Herold v Seally (No 2) [2017] FCA 543

Herold v Seally (No 2) [2017] FCA 543

The Federal Court proceedings were not in a clearly inappropriate forum because they concerned Australian registered trade marks that could only be litigated in Australia under s 88 of the Trade Marks Act 1995 (Cth), Australian copyright issues appropriately determined in this Court, and alleged confidential information or trade secrets communicated to Herold in Australia. However, the California proceedings had not been shown to be vexatious or oppressive because the trade secrets and confidential information claims were wider than the Australian trade mark and copyright matters, and because the California proceedings included or potentially included additional defendants not shown to be...

Jurisdiction
Australia
Judgment Date
19 May 2017
Procedural Posture
Interlocutory Applications in Federal Court Proceedings Concerning an Anti Suit Injunction, Stay or Setting Aside of Proceedings, Service, Trade Marks, Copyright and Confidential Information/trade Secrets / Determination of Competing Interlocutory Applications
Outcome
Both interlocutory applications dismissed; each party to bear their own costs, with liberty to apply within 14 days for a different costs order.
Legal Topics
['anti Suit Injunctions' 'forum Non Conveniens' 'clearly Inappropriate Forum' 'vexatious or Oppressive Foreign Proceedings' 'stay of Proceedings' 'service Outside Australia' 'trade Mark Removal' 'confidential Information and Trade Secrets']
['private International Law' 'intellectual Property' 'trade Marks' 'copyright' 'equity' 'civil Procedure'] ['anti Suit Injunctions' 'forum Non Conveniens' 'clearly Inappropriate Forum' 'vexatious or Oppressive Foreign Proceedings' 'stay of Proceedings' 'service Outside Australia' 'trade Mark Removal' 'confidential Information and Trade Secrets']

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Procedural Posture

Interlocutory Applications in Federal Court Proceedings Concerning an Anti Suit Injunction, Stay or Setting Aside of Proceedings, Service, Trade Marks, Copyright and Confidential Information/trade Secrets / Determination of Competing Interlocutory Applications

Legal Issues

  1. 1 ['Whether the Federal Court proceedings were brought in a clearly inappropriate forum such that they should be stayed or set aside in whole or in part.' 'Whether the California proceedings were vexatious or oppressive according to principles of equity so as to justify an anti-suit injunction.' 'Whether complete relief for the respondents could be obtained in the Federal Court proceedings rather than in the California proceedings.' 'Whether the applicants should first seek a stay or strike out of the California proceedings before seeking an anti-suit injunction in Australia.']

Ratio Decidendi

The Federal Court proceedings were not in a clearly inappropriate forum because they concerned Australian registered trade marks that could only be litigated in Australia under s 88 of the Trade Marks Act 1995 (Cth), Australian copyright issues appropriately determined in this Court, and alleged confidential information or trade secrets communicated to Herold in Australia. However, the California proceedings had not been shown to be vexatious or oppressive because the trade secrets and confidential information claims were wider than the Australian trade mark and copyright matters, and because the California proceedings included or potentially included additional defendants not shown to be...

Court Disposition

Both interlocutory applications dismissed; each party to bear their own costs, with liberty to apply within 14 days for a different costs order.

Orders

  • ["The outstanding paragraph 1 of the applicants' amended interlocutory application dated and filed 9 January 2017 be dismissed." "The respondents' interlocutory application dated and filed 30 January 2017 be dismissed." 'Each party bear their own costs.' 'The parties have liberty to apply within 14 days for a...