Karlsson v Griffith University

1. [1]

   THE COURT: On 14 August 2020, we dismissed the applicant’s summons for leave to appeal for want of jurisdiction. These are our reasons for making that order.

2. [2]

   The applicant sought leave to appeal from two decisions of the Supreme Court in Karlsson v Griffith University [2019] NSWSC 1335 (the first judgment) and Karlsson v Griffith University [2020] NSWSC 365 (the second judgment).

3. [3]

   In the first judgment, Adamson J struck out the applicant’s pleading and set out a regime to facilitate the matter being re-pleaded. In the second judgment, Wright J refused the applicant leave to file a proposed further amended statement of claim dated 21 October 2019 and dismissed the proceedings under UCPR r 13.4(1) with costs. Wright J considered that the applicant’s proposed further amended statement of claim sought to plead a trade mark infringement and the making of false and misleading representations (at [55]). In that further amended statement of claim, the applicant sought damages, and/or equitable compensation, and/or an “equitable an account of profits” and interest, totalling $2,000,000.

4. [4]

   On 13 July 2020, this Court made orders listing the matter for a leave only hearing on 14 August 2020. The question of whether this application for leave to appeal was competent was also stood over to 14 August 2020.

5. [5]

   The issue concerning competence is whether the question of relief and jurisdiction in this Court is governed by s 7(5) of the Jurisdiction of Courts (Cross-vesting) Act 1987 (Cth) (the Cross-vesting Act) which provides as follows:

6. [6]

   That section prohibits both the institution and the determination of appeals which include a matter for determination in a proceeding by way of an appeal being a matter “arising under” an Act specified in the Schedule to the Cross-vesting Act.

7. [7]

   As this Court reiterated in Eberstaller v Poulos (2014) 87 NSWLR 394; [2014] NSWCA 211 at [20], it is critical to determine at the outset whether a court whose jurisdiction is sought to be invoked in fact has jurisdiction. There is no doubt that the judges of the Common Law Division in the first judgment and the second judgment had jurisdiction to consider the alleged infringement of a registered trade mark arising under the Trade Marks Act 1995 (Cth). The NSW Supreme Court is a “prescribed court” with jurisdiction to hear an action for an infringement of a registered trade mark: ss 125, 190 and 192 Trade Marks Act 1995. [1]

8. [8]

   If s 7(5) of the Cross-vesting Act applies, however, this Court does not have jurisdiction to hear the proceeding because the application can only be instituted in and determined by the Full Court of the Federal Court of Australia: Eberstaller v Poulos, at [25]; Morris Finance Ltd v Brown (2016) 93 NSWLR 551; [2016] NSWCA 343, at [21]-[23]; Boensch v Pascoe; [2016] NSWCA 191; (2016) 311 FLR 101, at [10]. [2]

9. [9]

   In Bramco Electronics Pty Ltd v ATF Mining Electrics Proprietary Ltd (2013) 86 NSWLR 115; [2013] NSWCA 392 Meagher JA held (at [5]) that the expression “arising under” in s 7(5) is to be given the same meaning as it has in Chapter III of the Constitution.

10. [10]

    Where a party seeks to bring an appeal from a decision of a single judge of the Supreme Court of a State or Territory where the litigation involves the federal statutes identified in the Schedule to the Cross-vesting Act it is essential to bear in mind s 7 of the Cross-vesting Act. That provision presupposes that an appeal may contain a number of matters for determination. If it appears that the “only matters for determination” in the appeal are matters which do not arise under an Act in the Schedule, an appeal from a decision of a single judge lies to the relevant State or Territory appellate court: s 7(3).

