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[2011] FCA 1089
Federal Court of Australia
2011-09-21
Flick J
Original judgment source is linked above.
REASONS FOR JUDGMENT 1 On 29 August 2011 there was filed in this Court an Originating Application and a Statement of Claim. 2 The two Applicants are Speedo Holdings B.V. and Speedo International Limited. The Statement of Claim alleges that the First Applicant is the registered owner of various registered Australian trade marks and further alleges that the Applicants distribute and sell swimwear in Australia by reference to the name and trade mark "SPEEDO". 3 It is alleged that the Respondent, Mr Dave Evans, "has, under aliases, registered a number of domain names containing the name SPEEDO without the Applicants' consent". Relief is sought against the Respondent pursuant to (inter alia) the Trade Marks Act 1995 (Cth). 4 The Interlocutory Application that is presently before the Court seeks orders that the Originating Application and Statement of Claim are taken to have been served by having sent to Mr Evans a copy of those documents at an email address and an order pursuant to Rule 10.24 of the Federal Court Rules 2011.
Service of Documents 5 Rule 10.01 of the Federal Court Rules 2011 provides that a "document that is to be served personally on an individual must be served by leaving the document with the individual". 6 Rule 10.23, however, provides for those circumstances in which the Court may make an order that documents are "deemed" to have been served. That Rule provides as follows: 10.23 Deemed service A party may apply to the Court, without notice, for an order that a document is taken to have been served on a person on a date mentioned in the order if: (a) it is not practicable to serve a document on the person in a way required by these Rules; and (b) the party provides evidence that the document has been brought to the attention of the person to be served. Rule 10.24 provides for those circumstances in which the Court may make an order for "substituted service". That Rule provides as follows: 10.24 Substituted service If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the Court without notice for an order: (a) substituting another method of service; or (b) specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or (c) specifying that the document is taken to have been served: (i) on the happening of a specified event; or (ii) at the end of a specified time. 7 The counterpart provision to Rule 10.23 was to be found in the Order 7 r 10 of the now repealed Federal Court Rules. Order 7 r 10 formerly provided as follows: 10 Informal service: confirmation Where for any reason it is impractical to serve a document in the manner set out in the Rules, but steps have been taken to bring the document to the notice of the person to be served, the Court may order that the document be taken to have been served on that person on a date specified in the order. Orders pursuant to that provision have been made on a number of occasions (e.g., Australian Competition and Consumer Commission v D M Faulkner Pty Ltd [2004] FCA 1666; GSM (Trademarks) Pty Ltd v Shao [2006] FCA 1272; EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2010] FCAFC 110, 87 IPR 461; Commonwealth Bank of Australia v King [2011] FCA 790) including orders for service by way of email or facsimile (e.g., Astellas Pharma Inc v Kissei Pharmaceutical Co Ltd [2010] FCA 335) and in circumstances where a party "will not respond or appoint anyone to accept service" (Beluga Shipping GMBH & Co v Headway Shipping Ltd (No 3) [2008] FCA 1989 at [33]). 8 The counterpart provision to Rule 10.24 was to be found in Order 7 r 9 of the now repealed Rules. 9 There are perhaps at least two respects in which the current Federal Court Rules 2011 may depart from those previously set forth in the now repealed Federal Court Rules. 10 First, Rule 10.23 may now impose a more onerous requirement than that previously imposed by Order 7 r 10. That rule, it will be noted, referred to steps that had "been taken to bring the document to the notice of the person to be served". Rule 10.23(b) now refers to the need for "evidence that the document has been brought to the attention of the person to be served". The significance of that difference in language, however, need not be further pursued. 11 The former Order 7 r 10 and the current Rule 10.23 share common features. Both provisions clothe the Court with power to make an order as to the manner of service preventing a respondent from, for example, evading service or otherwise rendering it "impractical" or "not practicable" to effect personal service. A respondent who does not wish to be personally served, and who is set upon a course of frustrating an applicant from effecting personal service, cannot by his own conduct preclude an applicant from pursuing in this Court claims for relief. 12 Second, unlike Rules 10.23 and 10.24 which both refer to it being "not practicable" to serve a document, the former Rules 9 and 10 referred to it being "impractical to serve a document". In the context of construing Rule 10.24 the view has nevertheless been expressed that "there is no reason why the expression …. 'not practicable' should be given any meaning more constrained than that previously given to Order 7 r 9. …. Rule 10.24 should not be given any meaning requiring the necessity to prove the impossibility of service of documents upon a party in accordance with the Rules or any requirement to prove that further attempts to effect service in accordance with the Rules would otherwise be futile or not sensible or feasible": Statewide Secured Investments Pty Ltd v Tarrant [2011] FCA 1067 at [9]. That construction of the phrase "not practicable" is adhered to. That conclusion is also supported by the Explanatory Statement to the Federal Court Rules 2011 which relevantly states in part that: Part 10 adopts, simplifies and streamlines the process and procedures which operated under the former Rules and does not substantially alter existing practice. 13 Neither of these differences assumes any relevance in the present Interlocutory Application.
