Fleming’s Nurseries Pty Ltd v Hannaford

• Jurisdiction: Australia Federal only
• Judgment Date: 02 May 2008
• Neutral Citation: [2008] FCA 591
• Court: Federal Court

FEDERAL COURT OF AUSTRALIA

Fleming’s Nurseries Pty Ltd v Hannaford [2008] FCA 591

PRACTICE AND PROCEDURE – whether orders should be made for later determination of any questions of quantum of damages and account of profits – orders granted

Plant Variety Rights Act 1987 (Cth)

Plant Breeder’s Rights Act 1994 (Cth)

Zee Sweet Pty Ltd v Magnom Orchards Pty Ltd [2003] VSC 486 referred to

Reading Australia Pty Ltd v Australian Mutual Provident Society (1999) 217 ALR 495 followed

Olbers Co Ltd v Commonwealth (No 3) [2003] FCA 651 followed

Tallglen Pty Ltd v Pay TV Holdings Pty Ltd (1996) 22 ACSR 130 referred to

Dr Martens Australia Pty Ltd v Bata Shoe Company of Australia Pty Ltd(1997) 75 FCR 230 followed

Digi International Inc v Stallion Technologies Pty Ltd (2001) 53 IPR 529 followed

Novartis Crop Protection Australasia Pty Ltd v Orica Australia Pty Ltd [2001] FCA 1013 followed

Polaris Communications Pty Ltd v Dynamic Hearing Pty Ltd [2007] FCA 627 followed

Ringrow Pty Ltd v BP Australia Pty Ltd (2005) 222 ALR 306 referred to

Dunlop Pneumatic Tyre Co Ltd v New Garage and Motor Co Ltd [1915] AC 79 cited

FLEMING'S NURSERIES PTY LTD ACN 006 532 556 and HER MAJESTY THE QUEEN IN RIGHT OF CANADA (AS REPRESENTED BY THE MINISTER OF AGRICULTURE & AGRI-FOOD CANADA) v TONY HANNAFORD, ROSELYNE NURSERIES PTY LTD ACN 072 821 893 and GEOFFREY ROBERT BRITTON

VID 1432 OF 2005

KENNY J

2 MAY 2008

MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1432 OF 2005

BETWEEN:	FLEMING'S NURSERIES PTY LTD ACN 006 532 556 First Applicant HER MAJESTY THE QUEEN IN RIGHT OF CANADA (AS REPRESENTED BY THE MINISTER OF AGRICULTURE & AGRI-FOOD CANADA) Second Applicant
AND:	TONY HANNAFORD First Respondent ROSELYNE NURSERIES PTY LTD ACN 072 821 893 Second Respondent GEOFFREY ROBERT BRITTON Third Respondent TONY HANNAFORD Cross-Claimant HER MAJESTY THE QUEEN IN RIGHT OF CANADA (AS REPRESENTED BY THE MINISTER OF AGRICULTURE & AGRI-FOOD CANADA) First Cross-Respondent FLEMING'S NURSERIES PTY LTD (ACN 006 532 556) Second Cross-Respondent
JUDGE:	KENNY J
DATE OF ORDER:	2 MAY 2008
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1. Pursuant to Order 29 rule 2 of the Federal Court Rules there be decided at a separate trial all issues of liability in the proceedings, prior to any trial, if necessary, in respect of all issues of quantum of damages and/or account of profits.

2. The first respondent pay the applicants’ costs of the motion, notice of which is dated 7 February 2008.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1432 OF 2005

BETWEEN:	FLEMING'S NURSERIES PTY LTD ACN 006 532 556 First Applicant HER MAJESTY THE QUEEN IN RIGHT OF CANADA (AS REPRESENTED BY THE MINISTER OF AGRICULTURE & AGRI-FOOD CANADA) Second Applicant
AND:	TONY HANNAFORD First Respondent ROSELYNE NURSERIES PTY LTD ACN 072 821 893 Second Respondent GEOFFREY ROBERT BRITTON Third Respondent TONY HANNAFORD Cross-Claimant HER MAJESTY THE QUEEN IN RIGHT OF CANADA (AS REPRESENTED BY THE MINISTER OF AGRICULTURE & AGRI-FOOD CANADA) First Cross-Respondent FLEMING'S NURSERIES PTY LTD (ACN 006 532 556) Second Cross-Respondent

JUDGE:	KENNY J
DATE:	2 MAY 2008
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

INTRODUCTION

1 By notice of motion dated 7 February 2008, the applicants, Fleming’s Nurseries Pty Ltd (‘Fleming’s Nurseries’) and Her Majesty the Queen in right of Canada (‘Canada’), seek an order that, pursuant to O 29 r 2 of the Federal Court Rules, there be a separate trial of all issues of liability in the proceeding, prior to any trial of issues of quantum of damages and/or an account of profits. Tony Hannaford, Roselyne Nurseries Pty Ltd (‘Roselyne Nurseries’) and Geoffrey Robert Britton are the respondents in the original proceeding.

2 It is convenient at this point to set out the applicants’ claims and Mr Hannaford’s cross-claim, as currently pleaded, and the major issues that would be in contest at trial.

