008, the respondents' solicitors replied, saying relevantly: The matters in dispute between each respondent and the plaintiff are adequately defined by reference to that respondent's own pleadings. There is, of course, no issue in dispute between that respondent and the plaintiff to the extent that the allegations concern another party. The position of the other party may be discerned by reference to that party's own pleadings. [Emphasis in original] 20 The third respondent filed an amended defence on 27 June 2008 pursuant to leave granted on 26 June 2008. In her amended defence the third respondent repeated her pleading to paragraphs 13, 14, 21, 23, 28, 31, 43 and 51 of the statement of claim. 21 On 9 February 2009 the applicant amended its statement of claim. On 18 December 2009 the applicant again amended its statement of claim. It is not necessary for me to detail the amendments other than to note that, on each occasion, the applicant amended its definition of "Services" (apart from other amendments). Leaving aside amendments to some of the particulars, the pleading of paragraphs 13, 14, 21, 23, 28, 31, 43 and 51 has remained in substantially the same form. Neither the third respondent, nor the first or second respondents, amended their respective defences in response. Thus their last-filed defences stand as their defences to what is now the further amended statement of claim. 22 The catalyst for the third respondent seeking leave to withdraw the admissions to which I have referred (which I will call the "relevant admissions") was the taking by the applicant of objections to two passages in the third respondent's affidavit sworn on 12 November 2009 that was to be read in the principal hearing. Those passages are as follows: 8. I have never held any permanent position at any of the outlets operated by my husband or the first respondent. … … … 12. I have not performed any other role in the operation of the practice. 23 The ground of the objection in each case was lack of relevance, in light of the making of the relevant admissions.

principles 24 Order 22 r 4 provides as follows: (1) A party raising any matter in a defence or subsequent pleading may withdraw that matter, at any time, by notice in accordance with Form 30. (2) Subrule (1) does not enable a party to withdraw, without the consent of another party or the leave of the Court, an admission or any other matter operating for the benefit of that other party. 25 The applicant does not consent to the third respondent withdrawing the relevant admissions. 26 In Jeans v Commonwealth Bank of Australia Ltd (2003) 204 ALR 327 a Full Court of this Court (at [17]) rejected the approach suggested in H Clark (Doncaster) Ltd v Wilkinson [1965] Ch 694 that, except in cases which give rise to an estoppel, an admission might be withdrawn, at least if the other party is not prejudiced otherwise than in a way that might be cured by a costs order. 27 The Full Court accepted the true position to be that there is no principle that admissions might or might not be withdrawn. The Full Court accepted that a court has "a broad discretion to weigh up all matters with the overall question being to ensure that there was a fair trial": [23], [27] and [18]. The Full Court also accepted the following observations of Santow J in Drabsch v Switzerland General Insurance Co Ltd (unreported, Supreme Court of New South Wales, 16 October 1996) as guiding the exercise of the discretion: 1. Where a party under no apparent disability makes a clear and distinct admission which is accepted by its opponent and acted upon, for reasons of policy and the due conduct of the business of the court, an application to withdraw the admission, especially at appeal, should not be freely granted … 2. The question is one for the reviewing judge to consider in the context of each particular appeal, with the general guidelines being that the person seeking on a review to withdraw a concession made should provide some good reason why the judge should disturb what was previously common ground or conceded … 3. Where a court is satisfied that admissions have been made after consideration and advice such as from the parties' expert and after full opportunity to consider its case and whether the admission should be made, admissions so made with deliberateness and formality would ordinarily not be permitted to be withdrawn … 4. It will usually be appropriate to grant leave to withdraw an admission where it is shown that the admission is contrary to the actual facts. Leave may also be appropriate where circumstances show that the admission was made inadvertently or without due consideration of material matters. Irrespective of whether the admission has or has not been formally made, leave may be refused if the other party has changed its position in reliance upon the admission … 5. Following Cohen v McWilliam (1995) 38 NSWLR 476, a court is not obliged to give decisive weight to court efficiency, such that a party who wishes to defend its claim is entitled to a hearing on the merits, with costs orders being available as a means of compensating the other party for any costs thereby unnecessarily incurred or not fairly visited on the other party. 28 The Full Court also had regard to the effect of the decision of the High Court in Queensland v JL Holdings Pty Ltd (1997) 189 CLR 146, which rejected an emphasis upon case management as a ground for refusing an application to amend a defence (which application would lead to the vacating of a hearing date and an adjournment of the proceedings). 