Case: Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013
Outcome: referred to
In Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013 , Stone J said at [7]: 'In particular circumstances the separate decision of a question may be appropriate even if it will not bring the proceedings to an end. Examples are where there is a strong prospect that once the core of their dispute is decided, the parties will settle the remaining issues or where the decision will obviate an unnecessary and expensive hearing of other questions. Such situations must, however, be carefully controlled lest fragmentation of the proceedings should bring delay, expense and hardship, which the making of the order was intended to avoid.' 28 Diageo submits that the order sought should be made for the following reasons: (a) It is clear that the issues in the main proceeding will require voluminous discovery and extensive evidence. (b) There is nothing at this stage which indicates that there will be any commonality of evidence or witnesses (other than in relation to the issues of ownership of the Cross-Claim Trade Marks) that would make it convenient to hear both the Cross-Claim and the Amended Statement of Claim together. Diageo submits that the determining of the Cross-Claim prior to the Amended Statement of Claim may in fact avoid the costs and inconvenience of a hearing on the Amended Statement of Claim, if the Cross-Claim is determined in the cross-claimants' favour. Diageo is unlikely to recover all of its costs in this case and will have expended a considerable amount of time as well as money. (c) There is no prejudice to the cross-claimants if the orders are made and it may assist the cross-claimants in having their claims heard earlier. (d) There does not appear to be any prejudice to SPI Spirits and Spirits International other than a delay in payment of any damages that might be awarded, a prejudice that will be compensated by payment of interest. The Distribution Agreement has come to an end, Diageo is no longer distributing Diageo Stolichnaya Vodka, and SPI Spirits has entered into an agreement with another company for the distribution of its vodka in Australia. (e) The determination of such a decisive issue is likely to be a major factor to both SPI Spirits and Diageo in considering settlement. (f) As stated above, the main proceeding has not progressed at all beyond a defence and reply and is now back to the beginning with the proposed filing of an Amended Application and Amended Statement of Claim which significantly alter the overall case against Diageo. The conduct which is the subject of the main proceeding has either concluded or, in the case of the Ruski Claims, commenced in April 2004 and no interlocutory injunction has been sought. (g) Resolution of the issue of ownership of the marks is likely to contribute to settlement. 29 Finally, Diageo submits that there is an important issue of case management to be considered, not merely in relation to the inconvenience to Diageo if all claims in the proceeding are heard together. There is also the convenience of the Court. Not only might hearing time be reduced, both for the trial and any interlocutory disputes, but there would be considerable benefits for the trial judge. If all claims are heard together, the trial judge, in writing his or her judgment, may consider it necessary to determine the ownership issue first. If the ownership issue is determined in favour of the cross-claimants, the trial judge is likely to feel obliged to determine all the remaining issues on the Amended Statement of Claim. If the issue of ownership of the Cross-Claim Trade Marks is fundamental to the Amended Statement of Claim, then both the Court's and the parties' resources may have been unnecessarily wasted. 30 In order to minimise any prejudice to SPI Spirits and Spirits International, Diageo offered to make the following undertakings if the orders are made: (a) Not to destroy any documents relevant to the issues raised by the Amended Statement of Claim (yet to be filed); (b) to maintain comprehensive sales records relating to Ruski; (c) to agree to be bound by the final determination of the Court of the Amended Cross-Claim. 31 SPI Spirits and Spirits International submitted that determination of the Cross-Claim will not, for the reasons outlined above, likely dispose of or substantially narrow the issues arising in the Amended Statement of Claim. Even if the Cross-Claim is determined adversely to Spirits International, SPI Spirits and Spirits International will be entitled to pursue their claims against Diageo in contract and under ss 52 , 53 and 55 of the TPA.