The Facts 14 The facts, for present purposes, need not be explored in any great detail. 15 It is sufficient to note that it is claimed that Mr Evans has been responsible for the publication on the internet of a series of websites. Each of those websites are said to set forth material that is "offensive" or "pornographic". Addresses which are set forth in a variety of ways employ the word "SPEEDO". Thus, for instance, one website provides the following address: http://www.speedomoviespage.com Another provides the following address: http://www.speedosnextdoor.com 16 Searches of the various websites have disclosed "Dave Evans" as the "contact". 17 Letters and telephone calls were sent and made to a number of addresses with a view to identifying an address at which the Originating Application and Statement of Claim could be served on Mr Evans. 18 One email was sent on 16 August 2011 to the following address: daveevans@swimmerboyz.com The email attached a "letter of demand and draft court documents". That email provoked a response from "Dave 'Speedo' Evans" in the following terms: Mr. Gourley, Is that your real name? It sounds like something a dog would bark up - say it with a cough.. (cough) uhdett Gowly. I have no doubt that you are a very intelligent fellow - being a partner and all. I see your paper work is from Corrs, Cambers and Westgarth. I've got a feeling Corrs, Chambers and Westgarth aren't in favour of gay marriage. No need for you guys to be haters. You aren't a man until you've had one right? Thank you for sending that paperwork. I wanted to let you know that this is a valid email address with regard to correspondence. Perhaps you should read my blog… if you took the time you'd not only get some fees but you'd learn that I don't live in Queensland. Dave Evans doesn't have an Australian passport, my business is based in the BVI and I look forward to seeing how the NSW Federal Court deals with the jurisdiction issues. The 'Speedo Corporation' is your client. It is an Australian brand and it should be interesting to see the 'reach' of the NSW Federal Court in imposing their decision regarding a 'generic' term. Since you are making your living from 'Speedo' I hope to see you at the local pool speedo'ing it up Mr. Gourley. Sincerely, Dave 'Speedo' Evans The content of that response may be left to one side. Of relevance is the fact that the Applicants have identified an email address at which the Respondent may be contacted and has indeed been contacted and has been accepted by Mr Evans as "a valid email address". Subsequent requests for the provision of a residential address at which personal service could be effected have been unsuccessful. 19 On 29 August 2011 the Applicants' solicitor forwarded a copy of the Originating Application and Statement of Claim as filed to the same email address as that used on 16 August 2011. The Respondent has confirmed receipt of those documents. 20 The unsuccessful attempts to secure a residential address for service, it is concluded, make it "not practicable to serve a document" on the Respondent personally within the meaning of and for the purposes of both Rules 10.23 and 10.24. The evidence also establishes the Originating Application and the Statement of Claim have "been brought to the attention of" the Respondent for the purposes of Rules 10.23(b).
Conclusions 21 It is concluded that orders should be made substantially as sought in the Interlocutory Application filed 6 September 2011.
ORDERS The Orders of the Court are: 1. Pursuant to Rule 10.23 of the Federal Court Rules 2011, the Originating Application and Statement of Claim in this proceeding are taken to have been served on the Respondent by the Applicants having sent a copy of those documents to the Respondent by email at the email address daveevans@swimmerboyz.com on 29 August 2011. 2. Pursuant to Rule 10.24 of the Federal Court Rules 2011, until such time as the Respondent files and serves a notice of address for service or further order, that service by the Applicants on the Respondent of any further documents in this proceeding may be effected by the Applicants sending a copy of those documents to the Respondent by email at the email address daveevans@swimmerboyz.com. 3. A copy of these Orders, together with the reasons for decision, are to be served on the Respondent on or before midday on 22 September 2011. 4. Costs are reserved. I certify that the preceding twenty-one (21) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick.
Speedo Holdings B.V.
Evans