29 The significance to be given to considerations of case management must now be viewed in light of s 37M of the Federal Court of Australia Act 1976 (Cth), which provides as follows: 37M The overarching purpose of civil practice and procedure provisions (1) The overarching purpose of the civil practice and procedure provisions is to facilitate the just resolution of disputes: (a) according to law; and (b) as quickly, inexpensively and efficiently as possible. (2) Without limiting the generality of subsection (1), the overarching purpose includes the following objectives: (a) the just determination of all proceedings before the Court; (b) the efficient use of the judicial and administrative resources available for the purposes of the Court; (c) the efficient disposal of the Court's overall caseload; (d) the disposal of all proceedings in a timely manner; (e) the resolution of disputes at a cost that is proportionate to the importance and complexity of the matters in dispute. (3) The civil practice and procedure provisions must be interpreted and applied, and any power conferred or duty imposed by them (including the power to make Rules of Court) must be exercised or carried out, in the way that best promotes the overarching purpose. (4) The civil practice and procedure provisions are the following, so far as they apply in relation to civil proceedings: (a) the Rules of Court made under this Act; (b) any other provision made by or under this Act or any other Act with respect to the practice and procedure of the Court. 30 The notion that an application to withdraw an admission should not be freely granted is reflected in another decision of the Full Court of this Court. In Celestino v Celestino (unreported, Spender, Miles and Von Doussa JJ, 16 August 1990) the Full Court observed that a court will require an explanation for the making of the admission, which must be "a sensible one based on evidence of a solid and substantial character", citing Langdale v Danby (1982) 1 WLR 1123 at 1134 and other cases. In my view this must certainly be the case where the admission is made formally, apparently after due consideration. 31 In Australian Competition and Consumer Commission v Construction, Forestry, Mining and Energy Union [2007] FCA 1390, Finn J at [4] adopted the following observations of Debelle J in Centrestate Exports Pty Ltd v Amarantos Shipping Co Ltd [2005] SASC 158 at [32], which are consistent with the acceptance by the Full Court in Jeans of the existence of a broad discretion that is to be exercised having regard to all the circumstances of the case: The overriding consideration is the interests of justice. The Court will not lightly permit a party to withdraw an admission where the other party has acted to its detriment on the admission or is otherwise prejudiced by the withdrawal. It is plainly necessary to have regard to all relevant factors including the nature and importance of the admission, the circumstances in which the admission was made, whether the admission was made deliberately or inadvertently, the reason given for the application to withdraw, the detriment or prejudice which might be caused to the other party and the stage which the proceedings have reached, and whether the admission is contrary to the facts. The list of relevant factors affecting the Court's decision will plainly vary from case to case. 32 It is with these observations in mind that I considered the present application.

consideration 33 In an affidavit sworn on 26 March 2010 the third respondent's solicitor said that he reviewed the third respondent's defence the previous evening and observed the admissions to which I have referred. He said that these admissions were inconsistent with his understanding of the third respondent's position in the proceeding. He said that he had understood that part of the third respondent's denial of liability was on the basis that she performed a limited role in the operation of the first respondent and had not been actively involved in the first respondent's conduct the subject of the applicant's complaints. He said that the third respondent's defence and amended defence were prepared by the respondents' former junior counsel. He said that he relied on the respondents' former junior counsel to both prepare and settle the defence and amended defence. He proffered the suggestion that the making of the admissions appeared to be an inadvertent error brought about by replicating the second respondent's defence, which made the same admissions. This is the extent of the explanation that has been given. 34 In my view there is nothing, objectively speaking, that is odd or surprising about the fact that the same admissions are made by both the second respondent and the third respondent. They were and are, after all, the only two directors of a private company (the first respondent) that carried on the impugned activities. And even though the same admissions are made, the third respondent's defence and amended defence have been specifically personalised to her situation. The defence and amended defence are not, on their face, slavish reproductions of the second respondent's defence and amended defence. The fact that separate defences were prepared and filed for each of the personal respondents indicates that, at the time, there was a clear appreciation on the part of their advisers that each was seeking to plead specifically to the allegations made against him or her. 35 Both the third respondent's defence and amended defence bear an endorsement that the pleading was prepared by the third respondent's solicitor and settled by counsel. This endorsement sits oddly with the statement now made in the third respondent's solicitor's affidavit that it was counsel who both "prepared and settled" the defence and amended defence. No explanation has been given for this inconsistency or, if the endorsement be erroneous, how it nevertheless came to be made and repeated. 36 Moreover, in respect of the third respondent's defence and amended defence, the third respondent's solicitor certified on each pleading that the factual and legal material available to him at that time provided a proper basis for each allegation in the pleading. In the face of that certification, there is no evidence before me that reveals the precise circumstances in which the defence and amended defence came to be prepared, what instructions had been given for that purpose, when those instructions were given or how the pleadings came to be prepared in the form in which they were filed, apart from the speculation that the third respondent's pleading was an inadvertent replication of the second respondent's pleading. 