11. [11]

    However, where it appears that “a matter for determination” in an appeal is a matter arising under an Act specified in the Schedule then the prohibition in s 7(5) applies. The applicant in such a case is prohibited from instituting an appeal other than in an appropriate federal court, subject to ss7(7) and 7(8) which here do not apply. A State or Territory court is prohibited from determining an appeal, should the appeal be instituted in a non-federal court in contravention of the first prohibition. In the seminal authority concerning the interpretation of s 76(ii) of the Constitution, Latham CJ in R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett (1945) 70 CLR 141; [1945] HCA 50 said at 154:

12. [12]

    In Felton v Mulligan (1971) 124 CLR 367; [1971] HCA 39 each of the members of the Court addressed the differences in language between a “matter ... involving its interpretation” in s 76(i) and “matter ... arising under…” in s 76(ii) of the Constitution. Barwick CJ (part of the majority in that case), at 374, explained:

13. [13]

    In CGU Insurance Limited v Blakeley (2016) 259 CLR 339 at 351-2; [2016] HCA 2 at [29] the High Court per French CJ, Kiefel, Bell and Keane JJ elaborated on the statement of Latham CJ in R v Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett about the words “arising under” in s 76(ii) of the Constitution:

14. [14]

    A claim for infringement of a trade mark is a claim in respect of property which is the creation of federal law, relevantly the Trade Marks Act 1995.

15. [15]

    That is not the end of the present enquiry. The Schedule to the Cross-vesting Act identifies the Trade Marks Act 1955 (Cth) but not the Trade Marks Act 1995. Griffith University contends that s 10 of the Acts Interpretation Act 1901 (Cth) has the effect of treating the reference to the Trade Marks Act 1955 as a reference to the Trade Marks Act 1995.

16. [16]

    The Trade Marks Act 1955 was repealed by s 232 of the Trade Marks Act 1995. By s 2 the Trade Marks Act 1995, Part 1 (Preliminary) commenced on the day of Royal Assent (17 October 1995) and the other Parts commenced on 1 January 1996. The Trade Marks Act 1995 is and has been the relevant Act dealing with any trade mark rights asserted by Ms Karlsson.

17. [17]

    By reason of the reference to the repealed Trade Marks Act 1955 in the Schedule to the Cross-vesting Act resort must be had to s 10 of the Acts Interpretation Act 1901 if a reference to that Act is to be read as a reference to the Trade Marks Act 1995. Section 10 provides:

18. [18]

    The issue is whether the whole of the repealed Trade Marks Act 1955 can be construed as a reference to the Trade Marks Act 1995 by reason of the operation of s 10 of the Acts Interpretation Act.

19. [19]

    Pearce (Dennis Pearce, Interpretation Acts in Australia, (1st ed 2018)) suggests that s 10 “(since its amendment in 2011) deals with the three situations [set out below] by requiring the reference to be read as if it included the Act or a provision of an Act as amended from time to time or as remade” (at 3.28). Pearce writes (at 3.27) that:

20. [20]

    In Woolworths Ltd v Lister [2004] NSWCA 292 Handley JA (Beazley and Ipp JJA agreeing) dealt with the cognate provision to s 10 of the federal Act, s 68(3)(a) of the Interpretation Act 1987 (NSW). His Honour said:

21. [21]

    After conducting the high level comparison between the 1904 Act and the 1988 Act, Handley JA concluded:

22. [22]

    It is apparent from a comparison of the two Acts here in question that the 1955 Trade Marks Act, in a broad sense, was re-enacted in 1995, albeit with extensive modifications to take account, in particular, of international developments in trade marks since the 1955 Act. The purpose of both Trade Marks Acts is to provide for the registration of trade marks and to set out the rights deriving from registration of a trade mark. In the 1995 Act, some changes have been made to reflect international trends toward uniformity and some attempts have been made to simplify language and to replace terms in the old legislation with simpler ones.

23. [23]

    As a leading text in this area explains, the Trade Marks Act 1995 contains a significantly greater number of provisions than the 1955 Act. Shanahan's Australian Law of Trade Marks and Passing Off (Mark Davison, Ian Horak, Shanahan's Australian Law of Trade Marks and Passing Off (online ed, 2020)) states:

24. [24]

    However, despite these additional provisions (e.g. dealing with collective trade marks), and approached in the same way as Handley JA approached a similar problem in Woolworths v Lister, the Trade Marks Act 1995 is not an entirely new and different enactment. The 1995 Act does not alter the essential nature of the Trade Marks Act 1955. It deals at a high level with essentially the same subject matter to achieve the same or similar ends, namely, the regulation of trade marks.

