Quotable Cards Inc v Forte Graphics Pty Ltd [2002] FCA 1323

FEDERAL COURT OF AUSTRALIA

Quotable Cards Inc v Forte Graphics Pty Ltd [2002] FCA 1323 QUOTABLE CARDS INC v FORTE GRAPHICS PTY LTD A41 of 2002 FINN J CANBERRA 24 OCTOBER 2002

IN THE FEDERAL COURT OF AUSTRALIA

AUSTRALIAN CAPITAL TERRITORY DISTRICT REGISTRY A41 OF 2002

BETWEEN: QUOTABLE CARDS INC

APPLICANT

AND: FORTE GRAPHICS PTY LTD

ABN 60 011 029 324

RESPONDENT

JUDGE: FINN J

DATE OF ORDER: 24 OCTOBER 2002

WHERE MADE: CANBERRA

THE COURT ORDERS THAT: 1. The notice of motion be dismissed. 2. Costs be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

AUSTRALIAN CAPITAL TERRITORY DISTRICT REGISTRY A41 OF 2002

BETWEEN: QUOTABLE CARDS INC

APPLICANT

AND: FORTE GRAPHICS PTY LTD

ABN 60 011 029 324

RESPONDENT

JUDGE: FINN J

DATE: 24 OCTOBER 2002

PLACE: CANBERRA

REASONS FOR JUDGMENT 1 I have today dismissed a motion brought by the respondent, Forte Graphics Pty Ltd ("Forte") to have transferred to the Brisbane Registry of this Court proceedings brought against it by the applicant, Quotable Cards Inc ("Quotable") and in the alternative to have the proceedings transferred to the Federal Magistrates Court in Brisbane. These are my Reasons for dismissing the motion. 2 Quotable is a company incorporated in the State of New York in the United States. It has designed, produced and distributed a range of novelty products including fridge magnets, greeting cards, journals, address books etc which have, so it is alleged, a particular get-up. From 1999 Quotable has distributed its products in Australia through agents including Profet Pty Ltd trading as Bobangles ("Profet"). Profet also has been licensed to use the get-up to produce coffee mugs, journals and address books in Australia. The claim brought by Quotable against Forte, put shortly, is that Forte has produced products of the type produced by Quotable and using the get-up employed by Quotable. 3 The application has been brought under ss 52, 53(a) and 53(c) of the Trade Practices Act 1974 (Cth) and at common law for passing off. It is not apparent at this early stage that the injury suffered by the applicant (assuming its case is made out) will sound in pecuniary relief of any significant amount. Having said this, as I indicated when dismissing the motion, the application to have the matter remitted to the Magistrates Court either in Brisbane or in Canberra is premature, the more so in light of foreshadowed amendments to the statement of claim. 4 On the hearing of the motion it was submitted on behalf of Forte in light of an affidavit put on by Mr Donnelly, the Managing Director of the company, that the factors which pointed to a transfer of these proceedings to Brisbane were; first, the respondent is based in Brisbane and Mr Donnelly and another full-time sales representative at least are likely to be witnesses; secondly, the applicant is an overseas corporation and would not be affected if the proceedings were held elsewhere than in the ACT and it does not carry on business in Australia; thirdly, Queensland is the respondent's main market; fourthly, the respondent will have to incur additional expense if the proceedings continue in the ACT; and, fifthly, the witnesses likely to be called to prove matters such as reputation etc are likely to come from places other than the ACT. 5 Quotable has put on an affidavit of a Ms Cocker who is the Managing Director of Profet. The burden of Ms Cocker's affidavit is that Profet is, in effect, the surrogate applicant in this proceedings in that: (a) there is much in the evidence that will be relied upon by Quotable that will in fact be provided by Profet; (b) instructions in the proceedings by Quotable are given via Profet; (c) witnesses, particularly Ms Cocker herself and one of Profet's employees, will give evidence and both are Canberra residents; (d) Profet markets the applicant's and its own licensed products nationally and has agents in most States; and (e) while the statement of claim does not refer specifically to the ACT, Profet does sell and promote Quotable's products in the Territory such that the market in the Territory may have been damaged by the alleged passing off and contraventions of the Trade Practices Act engaged in by Forte. Additionally, discovery will be conducted in any event out of Canberra and, it is said, Profet's own records and documents will be utilised by the applicant in these proceedings. 6 I should say there is a certain anomaly in the frame of these proceedings in that Profet appears to have the practical carriage of the matter and has a clear interest in the outcome of it while not being a party to the proceedings. I have mentioned this matter to the applicant for its consideration. 7 Turning to the transfer motion the test to be applied in an application for an order under s 48 of the Federal Court of Australia Act 1976 (Cth) or in any exercise of the Court's powers under O 10 r 1(2)(f) of the Federal Court Rules is well accepted. As was said by the Full Court in National Mutual Pty Ltd v Sentry Corporation (1988) 19 FCR 155 at 162: "[u]ltimately the test is: where can the case be conducted or continued most suitably bearing in mind the interest of all the parties, the ends of justice in the determination of the issues between them, and the most efficient administration of the Court. It cannot and should not, in our opinion, be defined more closely or precisely". 8 When Forte filed the motion it did not have available to it Ms Cocker's affidavit. The material that had then been served on the respondent was such as to make it not apparent in any reasonable fashion why the ACT had been selected as the registry in which to initiate this proceeding. I say this in part to indicate why the costs order that I propose to make takes the form it does. In light of Ms Cocker's affidavit, though, and of foreshadowed amendment to the statement of claim, I am not satisfied that the proceeding is an appropriate one to be transferred from this registry. 9 So far as the question of witnesses are concerned, it does not seem to me to be significantly balanced in favour of one party over the other. It is clear there will be both Canberra-based and Brisbane-based witnesses. It is also likely that witnesses will be required from Sydney. If such is the case, in my view, Canberra is a more convenient location than Brisbane for such witnesses. Profet's position in the proceedings at the moment may be anomalous but the nature of Profet's practical involvement in the matter does provide a sufficient connection with the Territory in the conduct of these proceedings as makes it appropriate for the proceeding to be conducted in this Registry. The company provides the filter for Quotable's claim of which it will have the practical carriage. In the circumstances I do not consider that the efficient administration of this Court or the ends of justice warrant transfer of the proceedings. The interests of the parties are evenly balanced. In those circumstances I consider it was open to the applicant properly to make the choice that it did and that choice should not be interfered with. For this reason I considered that the transfer application should be dismissed. 10 I foreshadowed, though, that I think the motion was properly brought. In these circumstances I consider the appropriate order is that costs be reserved. I earlier indicated I think the application for remission to the Magistrates Court is premature, though this, as I indicated to the parties, is a matter I will continue to monitor. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn.

Associate: Dated: 24 October 2002

Counsel for the Applicant: Mr D Studdy

Solicitor for the Applicant: Bradley Allen

Counsel for the Respondent: Mr A Bennett

Solicitor for the Respondent: Bennett & Philp

Date of Hearing: 24 October 2002

Date of Judgment: 24 October 2002