Case: Kamha v Australian Prudential Regulation Authority (2007) 98 ALD 49; [2007] FCA 1422
Outcome: cited
In my opinion, in this case I should follow the approach of Lindgren J. I also venture the view that, if s 31A had been in force at the time Lehane J gave his interlocutory decision, it more than likely would have been different. In short, I am not satisfied that this is one of those rare cases where it is appropriate to have this Court intervene by way of declaration in statutory process (see also in another context, Kamha v Australian Prudential Regulation Authority (2007) 98 ALD 49; [2007] FCA 1422 at [9] and [13]). 8 There is inevitably some overlap between the issues which arise in this proceeding, absent the amendment, and the applications for trade mark by or on behalf of the respondent/cross-claimant, which are now before the Registrar. It may be that a decision on one or more of those issues might be inconsistent with the trade marks being entitled to registration, if decided favourably to the applicant/cross-respondent. However, there is by no means an identity of issues. Therefore, a decision in this case would not be necessarily decisive of one or more of those applications before the Registrar. Furthermore, the Registrar would not be bound by any declaration that is made in a technical sense, and nor would any other party who joined in those proceedings. There is no claim for an injunction against the Registrar, and it is difficult to see any proper basis on which an injunction could be granted. 9 It is possible, but by no means certain, that some time and money might be saved if the declaration was decisive as to registrability, and no other party took any interest in the applications. That result is speculative. The possibility of inconsistent findings is not removed, because granting declarations is not the equivalent of actually deciding the applications before the Registrar on the same issues. The paragraphs of the statement of claim which refer to the respondent/cross-claimant's applications have, in effect, been superseded by events, as the respondent/cross-claimant is now "on the market" with beer being sold in connection with the mark "BAREFOOT". I am not persuaded that there is any legitimate way in which the validity of the applications for trade mark will arise in the proceeding as it stands without amendment. 10 The respondent/cross-claimant submits that the cross-claim should be determined first as a matter of logic and practicality. It is a relatively straight forward factual issue that could be promptly determined. Infringement, it is said, is a more complex issue which will take time both to prepare and hear. If the respondent/cross-claimant were to succeed in the cross-claim, it would be unnecessary to proceed with the action for infringement. It is also put that the original application to the Registrar was made prior to the proceeding for infringement being commenced. It is also said that the applicant/cross-respondent has shown no great expedition in relation to its prosecution of the claim for infringement and, in particular, has sought no interlocutory relief. It was also pointed out that the separate hearing of a cross-claim is not to be equated with isolating one out of a number of issues arising on a claim. 11 This submission has more legs than many of its kind. The non-use point is quite distinct and separate, and should be capable of relatively quick resolution. However, on balance, the risk of potential problems created by separately hearing the cross-claim and the claim in relation to the same trade mark need not, and should not, be run. The carrot of an early disposition of the cross-claim rendering infringement proceedings unnecessary is more apparent than real in view of the opportunities for appeal. There is the problem occasioned by witnesses being dealt with on more than one occasion (one such witness has been identified to date). There is always the risk of issues emerging in the course of running, which should be dealt with in a comprehensive manner. Furthermore, the applicant/cross-respondent has the benefit of a registered mark, and should be entitled to pursue an infringement action with expedition and no more complication than is necessary. I do not think that there has been any delay in the real sense on its part, such as would disentitle it to have its claim dealt with with appropriate expedition. I also take into account that finding successive times for hearing parts of a case is disruptive to the schedule of the Court and its resources.