25. [25]

    Accordingly, s 7(5) of the Cross-Vesting Act applies to this case it being a matter arising under the Trade Marks Act 1995. It follows that this Court does not have jurisdiction to hear any appeal. As this is not a case where the Court has commenced “to hear a proceeding by way of an appeal” s 7(7) of the Cross-vesting Act does not apply.

26. [26]

    The respondent submitted that claims that are unarguable, doomed to fail, untenable, or not pursued bona fide are colourable, citing Burgundy Royale Investments Pty Ltd v Westpac Banking Corporation (1987) 18 FCR 212 at 219 and Cook v Pasminco Ltd (2000) 99 FCR 548; [2000] FCA 677 at [16]. The respondent relied on findings made by Wright J in summarily dismissing the proceeding that the proceeding had no reasonable prospects of success, that claims for compensation, on any increasing basis, were made arbitrarily and without any obvious basis and was an abuse of process (the second judgment at [111]-[115]).

27. [27]

    We reject that submission. To be colourable a claim must be made for the improper purpose of fabricating jurisdiction. The mere fact that a claim is struck out as untenable does not mean it is colourable: Johnson Tiles Pty Ltd (ACN 004 576 103) v Esso Australia Ltd (2000) 104 FCR 564; [2000] FCA 1572 French J at [88] (Beaumont and Finkelstein JJ agreeing). We do not understand the judgment of Lindgren J in Cook v Pasminco Ltd to provide any different test. That was a case where it was alleged that claims under ss 75AD and 75AG of the Trade Practices Act 1974 (Cth) had been added to common law causes of action in negligence and nuisance for the purpose of attracting federal jurisdiction and were thus colourable. That is made clear by the central question posed by Lindgren J at [14] “Are the federal claims here ‘genuine’ and ‘non-colourable’ or are they fabricated in order to bring the common law claims within the Court’s jurisdiction?”. That was the context for his Honour’s references elsewhere in the judgment to the federal claims being “doomed to fail” and “clearly untenable” and thus colourable.

28. [28]

    In the present case it does not follow from the conclusion that the proceedings were frivolous, vexatious and an abuse of process that the Trade Marks Act claim was colourable. The first judgment concerned the application of UCPR 14.28 to strike out Ms Karlsson’s document filed with the Court on 31 July 2019. Her Honour’s ultimate conclusion (at [16]) was to the effect that the form of the pleading was so embarrassing Griffith University should not be required to plead to it. Nevertheless, the claim was plainly one arising under the Trade Marks Act 1995. In the second judgment, Wright J considered the factual background including the trade mark claims. His Honour’s conclusions on leave to file the proposed pleading were at [54] to [79]. Wright J summarily dismissed the proceedings pursuant to r 13.4(1) of UCPR on the basis that the proceedings were frivolous, vexatious and an abuse of process. It is clear, however, that his Honour considered that the applicant’s proposed further amended statement of claim sought to plead a trade mark infringement.

29. [29]

    We reject the submission that Ms Karlsson’s claim was colourable in the sense of being a claim made for the improper purpose of fabricating jurisdiction.

Conclusion

1. [30]

   The reference to the Trade Marks Act 1955 is to be taken as a reference to the Trade Marks Act 1995 by operation of s 10(b) of the Acts Interpretation Act 1901 (Cth). Section 7(5) of the Cross-vesting Act is engaged. This Court has no jurisdiction to hear and determine Ms Karlsson’s application for leave to appeal, nor to transfer the application to the Federal Court: Eberstaller v Poulos at [29]-[32]. The appropriate order is to dismiss the Summons seeking leave to appeal for want of jurisdiction.

2. [31]

   The Court does possess jurisdiction to consider whether or not it has jurisdiction. It follows that the Court has power to award costs. Whilst, prima facie, there was power to award the costs of this application, [8] counsel for Griffith University submitted that as the Court rather than the parties had raised the question of jurisdiction, Griffith University would not seek the costs of the jurisdiction issue. As the jurisdiction issue has been dispositive, we determined that no order as to costs should be made.

3. [32]

   For these reasons we made the order referred to at [1] above.