RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd (No 2) [2000] FCA 22 (21 January 2000)

Last Updated: 24 January 2000

FEDERAL COURT OF AUSTRALIA

RGC Mineral Sands Ltd v Wimmera Industrial Minerals Pty Ltd (No 2) [2000] FCA 22

PRACTICE AND PROCEDURE - motion for summary dismissal - proceeding raising only issues that are identical to those required to be determined by Commissioner for Patents by reason of respondent's opposition to grant of patent to applicant - as opponent before Commissioner, present respondent alleging applicant obtained invention from respondent - applicant seeking declarations, injunctions and statutory damages and unidentified other orders for respondent's alleged contravention of s 52 of Trade Practices Act 1974 in misrepresenting that there had been "obtaining" where there had not been - whether summary dismissal should be ordered having regard to fact that present proceeding already ordered to be stayed pending hearing and determination of opposition proceeding.

Commissioner of Patents v Microcell Ltd [1958] HCA 58; (1959) 102 CLR 232 cited

Philips Electronics NV v Remington Products Australia Pty Ltd (1997) 39 IPR 303 (FCA/Lehane J) distinguished

Forster v Jododex Australia Pty Ltd [1972] HCA 61; (1972) 127 CLR 421 followed

Slattery v Public Service Board [1983] 3 NSWLR 41 cited

Concrete Constructions (NSW) Pty Ltd v Nelson [1990] HCA 17; (1990) 169 CLR 594 followed

Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435 (FCA/Gummow J) distinguished

RGC MINERAL SANDS LIMITED v WIMMERA INDUSTRIAL MINERALS PTY LIMITED

NG 598 OF 1998

LINDGREN J

21 JANUARY 2000

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 598 OF 1998

BETWEEN:	RGC MINERAL SANDS LIMITED (ACN 008 763 666) APPLICANT
AND:	WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130) RESPONDENT
JUDGE:	LINDGREN J
DATE OF ORDER:	21 JANUARY 2000
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. Pursuant to Order 20 rule 2 of the Federal Court Rules, the proceeding be dismissed generally.

2. The applicant pay the respondent's costs.

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

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 598 OF 1998

BETWEEN:	RGC MINERAL SANDS LIMITED (ACN 008 763 666) APPLICANT
AND:	WIMMERA INDUSTRIAL MINERALS PTY LIMITED (ACN 004 302 130) RESPONDENT

JUDGE:	LINDGREN J
DATE:	21 JANUARY 2000
PLACE:	SYDNEY

REASONS FOR JUDGMENT (No 2)

INTRODUCTION

1 The respondent ("Wimmera") moves on an amended notice of motion filed on 19 July 1999. The primary relief now sought by the motion is summary dismissal pursuant to O 20 r 2, which provides as follows:

"(1) Where in any proceeding it appears to the Court that in relation to the proceeding generally or in relation to any claim for relief in the proceeding -

(a) no reasonable cause of action is disclosed;

(b) the proceeding is frivolous or vexatious; or

(c) the proceeding is an abuse of the process of the Court,

the Court may order that the proceeding be stayed or dismissed generally or in relation to any claim for relief in the proceeding.

(2) The Court may receive evidence on the hearing of an application for an order under sub-rule (1)."

Wimmera submits that the proceeding is vexatious and that in one respect no reasonable cause of action is disclosed.

2 Wimmera may succeed only if the Court is persuaded to the requisite high level of satisfaction, variously described in the authorities, that a ground described in rule 2 is established: cf Dey v Victorian Railways Commissioners [1949] HCA 1; (1949) 78 CLR 62 at 91 (Dixon J); General Steel Industries Incorporated v Commissioner for Railways (NSW) [1964] HCA 69; (1964) 112 CLR 125 at 128-130 (Barwick CJ); Webster v Lampard (1993) 116 ALR 545 at 547-548 (Mason CJ, Deane and Dawson JJ).

BACKGROUND FACTS

3 The proceeding arises out of Australian Patent Application No 676,682 (45513/93) lodged by the applicant ("RGC") and Wimmera's opposition to that application. The invention the subject of the patent application ("the Invention") is entitled "Treatment of Titaniferous Materials" and has been said to be in respect of a Synthetic Rutile Enhancement Process (both "the SREP" and "the Process"). In short, Wimmera alleges that RGC obtained the Invention from Wimmera through unauthorised use of confidential information which Wimmera had disclosed in confidence to certain research organisations, but which they, in breach of confidence, had disclosed to RGC.