THE CLAIMS AND CROSS-CLAIM

3 The present action was commenced by the applicants, initially against Mr Hannaford, by an application filed with a statement of claim, on 9 November 2005. Pursuant to the orders of Justice Weinberg dated 10 March 2006, leave was granted to Mr Hannaford to file and serve his cross-claim dated 28 February 2006 against the respondents. Further, on 29 May 2007, Justice Marshall granted the applicants leave to join Roselyne Nurseries and Mr Britton to this action on and from 23 March 2007. The matter has been transferred into my docket following the publication of a Notice to Practitioners dated 15 April 2008.

4 According to the Further Amended Statement of Claim dated 23 March 2007, the applicants’ case against Mr Hannaford may be summarised as follows:

1. Canada has, since 3 February 1994, been the registered proprietor under the Plant Variety Rights Act 1987 (Cth) or the Plant Breeder’s Rights Act 1994 (Cth) (PBRA), of the plant breeder’s rights in the cherry plant variety prunus avium ‘Sumtare’, known as Sweetheart (‘Sweetheart cheery’). In particular, Canada claims rights conferred by s 11 of the PBRA in relation to the Sweetheart cherry.

2. Mr Hannaford conducts an orchard business, growing and selling fruit, at Torrens Valley Orchards, Gumeracha in South Australia under the registered South Australian business name “Torrens Valley Orchards”.

3. Canada alleges that Mr Hannaford has, without its licence, authority or consent, propagated and planted Sweetheart cherry trees. Further, Canada alleges that Mr Hannaford has, without the licence, authority or consent of Canada, licensed Roselyne Nurseries and Mr Britton to propagate Sweetheart cherry trees. Canada claims that these acts constituted a contravention of s 53(1)(a) of the PBRA, and thereby an infringement of Canada’s rights in Australia in respect of the Sweetheart cherry plant variety, as conferred by the PBRA. Amongst other things, Canada seeks declaratory and injunctive relief and damages or an account of profits pursuant to s 56(3) of the PBRA, and delivery up of the Sweetheart cherry plant varieties in Mr Hannaford’s possession.

4. Fleming’s Nurseries conducts a nursery business selling, among other plants, Sweetheart cherry trees and Black Star cherry trees pursuant to Non-Propagation Agreements.

5. Between 1997 and 2004, Fleming’s Nurseries sold and supplied to Mr Hannaford Sweetheart cherry trees under a number of Non-Propagation Agreements. In 2004, Fleming’s Nurseries also sold and supplied Black Star cherry trees to Mr Hannaford under a Non-Propagation Agreement.

6. These Non-Propagation Agreements containa term to the effect that Mr Hannaford would not undertake or attempt to propagate, or part with possession of, the cherry trees supplied under these agreements.

7. Fleming’s Nurseries alleges that Mr Hannaford has, without its licence, authority or consent, propagated or attempted to propagate the Sweetheart and Black Star cherry trees. Fleming’s Nurseries also alleges that Mr Hannaford parted with possession of the Sweetheart and Black Star cherry trees, and permitted Roselyne Nurseries or Mr Britton to propagate or attempt to propagate these cherry trees. By reason of these acts, Fleming’s Nurseries claims that Mr Hannaford has breached his obligations under the Non-Propagation Agreements, entitling Fleming’s Nurseries to seek relief against him. Fleming’s Nurseries seeks injunctive relief and damages against Mr Hannaford, as well as other relief.

5 Likewise, Canada’s case against Roselyne Nurseries and Mr Britton, as pleaded in the Further Amended Statement of Claim dated 23 March 2007, may be summarised as follows:

1. Roselyne Nurseries carries on a plant nursery business known as “Roselyne Nurseries”. Mr Britton is, amongst others, a director and shareholder of Roselyne Nurseries and is involved in its plant nursery business.

2. Canada alleges that Roselyne Nurseries and Mr Britton have, without its licence, authority or consent, propagated Sweetheart cherry trees and sold them.

3. Canada alleges that Mr Britton has procured, induced and/or directed the infringing acts of Roselyne Nurseries, or, acted in concert with Roselyne Nurseries and is thereby a joint tortfeasor in those acts. There is an equivalent allegation against Mr Hannaford in relation to both Roselyne Nurseries and Mr Britton.

4. Accordingly, Canada claims that there was an infringement by Roselyne Nurseries and Mr Britton of Canada’s rights in Australia in the Sweetheart cherry plant variety under the PBRA.

5. Against all respondents, Canada claims declaratory and injunctive relief, damages and/or an account of profits, and delivery up of Sweetheart cherry plants in their possession.

6 As stated above, Mr Hannaford also made a cross-claim against Canada. According to Mr Hannaford’s Further Amended Defence and Cross-Claim dated 15 August 2007, Mr Hannaford advanced claims including the following:

1. The Sweetheart cherry plant variety, although originally bred by the Agriculture Canada Research Station in Canada, was imported into Australia by the Tasmanian Department of Agriculture in 1986. Thereafter, this variety of cherry tree was released from quarantine and grown by various industry participants in Tasmania as well as available for release and use in Australia. Therefore, the Sweetheart cherry plant variety was not a new variety in 1994 when Canada was granted the rights under the PBRA.

2. For these reasons, Mr Hannaford asserted that, as...