Dr Martens Australia Pty Ltd & Ors v Figgins Holdings Pty Ltd & Ors Dr Martens Australia Pty Ltd & Ors v Bata Shoe Company of Australia Pty Ltd & Ors Dr Martens Australia Pty Ltd & Ors v Rivers (Aust) Pty Ltd & Ors Dr Martens Australia Pty Ltd & Ors v Windsor Smith Pty Ltd & Ors Dr Martens Australia Pty Ltd & Ors v Diana Ferrari Pty Ltd & Ors Dr Martens Australia Pty Ltd & Ors v Clarks Shoes Ltd & Ors [1996] FCA 871

IN THE FEDERAL COURT OF AUSTRALIA) VICTORIA DISTRICT REGISTRY ) GENERAL DIVISION ) No VG 958 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH (Applicants) AND: FIGGINS HOLDINGS PTY LTD; SASHA SHOES PTY LTD; KEITH JAMES CORN; MARK FAGENBLAT; JEFFREY DONALD FIGGINS; DAVID MAYNE VENNER; LORRAINE JOY FIGGINS; MARK LANE ROBERTSON; EVAN MURRAY MacGREGOR; TERENCE ROY GRIFFIN; FREDERICK HALCOMB MOYLAN (Respondents) No VG 959 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH (Applicants) AND: BATA SHOE COMPANY OF AUSTRALIA PTY LTD; JOHN RICHARD BECKWITH; GORDON HERBERT THRING; MALCOLM WILLIAM GRANT; ALAN KELLY (Respondents) No VG 960 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH (Applicants) AND: RIVERS (AUST) PTY LTD; LOUISE ROBYN GOODMAN; PHILIP HARRY GOODMAN (Respondents)

No VG 962 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH (Applicants) AND: WINDSOR SMITH PTY LTD; CHICAGO BOOT COMPANY PTY LTD; BRETT MANCE; CRAIG MANCE; LEANNE MANCE; DIANE MANCE (Respondents) No VG 963 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH; DR ING. FUNCK GMBH & CO. KG (Applicants) AND: DIANA FERRARI PTY LTD; JOHN HARPER KIRKHOPE; ANTHONY PETER KIRKHOPE (Respondents) No VG 964 of 1995 BETWEEN: DR MARTENS AUSTRALIA PTY LTD; R. GRIGGS & CO LTD; DR ING. HERBERT FUNCK; ELISABETH MAERTENS; WOLLASTON VULCANISING COMPANY LTD; DR MARTENS INTERNATIONAL TRADING GMBH (Applicants) AND: CLARKS SHOES LIMITED; RAYDEN JOHN CRAWLEY; JOHN STANLEY McKINSTRY; TIZIANA PITTUI (Respondents) CORAM: Ryan J DATE: 31 May 1996 PLACE: Melbourne REASONS FOR JUDGMENT RYAN J: In each of six matters before the Court the applicants have claimed relief for contraventions of the Trade Practices Act, passing off, and, in one instance, infringement of trademark arising from the distribution and sale in Australia of footwear which is said to have a combination of distinctive features allegedly distinguishing footwear made to designs originated by the late Dr Martens which is now manufactured by Wollaston Vulcanising Co Ltd or pursuant to licences granted by that company or by entities associated with it. Some deficiencies in the statement of claim in each action were exposed by discussion and submission in the course of a directions hearing before Merkel J on 27 February 1996. Accordingly, his Honour ordered by consent: 1. That the applicants file and serve any amended statement of claim on or before 12 March 1996. 2. That the respondents file and serve any request for further and better particulars of the applicants' statement of claim or amended statement of claim, as the case may be, on or before 29 March 1996. 3. That the applicants provide further and better particulars of their statement of claim or amended statement of claim, as the case may be, on or before 18 April 1996. 4. Subject to paragraph 5 below, the respondents shall file and serve their defence and any cross-claim on or before 4 May 1996. 5. Any motion to strike out the applicants' statement of claim, or amended statement of claim, as the case may be, be filed and served by 25 April 1996 and, should the respondents file and serve such a motion, the respondents may choose not to comply with Order 4 hereof until the hearing of the said motion; 6. Any motion seeking to strike out the applicants' statement of claim or amended statement of claim, as the case may be, or seeking security for costs on motion or application be returnable on 10 May 1996. Accordingly, in the light of those orders, his Honour adjourned the directions hearing to 10 May 1996 and reserved the costs of the hearing on 27 February 1996. The applicants filed and served amended statements of claim but, after requests for further and better particulars of the new pleadings had been made and answers given to those requests, motions to strike out the various statements of claim were filed as contemplated by the order of Merkel J. When those motions came on before Jenkinson J on 10 May 1996, they were adjourned by way of a special fixture to this day. Since then, the applicants have produced further amended statements of claim and, by motions on notice filed on 26 May 1996, seek leave to substitute in each case that further amended pleading for the second version of the statement of claim. The draft further amended statement of claim does not incorporate in all respects the particulars which had been provided in response to the request for further and better particulars of the second version of each statement of claim. The respondents, while not generally opposing leave further to amend the respective statements of claim, have urged that they should have a further opportunity to seek further and better particulars of the draft third version and to consider in the light of those particulars, or such particulars as may be provided, whether to seek to strike out the third version or part of it. Counsel for the respondents have made general submissions to indicate why they contend the third version in each case is embarrassing or fails in some respect or other to disclose a particular cause of action inhering in one or more of the applicants. Moreover, Mr Macaw QC, who appears with Mr Hess for the applicants, has conceded that even the draft third version of the statement of claim which is exhibit CRH1 to the affidavit of Cameron Roy Harvey filed on 27 May 1996 in each matter requires further amendment even if no account be taken of the particular criticisms which have been articulated on behalf of the various respondents. I am far from being persuaded that all of the embarrassing features of the third version of the statement of claim to which attention has been drawn can be overcome by the provision of appropriate particulars. Taking the draft further amended statement of claim in proceeding number VG 962 of 1995 as an example, I doubt, first, whether the allegations against the third, fourth, fifth and sixth respondents as directors of the first and second respondents are sufficient, if proved, to fix them with liability pursuant to s. 75B of the Trade Practices Act in accordance with the principles enunciated for example in Yorke v Lucas (1985) 158 CLR 661 at 670. However, most of the authorities to which Mr Garde QC referred me in the course of a supplementary submission were decided in the context of final relief, and it may be that the reservations which I have go more to matters of proof rather than to pleadings on which the applicants may be prepared to take an evidentiary risk. The pleading does not appear to establish any sufficient link between the third and fourth applicants and the other facts pleaded to give rise to an identifiable cause of action inhering in either of those applicants. Nor do I consider that the articles, which allegedly implicate the respondents in the acts of passing off or contravention of the Trade Practices Act which have been pleaded, are sufficiently identified in the body of the pleadings, as distinct from the illustrative non-exhaustive particulars subjoined to paragraph 20 of the draft further amended statement of claim. Sufficient identification in the manner suggested, or exhaustively in the particulars as suggested by Mr Macaw QC in reply, would do much to overcome the embarrassment and difficulties with discovery to which Ms Strong of counsel for the respondents in VG 960 and 964 of 1995 in particular pointed in her submissions. A discrete matter was raised by Mr McGowan of counsel for the respondents in proceeding numbered VG 963 of 1995 when he identified the fact that the trademark, which on the pleadings in that action has allegedly been infringed, has not yet been registered. In the light of the authorities to which he referred, it is clear that if that factual situation obtains at the time when the Court finally disposes of that application, the Court would be precluded from giving any relief in respect of the cause of action for infringement of trade marks. However, I consider it at least arguable that the Court has a discretion not to strike out the pleading on that ground here and now but either to defer consideration of that matter or to stay the action or the relevant part of it until the conclusion of the application for registration of the trademark. Accordingly, I consider that evidentiary material bearing on the exercise of that discretion should be put before the Court before a final conclusion is reached on whether or not to strike out those parts of the statement of claim in that particular action numbered VG 963 of 1995. In the light of all these circumstances, I consider it appropriate to make the following orders in each matter: 1. That the applicants have leave to file and serve by 14 June 1996 a further amended statement of claim in conformity with exhibit CRH1 as further amended and expanded by the incorporation of such additional particulars as the applicants may be advised. 2. That the respondents, without prejudice to their right to move to strike out the further amended statement of claim filed in accordance with paragraph 1 of this order, have leave by 28 June 1996, to file and serve a request for further and better particulars of the said further amended statement of claim. 3. That the applicants, by 12 July 1996, file and serve further and better particulars in response to the request, if any, made in accordance with the leave granted by paragraph 2 of this order.