4 RGC lodged its complete specification on 28 July 1993. The application was accepted on 20 March 1997. On 19 June 1997, Wimmera filed a notice of opposition under s 59 of the Patents Act 1990 (Cth) ("the Act") and Patents Regulation 5.3. The resultant proceeding before the Commissioner for Patents ("the Commissioner") is still on foot ("the Opposition Proceeding").

5 On 19 September 1997, Wimmera filed and served in the Opposition Proceeding a statement setting out the grounds of its opposition and particulars pursuant to Patents Regulation 5.4 ("the Opposition Statement"). Section 59 of the Act provides, in effect, that Wimmera can oppose the grant on one or more of three specific grounds. The one relevant here is that RGC was not entitled to a grant. Section 15 of the Act identifies the classes of persons to whom a patent for an invention may be granted. The relevant class is "the inventor". Wimmera's only ground of opposition is that it, and not RGC, is the inventor and that RGC obtained the Invention from Wimmera.

6 On 18 June 1998 RGC commenced this proceeding ("the Court Proceeding" and "this proceeding"). RGC's application was accompanied by a statement of claim comprising sixty-seven paragraphs. The causes of action pleaded were founded on the making of the "obtaining allegation" and "non-obtaining allegations". The making of the obtaining allegation was pleaded in paras 5-11. It is alleged to have been made in the form of four representations which were, in summary, as follows:

* that Wimmera had, in the Opposition Proceeding, represented to the Commissioner that RGC had obtained the Invention from Wimmera by the unauthorised use of confidential information which Wimmera had disclosed on a confidential basis to various research organisations, including the Commonwealth Scientific and Industrial Research Organisation ("CSIRO"), Australian Nuclear Science & Technology Organisation ("ANSTO"), the Chemistry Centre of Western Australia ("CCWA") and the Mineral Processing Laboratory ("MPL") ("the research organisations") ("the Opposition Representation"); and

* that Wimmera had made representations to ANSTO, CCWA and MPL that RGC had obtained the Invention from Wimmera in the manner just described (respectively, "the ANSTO Representation", "the CCWA Representation" and "the MPL Representation").

(I will call all four representations "the Obtaining Representations").

7 RGC pleaded that the Obtaining Representations were all made in trade or commerce and were false and were made in contravention of s 52 of the Trade Practices Act 1974 (Cth) (the "TP Act").

8 Whether the Obtaining Representations are true is the only issue in the Opposition Proceeding.

9 I turn now to the non-obtaining allegations. These were pleaded in paras 21-65 of the statement of claim (paras 12-20 were prefatory). In summary, RGC pleaded that Wimmera, by its conduct over a lengthy period, represented to RGC that as from 22 November 1993 it no longer regarded the obtaining allegation as true and that it would not repeat it. The statement of claim pleaded that RGC acted to its detriment on that assurance by spending money in developing and operating the SREP from 22 November 1993 to 19 September 1997 and otherwise. It pleaded that the making of that representation constituted misleading or deceptive conduct in contravention of s 52 of the TP Act because Wimmera subsequently made the Obtaining Representations. As well, RGC pleaded that Wimmera was estopped from repeating the obtaining allegation. Finally, RGC pleaded the making of a contract in or about June 1994 in respect of the SREP technology by which Wimmera undertook not to repeat the obtaining allegation.

10 RGC filed an amended application on 17 July 1998 but the only difference between it and the original application was that the original one did not include paragraph 7 (the paragraph numbers went from six to eight, omitting seven) whereas the amended application included a seventh paragraph. The amended application claimed the following relief:

"1. A Declaration that the invention described in Patent Application No. 676,682 (45513/93) (`the Patent Application') was not obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the Commonwealth Scientific & Industrial Research Organisation (`CSIRO') or Australian Nuclear Science and Technology Organisation (`ANTSO') [sic], or to any other person.

2. A Declaration pursuant to s.15(1) of the Patents Act 1990 that the Applicant is the person to whom the patent which is the subject of the Patent Application may be granted, in terms of s.15(1) of the Patents Act 1990.

3. A Declaration that neither the Applicant's Synthetic Rutile Enhancement Process nor any part of it was obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the CSIRO or ANSTO, or to any other person.

