From 1 July 2018 the Melbourne IP Pilot is being extended to Sydney and the other capital city localities to better promote the Court as a forum for IP litigation. From 1 July 2018, all IP filings anywhere in Australia are to be docketed to Her Honour Judge Baird in the Sydney Registry. Her Honour will allocate a first return date (which will be no longer than 3 weeks from the filing date and generally will be sooner). This may necessitate the need for a video link for registries outside Sydney and may also result in the times for such hearings occurring outside of usual Court hours (e.g. 9.00am or 4.30pm). During the course of the progress of the matter, Judge Baird may transfer the file to another Judge as directed for ultimate hearing/determination.

The Practice Direction will apply with any necessary modifications.

Introduction

This practice direction sets out arrangements for the management of intellectual property matters in the Federal Circuit Court, Melbourne.  It is to be read together with the Federal Circuit Court of Australia Act 1999 (Cth) (‘Federal Circuit Court Act’), the Federal Circuit Court Rules 2001 (Cth) (‘Federal Circuit Court Rules’), the Federal Court of Australia Act 1976 (Cth) (‘Federal Court Act’) and the Federal Court Rules 2011 (Cth) (‘Federal Court Rules’).

The Federal Court Act and the Federal Court Rules will apply where the Federal Circuit Court Rules do not deal with a particular matter.

It is anticipated that proceedings issued in this list shall be heard within 8 months of filing of the initiating application.

It is to take effect from 30 June 2017.

Parties should be aware that the Federal Circuit Court Rules  apply certain intellectual property rules of the Federal Court Rules, in particular divisions 34.2 and 34.3 of the Federal Court Rules.

This practice direction applies to all intellectual property matters and is intended to set out guiding principles for the conduct of these proceedings in the Federal Circuit Court, Melbourne.

Jurisdiction

Copyright Act 1968

  • All civil claims and matters under Parts V, VAA, IX and s. 248J.

There is no limit on the award of damages or the ability of the Court to award additional damages.

Trade Marks

  • Appeals from decisions of the Registrar of Trade Marks  :ss 35,56, 67, 83(2), 83A(8), 84A -84D and 104)
  • Infringement actions ss 120-128 and under ss 129 and 130
  • Revocation of registration under :ss 88 and 89
  • Decision on whether a person has used a trade mark under s 7
  • Determining whether Trade Mark has become Generic: ss 24, 87 and 89
  • Amendment or Cancellation of Registration under ss 85 and 86
  • Application for an Order to Remove a Trade Mark Registration for Non Use : s 92(3)
  • Application for rectification of Register by order of court under s 181
  • Variation of rules governing use of certification trade mark under s 182

Design

  • Appeals from Decisions of the Registrar of Designs : ss 28(5), 67(4), 68(6), 50(6), 52(7) and 54(4)
  • Ability to make a determination of the entitled person during proceedings before the court under s 53
  • Infringement actions under ss 71-76
  • Applications for Relief from Unjustified Threats under ss 77-81
  • Application for Compulsory Licences under s 90-92
  • Revocation of Registration under s 93
  • For Crown use provisions, provide a determination of the term of use of a design under s 98
  • Application for a declaration by a court of any Crown use under s 101
  • Application for the cessation of Crown use of a design under s 102
  • Rectification of Register under s 120.

Plant Breeders Rights Act 1994

The Court has jurisdiction in respect of alleged infringements under this Act.

Consumer Law

The Court has jurisdiction with respect to claims under the following provisions of the Competition and Consumer Act 2010 (formerly the Trade Practices Act 1975) and can combine these proceedings with proceedings in another area of its jurisdiction.

  • Section 46 (Misuse of Market Power)
  • Section IVB (Industry Codes)
  • Part XI (Application of the Australian Consumer Law as a law of the Commonwealth), and
  • Schedule 2 (Australian Consumer Law).

Associated Jurisdiction

The Court has jurisdiction conferred in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked (s 18).

In broad terms, that section invests the Court with jurisdiction in a federal matter, even if it has not otherwise been given that jurisdiction, as long as that matter is associated with another federal matter over which the Court does have jurisdiction.

Transfer

The Court also has jurisdiction to hear any matter within the jurisdiction of the Federal Court which the Federal Court transfers. The Court may transfer a proceeding to the Federal Court at the request of a party or of its own motion (Rule 8.2(1)

Commencing Proceedings

Subject to any contrary advice below the Federal Circuit Court Rules and forms apply to the commencement of these proceedings.

Panels

The Federal Circuit Court has established specialist panels for its general federal law jurisdictions and once an application which falls within a Panel jurisdiction is docketed to a Judge on the panel, it will generally remain with that Judge.  The following judges are assigned to be panel members for the purposes of this practice direction – Judges Riley, Wilson and McNab.

Forms

Rule 4.01 outlines the general requirements for commencing a proceeding including the requirement to file an approved form of application supported by an affidavit. However, note the exception in subrule 4.05(2).

The Approved forms in respect of IP matters commenced in the Court are as follows:

Copyright
Application under the Copyright Act

Trade Mark or Design
For Applications (other than appeals) - Application - General Federal Law 

For Appeals from decisions of the Registrar of Trade Marks or the Registrar of Designs Notice of Appeal (Intellectual Property) - Federal Court form (92)

What else is filed?

An affidavit or statement of claim or points of claim: see Subrule 4.05(1) and (2)

What is filed in response?

An affidavit or defence or points of defence, see Subrule 4.05(3)

http://www.federalcircuitcourt.gov.au/wps/wcm/connect/fccweb/forms-and-fees/court-forms/forms-approved/approved-forms-gfl

Rules

The Rules governing the practice and procedure of the Court are contained in the Federal Circuit Court Rules 2001.

