Substituted service
11 The applicant seeks an order for substituted service pursuant to r 10.24, which provides:
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.
Note: Without notice is defined in the Dictionary.
12 Although the applicant does not seek an order under r 10.49, which also concerns the topic of substituted service and is located in Div 10.4 (Service outside Australia), I note that this rule provides:
10.49 Substituted service
If service on a person outside Australia, in accordance with a convention, the Hague Convention or the law of a foreign country, was not successful, 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.
Note: Without notice is defined in the Dictionary.
13 Rule 10.49 is premised on service by one of the three methods referred to in the rule having been unsuccessful, which implies that some attempt has already been made. The applicant does not seek to rely on that rule in the present case, as the applicant contends that it is not practicable to serve the originating application under the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, done at The Hague on 15 November 1965 (Hague Convention) (this being the method of service that would otherwise be appropriate in the circumstances of this case).
14 An issue arises whether, by reason of the presence of a specific rule for substituted service in Div 10.4 (namely, r 10.49) the general rule regarding substituted service (namely, r 10.24) is available in a case involving service out of the jurisdiction.
15 This issue was considered (in the context of the Rules as they stood before the amendments to Div 10.4 described above) in Australian Information Commission v Facebook Inc [2020] FCA 531; 144 ACSR 88 (Facebook). In that case, Thawley J concluded that, having regard to r 10.45 (application of other rules), the general substituted service rule (r 10.24) was available notwithstanding the presence of r 10.49: see Facebook at [62]-[66]. In particular, Thawley J stated at [66]:
This Court has held, in circumstances analogous to the present, that an order for substituted service may be made under either r 10.24 or r 10.49: Commissioner of Taxation v Zeitouni (2013) 306 ALR 603 at [60] (Katzmann J); see also: Australian Competition and Consumer Commission v Kokos International Pty Ltd [2007] FCA 2035 at [18] (French J); Commissioner of Taxation v Oswal [2012] FCA 1507 at [32] (Gilmour J). Even if that position is incorrect, I would have ordered substituted service under r 10.49, with a dispensation from the implicit requirement to attempt service under r 1.34, for equivalent reasons to those for which I will order substituted service under r 10.24, explained next.
16 In my view, the reasoning in Facebook is equally applicable under the current provisions. While wording changes have been made to rr 10.45 and 10.49, they remain in substantially the same terms as before the amendments. The current form of r 10.49 has been set out above. The current form of r 10.45 is as follows:
10.45 Application of other rules
The other provisions of this Part apply to service of a document on a person outside Australia in the same way as the provisions apply to service on a person in Australia, to the extent that the provisions are:
(a) relevant and consistent with this Division; and
(b) consistent with:
(i) if a convention applies - the convention; or
(ii) if the Hague Convention applies - the Hague Convention; or
(iii) in any other case - the law of the country in which service is to be effected.
17 In my view, the removal of the requirement of leave for service out of the jurisdiction (this being the main change to Div 10.4) does not affect the applicability of the reasoning in Facebook. Accordingly, I consider that the general substituted service rule (r 10.24) is available in a case involving service out of the jurisdiction. Further, consistently with the approach taken in Facebook at [66], if that were not the position, I would have ordered substituted service under r 10.49, with a dispensation from the implicit requirement to attempt service, for equivalent reasons to those set out below for making the order for substituted service under r 10.24.
18 The principles relating to the making of an order for substituted service under r 10.24 were referred to in Facebook at [67]-[68]. Further, Thawley J made observations about the relevance of principles of comity in the context of service out of the jurisdiction: at [72]. I adopt those statements of principle and observations.
19 Applying those principles to the facts and circumstances of this case, I am satisfied that it would not be practicable to serve the originating application (and ancillary documents) pursuant to the Hague Convention given the time that this is likely to take and having regard to the nature of the claims and the relief sought in respect of those claims. The first affidavit of Mr Adkins details the likely time to serve the documents in Hong Kong and China, namely around four months for Hong Kong and around six months for China. I accept that this is not practicable in circumstances where the alleged infringing conduct is ongoing and the applicant seeks injunctive relief to restrain that conduct from continuing.
20 I am satisfied that the proposed methods of substituted service - namely, emailing the documents to certain specified email addresses - are likely to bring the documents to the attention of the respondents, having regard to the evidence in Mr Adkins's affidavits. Indeed, based on the evidence of Mr Adkins (in particular, his third affidavit) it is likely they are already aware of the proceedings.
21 I will therefore make orders for substituted service as sought by the applicant. I will discuss the precise form of the orders with counsel.
22 In light of this conclusion, it is not necessary to consider the application for an order for deemed service under r 10.48 of the Rules.
I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Moshinsky.