In the matter of Sol Sana Pty Ltd [2018] NSWSC 570

In the matter of Sol Sana Pty Ltd [2018] NSWSC 570

Although there were material overlaps between the Supreme Court proceedings and the Federal Court trade mark proceedings, the applicants did not discharge their onus of showing that it was more appropriate for the Supreme Court proceedings to be determined in the Federal Court. The Court gave decisive weight to unchallenged evidence that the registered marks were likely a wasting asset, that Sol Sana Pty Ltd held substantial stock and forward orders, and that the Federal Court proceedings faced a real risk of significant delay because of a prima facie sound security for costs application and a threshold issue about whether those proceedings were validly commenced.

Jurisdiction
Australia
Judgment Date
30 April 2018
Procedural Posture
Application Under S 1337 H of the Corporations Act 2001 (cth) to Transfer Supreme Court Proceedings to the Federal Court of Australia / Interlocutory Application
Outcome
Leave to file an amended interlocutory process was granted; the interlocutory application to transfer the proceedings under s 1337H of the Corporations Act 2001 (Cth) was dismissed with costs; directions were made for filing evidence and further directions.
Legal Topics
['cross Vesting Transfer' 'section 1337 H Corporations Act 2001 (cth)' 'trade Mark Licence Termination' 'winding Up' 'security for Costs' 'registered Trade Marks']
['corporations Law' 'civil Procedure' 'intellectual Property'] ['cross Vesting Transfer' 'section 1337 H Corporations Act 2001 (cth)' 'trade Mark Licence Termination' 'winding Up' 'security for Costs' 'registered Trade Marks']

Case Brief

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Procedural Posture

Application Under S 1337 H of the Corporations Act 2001 (cth) to Transfer Supreme Court Proceedings to the Federal Court of Australia / Interlocutory Application

Legal Issues

  1. 1 ['Whether, having regard to the interests of justice, it was more appropriate for the Supreme Court proceedings to be determined by the Federal Court of Australia under s 1337H of the Corporations Act 2001 (Cth).' 'Whether overlap between the Supreme Court proceedings and Federal Court trade mark infringement proceedings justified transfer.' 'Whether the risk of delay in the Federal Court proceedings, including from a security for costs application and a threshold issue about authority to commence those proceedings, weighed against transfer.' 'Whether the potential diminution in value of the registered marks and the existence of stock and forward orders required the Supreme Court proceedings to proceed without transfer.']

Ratio Decidendi

Although there were material overlaps between the Supreme Court proceedings and the Federal Court trade mark proceedings, the applicants did not discharge their onus of showing that it was more appropriate for the Supreme Court proceedings to be determined in the Federal Court. The Court gave decisive weight to unchallenged evidence that the registered marks were likely a wasting asset, that Sol Sana Pty Ltd held substantial stock and forward orders, and that the Federal Court proceedings faced a real risk of significant delay because of a prima facie sound security for costs application and a threshold issue about whether those proceedings were validly commenced.

Court Disposition

Leave to file an amended interlocutory process was granted; the interlocutory application to transfer the proceedings under s 1337H of the Corporations Act 2001 (Cth) was dismissed with costs; directions were made for filing evidence and further directions.

Orders

  • ['Grant leave to file an amended interlocutory process under s 1337H of the Corporations Act 2001 (Cth).' 'Dismiss the interlocutory application under s 1337H of the Corporations Act, with costs.' 'Direct the plaintiff to file and serve all remaining evidence (lay and expert) on or before 17 May 2018.' 'No further...