However there is provision in the Rules for the Court to apply the Federal Court Rules and, in respect of intellectual property proceedings, the Court has applied Divisions 34.2 and 34.3 of the Federal Court Rules 2011 (Federal Court Rules) by way of Schedule 3 Part 2 of the Federal Circuit Court Rules 2001.

Pleadings - points of claim

The grounds of an application must explain briefly the basis on which the orders are sought.  In most instances the use of an application and affidavit will negate the need for pleadings but, where appropriate, points of claim will be ordered.   In such instance an applicant may attach a pleading by way of points of claim.  Such a pleading should observe the requirements of Federal Court Rules, Part 16, as identified in Schedule 3, Part 2 of the Federal Circuit Court Rules items 7 to 16.  It should identify in summary form the material facts on which the applicant relies, but not the evidence by which those facts are to be proved.  All necessary particulars must be given.

Costs

Schedule 1 of the Rules provide an events based costs regime however there is discretion to depart from this regime and a Judge may fix the amount of costs and disbursements payable. The Court may fix the maximum costs that may be recovered on a party/party basis.

If an order is made for costs to be paid in accordance with the scale of costs applied in the Federal Court then failing agreement costs may be referred for assessment in accordance with the Federal Court Rules.

Rule 21.03 provides that the Court may specify the maximum costs that may be recovered on a party and party basis and it is anticipated that this provision will be used by the Court in many matters dealt with in this list.

Further information on costs can be found on the website at:

http://www.federalcircuitcourt.gov.au/wps/wcm/connect/fccweb/forms-and-fees/fees-and-costs/legal-costs-generalfederallaw/legal-costs-general-law

Fees

The fees are set out in Schedule 1 Part 2 of the Federal Court and Federal Circuit Court Regulations 2012. and are generally less than those for the Federal Court.

A list of the current fees payable can be found on the website at:

http://www.federalcircuitcourt.gov.au/wps/wcm/connect/fccweb/forms-and-fees/fees-and-costs/fees-gfl/fees-gfl

Case Management

The conduct of proceedings on the first court date is fully detailed in Rules 10.01 to 10.03.

At the first court date the court may give directions, order the parties to mediation, fix a date of hearing, conduct an interim hearing or finally determine the application. Mediation will be conducted by Registrars of the Court or the parties may utilise private mediators appointed under the scheme conducted by the Victorian Bar. Rule 10.01 details the manner in which the Court may conduct proceedings on the first court date.  The parties and their legal representatives are required to attend court and must have a good knowledge of the case.

The directions hearing may be conducted by way of a case management conference. A case management conference will be conducted in every intellectual property proceeding unless the judge directs that a directions hearing will be conducted instead, or unless the applicant, when filing the application to commence the intellectual property proceeding, indicates that the applicant does not require a case management conference.

The purpose of the case management conference is formulate ways to manage the conduct of the intellectual property proceeding so as to bring it to trial in a manner proportionate to the nature of the dispute, the financial position the parties, the degree of complexity of the case, the importance of the case and the amount of money or issues in dispute. At the case management conference the parties or their legal representatives must be prepared to engage in discussion with the judge about all aspects of the intellectual property proceeding including factual and legal issues likely to require determination, procedural issues likely to arise and whether it is or is likely to be appropriate to make orders in relation to witness statements, expert evidence, discovery as well as cross examination of witnesses.

In the usual course of events the case management conference will be conducted in an informal manner in open court.

Once orders are made at the conclusion of the case management conference, the parties will not be permitted to rely on additional evidence or on discovery or on written submissions save in exceptional circumstances.

Trial

The Federal Circuit Court is a trial court and it is intended that proceedings be conducted expeditiously.

The court will take an active part in controlling the trial of an intellectual property proceeding. Prior to trial, the court will ordinarily make directions that involve the parties preparing, filing and serving – (a) a chronology of relevant events; (b) an outline of the case (limited to three A4 double spaced pages; (c) contentions of fact and law; (d) a form of proposed orders.

Cross examination will be controlled.

Where objection is taken to any affidavit material, parties are expected to privately confer in advance of the hearing with a view to discussing and resolving the objections, making appropriate amendments to the relevant affidavit material. Save in exceptional circumstances, the court will not permit significant amounts of court time to be devoted to the hearing and determination of evidentiary objections.

Where time can be saved, the parties should reduce openings and final addresses to written form.

The judge will endeavour to ensure that the trial does not take longer than two days in the majority of cases.

If the parties agree and where the judge considers it appropriate to do so, the judge may conduct the trial entirely on the papers.

Urgent Applications

Urgent IP matters including interlocutory injunctions, Anton Piller orders and orders in the nature of Norwich Pharmacal relief may be sought to alleviate the effects of alleged infringements.

Part 5, Rules 5.01 to 5.03 deal with urgent applications and the manner in which they can be brought before the Court. 

An application to deal with an urgent matter is to be accompanied by a draft of the order sought and can be made on the initiating application or any form approved for use in the Court.

In an urgent case where service on the respondent is not possible, on application the Court may make an order until a specified time or until further order.

Evidence on urgent applications shall be by way of affidavit or orally with the leave of the Court.  Rule 5.03 details the information that is required by the Court in dealing with urgent applications.

Ending a proceeding early

Pursuant to Rule 13.01 a party may discontinue an application or a response by filing a notice of discontinuance in accordance with the approved form.

A party discontinuing an application or part of an application may be liable for costs. Rule 13.02.


J PASCOE
Chief Judge
May 2017