A Nelson & Co Limited v Martin & Pleasance Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 18 March 2021
• Neutral Citation: [2021] FCA 242
• Court: Federal Court
• Date: 18 March 2021

Federal Court of Australia

A Nelson & Co Limited v Martin & Pleasance Pty Ltd (No 2) [2021] FCA 242

File number:	NSD 154 of 2021
Judgment of:	FLICK J
Date of judgment:	18 March 2021
Catchwords:	PRACTICE AND PROCEDURE – application for stay of interlocutory judgment – principles to be applied – whether appeal would be rendered nugatory – whether real risk that applicant seeking stay could not be returned substantially to its former position
Legislation:	Federal Court of Australia Act 1976 (Cth) s 24 Federal Court Rules 2011 (Cth) rr 36.08, 41.03
Cases cited:	A Nelson & Co Limited v Martin & Pleasance Pty Ltd [2021] FCA 228 Australian Competition and Consumer Commission v BMW (Australia) Limited (No. 2) [2003] FCA 864 Australian Workers’ Union v Pilkington (Aust) Ltd [2000] FCA 1169, (2000) 101 FCR 35 George v Fletcher [2011] FCA 952 House v The King (1936) 55 CLR 499 Jennings Construction Limited v Burgundy Royale Investments Pty Ltd (No 1) (1986) 161 CLR 681 Nichol v Discovery Africa Limited [2016] FCA 254 Philip Morris Limited v Nixon [1999] FCA 1281 Stefanovski v Digital Central Australia (Assets) Pty Ltd [2017] FCA 1121
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	23
Date of hearing:	18 March 2021
Counsel for the Applicants:	Mr M Hall SC
Solicitor for the Applicants:	Gilbert + Tobin
Counsel for the Respondents:	Mr M J Darke SC with Mr D B Larish
Solicitor for the Respondents:	Corrs Chambers Westgarth

ORDERS

		NSD 154 of 2021
BETWEEN:	A NELSON & CO LIMITED First Applicant ; BACH FLOWER REMEDIES LIMITED Second Applicant
AND:	MARTIN & PLEASANCE PTY LTD (ACN 006 935 888) First Respondent ; ALOE VERA INDUSTRIES PTY LTD (ACN 063 710 832) Second Respondent ; MARTIN & PLEASANCE WHOLESALE PTY LTD Third Respondent

order made by:	FLICK J
DATE OF ORDER:	18 MARCH 2021

THE COURT ORDERS THAT:

1. Upon the undertaking referred to in the following notation to the current orders, Order 2 of the Orders made on 17 March 2021 be stayed up to 4.00pm on 25 March 2021.

2. Costs reserved.

AND THE COURT NOTES THAT:

3. The Respondents undertake to the Court that during the period referred to in Order 1 of these Orders, that they will:

1. prosecute an application for leave to appeal and any appeal, if leave be granted, expeditiously; and

2. keep full and accurate records of all sales of the RestQ products (as defined in para 29 of the Statement of Claim filed on 2 March 2021).

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

FLICK J:

1. This proceeding was commenced by the filing in this Court of an Originating Application and Statement of Claim on 2 March 2021.

2. The matter first came before the Court as presently constituted on 10 March 2021 when an application for interlocutory relief was made by the Applicants. The matter proceeded to hearing on that day and judgment and reasons in support of the grant of interlocutory relief were published on 17 March 2021: A Nelson & Co Limited v Martin & Pleasance Pty Ltd [2021] FCA 228. Later on that day an application was made on behalf of the Respondents for a stay of the orders then made.

3. In support of the application, the Respondents provided a document titled Proposed Grounds of Appeal. A draft of Proposed Orders was also provided. The application has been made in advance of any Application for leave to appeal having been filed.

4. The application for the stay was heard this morning. It was an application quite properly made to the Court as previously constituted (cf. Jennings Construction Limited v Burgundy Royale Investments Pty Ltd (No 1) (1986) 161 CLR 681) and was made pursuant to r 41.03 of the Federal Court Rules 2011 (Cth) (the “Federal Court Rules”). A comparable power to grant a stay in circumstances where an appeal has been filed is to be found in r 36.08(2) of the Federal Court Rules. For the purposes of the application this morning it was common ground that the principles guiding the exercise of the discretionary power to grant a stay were the same whether it was r 36.08(2) or r 41.03 which was invoked.

5. A party seeking a stay, it is to be recognised, seeks to deprive the successful party of the “fruits” of the existing judgment in their favour: Stefanovski v Digital Central Australia (Assets) Pty Ltd [2017] FCA 1121 at [4] per Derrington J. But the party seeking the stay need not demonstrate “special circumstances”: George v Fletcher [2011] FCA 952 at [12] per Logan J; Nichol v Discovery Africa Limited [2016] FCA 254 at [7] per McKerracher J (“Nichol v Discovery Africa”). However, there must be some reason sufficient to justify an exercise of the discretion to grant the stay. In Philip Morris Limited v Nixon [1999] FCA 1281 (“Phillip Morris v Nixon”), Sackville, Hely and Gyles JJ summarised the position as follows:

[17] The general principles governing an application for a stay pending the determination of an appeal or application for leave to appeal are not in doubt. The party seeking a stay must demonstrate a reason, or an appropriate case, to warrant the exercise of a discretion in his or her favour. This requirement is not satisfied by the mere filing of an appeal or an application for leave to appeal: … The Court has a discretion whether or not to grant the stay, and if so, as to the terms that will be fair. In the exercise of the Court's discretion, it weighs consideration such as the balance of convenience and the competing rights of the parties, in particular whether prejudice will be caused by reason of the grant or withholding of a stay: … Within this framework, the Court exercises a broad discretion, and the party seeking a stay does not have to establish “special” circumstances: … In general, a party which has succeeded at the trial is entitled to the benefit of a judgment and thus to commence with the presumption that the judgment is correct: …

(citations omitted)

The Court is thus “given a discretion which is only circumscribed by the need to be satisfied that there be a reason sufficient in the circumstances to warrant the exercise of the discretion in favour of the grant of the stay”: Australian Workers’ Union v Pilkington (Aust) Ltd [2000] FCA 1169 at [10], (2000) 101 FCR 35 at 38 to 39 per Goldberg and Weinberg JJ.

6. A more recent summary of the principles to be applied is that provided as follows by Finkelstein J in Australian Competition and Consumer Commission v BMW (Australia) Limited (No. 2) [2003] FCA 864 (“ACCC v BMW”):

[5] The principles which govern a court's discretion in granting a stay pending the determination of an appeal are well known: see generally Alexander v Cambridge Credit Corp Ltd (Receivers Appointed) (1985) 2 NSWLR 685. Although it is not possible to state exhaustively the considerations that may be taken into account in the exercise of this discretion, it is appropriate that I mention those that bear on this application. The general rule is that a stay will be granted where there is a likelihood that a successful appeal will be rendered nugatory: … A court will also consider the balance of convenience and the competing rights of the parties as well as whether either party will be prejudiced by the stay: …. Even though a judge will generally not be required to speculate about the appellants prospects of success, it is well...