37 On the other hand, the third respondent's solicitor's letter of 18 June 2008 (to which I have referred) supports the inference, otherwise available, that, at the time of their preparation and filing, the third respondent's defence and amended defence contained a considered response to the specific allegations that had been made against her and each of the other respondents. These defences are specific, certified as having been made on a proper basis, and have stood as the third respondent's defences from April 2008. It was only at the point of dealing with objections to the third respondent's affidavit, just prior to the third respondent's scheduled attendance for cross-examination, that the application to withdraw the admissions was made. 38 In light of the objective material to which I have referred, the somewhat skeletal explanation that has been provided in the third respondent's solicitor's affidavit, including the simple suggestion that the third respondent's pleadings are no more than an inadvertent replication of the second respondent's defence, is unconvincing and does not provide an adequate explanation of the circumstances in which the admissions came to be made or a sufficient basis for granting the leave that is now sought. 39 In coming to this view I do not leave out of consideration the statements in the third respondent's affidavit to which objection has been taken in the principal proceeding, but which have been admitted on the hearing of the third respondent's motion. Those statements must be considered in the wider context of the related evidence given in that affidavit. 40 In this connection, the third respondent's evidence is that she obtained a Certificate of Optical Dispensing because she understood that, with such a qualification, she could facilitate the promotion of the second respondent's practice (being the practice now carried on by the first respondent) although, in fact, she has never worked as an optical dispenser. Her evidence is that, from the time the second respondent commenced practice in late 1984 (including in the period when the first respondent has conducted that practice), she has from time to time (although less and less so) filled in as a receptionist. Since 1993, when the practice was taken over by the first respondent, she has performed bookkeeping for the practice (namely entering data, including sales information, into an accounting software program, administering the payroll, and preparing bookwork to be provided to an accountant for the preparation of annual income tax returns). 41 It is in this context that the third respondent has deposed that she has never held any permanent position in any of the outlets operated by the second respondent or the first respondent and that she has not performed any other role in the operation of the practice (that is, beyond acting as receptionist from time to time and as a bookkeeper). These statements plainly refer to the workaday roles performed by the third respondent in the operation of the first respondent's practice. Those statements are not necessarily inconsistent with the admissions that have been made, which would relate equally to the exercise by the third respondent of her capacity as a co-director in concert with the second respondent to direct or procure the first respondent to engage in one or more of the generally and alternatively expressed activities to which the admissions relate, and to her having been knowingly concerned in the impugned activities. 42 Finally, the timing of the application for leave is significant. As I have stated, the application is made on the fifth day of the hearing at a time when, but for the making of the application, the third respondent would have been cross-examined. In my view it was reasonable for the applicant to assume that the admissions that had been made formally since April 2008 had removed the admitted facts as an issue in the proceeding, notwithstanding the evidence intended to be led by the reading of the third respondent's affidavit dealing with her workaday involvement in the first respondent's practice. Had this issue not been removed then I have been informed in the course of submissions, and accept, that the applicant would have sought discovery and given consideration to other interlocutory steps to assist in the proof of that aspect of its case. A draft notice to produce has been tendered to indicate the kinds of documents that would be sought to be produced should the third respondent's application for leave succeed. It is not necessary for me to consider the terms of the notice to produce in any great detail. Criticism may be made about the scope of the draft notice and the possible utility of a number of the documents that would be sought thereby. I am not persuaded, however, that, had the admissions not been made, the applicant would not have been permitted some form of discovery against the respondents or to take other interlocutory steps to assist in the proof of its case against the third respondent. I am not satisfied, therefore, that, if leave to withdraw the admissions were to be granted, the applicant would not be prejudiced, or that it would be prejudiced only in a way that could now be met by an order for costs. 43 I would add that, in my view, the granting of the leave that is sought, at this late stage in the trial of the action, is likely to lead to disruptive disputes about the production of documents at a time when the third respondent would otherwise be cross-examined, with the consequent risk that undue expense and delay might well be caused in the resolution of this matter. In all the circumstances, this would be antithetical to the just resolution of the dispute in a manner that is quick, inexpensive and efficient as possible.

disposition 44 It was for these reasons that I refused the leave that was sought and dismissed paragraphs 3 and 4 of the notice of motion. 45 I reserve the question of costs. I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.