4. That the applicants have leave, if so advised, to file and serve by 26 July 1996 a motion to strike out the whole or any part of the further amended statement of claim filed in accordance with paragraph 1 of this order and further or alternatively seeking an order for the provision of particulars thereof in addition to the particulars incorporated in the said further amended statement of claim or provided in accordance with paragraph 3 of this order. 5. That in the event of their exercising the leave granted by paragraph 4 of this order, the respondents file and serve, together with the said notion of motion, written submissions in support thereof. 6. That the applicants, not later than two days before the return of the motion on notice referred to in paragraph 4 of this order, file and serve written submissions in answer to those stipulated by paragraph 5 of this order. 7. That in the event that the leave granted by paragraph 4 of this order be not exercised, the respondents file and serve by 9 August 1996 a defence to the further amended statement of claim. 8. That the applicants pay the respondents' costs thrown away as a result of the amendment for which leave is granted by paragraph 1 of this order including, but not limited to, the costs of the directions hearing on 27 February 1996 and of the motion on notice dated 26 April 1996, together with their costs of this day, such costs to be taxed. 9. That liberty be reserved to any party to apply on not less than 72 hours' notice in writing to the other parties. I certify that this and the preceding eight (8) pages are a true copy of the Reasons for Judgment of his Honour Justice Ryan. Associate: Date:

VG 958/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Mr C.D. Golvan (except Seventh Respondent) Solicitors for Respondents: McKean & Park VG 959/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Mr G.H. Garde, QC with Mr M.G. Roberts Solicitors for Respondents: John Beckwith & Associates VG 960/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Ms E.A. Strong Solicitors for Respondents: Freehill Hollingdale & Page VG 962/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Mr C.D. Golvan Solicitors for Respondents: Baldwins VG 963/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Mr G.C. McGowan Solicitors for Respondents: Deacons Graham & James VG 964/95 Counsel for Applicants: Mr R.C. Macaw, QC with Mr B.J. Hess Solicitors for Applicants: Coltmans Price Brent Counsel for Respondents: Ms E.A. Strong Solicitors for Respondents: Mills Oakley Date of Hearing: 31 May 1996 Date of Judgment: 31 May 1996