4. An order that the Respondent by itself, its servants or agents be restrained from, in trade or commerce, representing to any person, including but without limitation the Commissioner of Patents,

(a) that the invention as described in the Patent Application was obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the CSIRO or ANTSO [sic], or to any other person;

(b) that the Applicant is not the person to whom the patent which is the subject of the Patent Application may be granted in terms of s.15(1) of the Patents Act 1990; or

(c) that the Applicant's Synthetic Rutile Enhancement Process or any part of it was obtained by the Applicant from the Respondent by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis by the Respondent to various research organisations, including to the CSIRO or ANTSO [sic], or to any other person;

5. Damages pursuant to s.82 of the Trade Practices Act 1974.

6. Further or other orders pursuant to s.87 of the Trade Practices Act 1974.

7. Damages for breach of contract.

8. Interest.

9. Costs.

10. Any such further orders as the Court thinks fit."

11 Paragraphs 1 to 3 above were based on the obtaining allegation, paragraphs 4 to 6 were said to be based on both the obtaining allegation and the non-obtaining allegations, while paragraph 7 arose solely from the non-obtaining allegations.

12 On 22 June 1998 RGC's patent attorneys wrote to the Commissioner seeking a direction pursuant to Patents Regulation 5.10(1) that RGC's evidence in answer not be served until three months after the determination of the Court Proceeding. Wimmera opposed the making of that direction. On 5 August 1998 the Commissioner issued a decision refusing to give the direction. On 27 August 1998 RGC commenced proceeding NG 891 of 1998 in this Court under the Administrative Decisions (Judicial Review) Act 1974 (Cth) seeking review of the Commissioner's decision.

13 On 20 October 1998 RGC filed a notice of motion seeking an order restraining Wimmera from taking any further step, including the step of seeking a hearing date, in the Opposition Proceeding. I heard that motion on 14 and 15 December 1998 concurrently with the trial of the ADJR proceeding and dismissed both on 18 January 1999 (Wimmera had undertaken to the Court that if it succeeded in the Opposition Proceeding it would not request the Commissioner to amend the Register of Patents by inserting its name as patentee of the Invention until any appeal by RGC was determined). I will have occasion later to refer to my Reasons for Decision delivered on 18 January 1999 (see (1999) AIPC 91-459).

14 Having failed to obtain an injunction restraining Wimmera from prosecuting the Opposition Proceeding, RGC moved by notice of motion filed in Court on 8 March 1999 for an order that the directions hearing in the Court Proceeding be stood over to 8 September 1999, or, in the alternative, an order that the Court Proceeding be stayed pending the determination of the Opposition Proceeding. For reasons not presently relevant, I indicated that the Court Proceeding should progress until the filing of RGC's affidavits on the non-obtaining issues and that the case should then be reviewed. I dismissed RGC's motion with costs and made directions for the progression of the Court Proceeding.

15 By a notice of motion filed on 21 May 1999, RGC sought leave to file and serve a further amended application and an amended statement of claim. On 28 May 1999, by consent I ordered that the Court Proceeding be dismissed in so far as it concerned the causes of action alleged in paras 21-65 of the statement of claim (the non-obtaining allegations) and any claims for relief arising from those causes of action, and that RGC pay Wimmera's costs thrown away as a result of the consequential further amendment of the amended application and of the amendment of the statement of claim.

16 On 1 June 1999, with leave, RGC filed the further amended application and an amended statement of claim. By the further amended application, RGC has omitted the claim made in para 7 of the amended application set out earlier for damages for breach of contract, that is, it has reverted to the form of its original application filed to commence the Court Proceeding on 18 June 1998.

17 The amended statement of claim pleads, in re-cast paras 1-24, facts showing that RGC is the inventor, the making by Wimmera of the Obtaining Representations, that the Obtaining Representations were made in trade or commerce, that they were untrue, and that by reason of these matters Wimmera engaged in conduct that was misleading and deceptive in contravention of s 52 of the TP Act. Paragraph 25 pleads that by reason of Wimmera's conduct RGC had suffered loss and damage and paragraph 26 pleads that Wimmera threatens and intends to repeat and continue its conduct.

18 I now turn to the present motion in more detail. As filed on 6 July 1999, Wimmera's notice of motion sought in its first two paragraphs orders that:

"1. The proceeding be dismissed pursuant to O 20 r 2.

2. Alternatively, the proceeding be stayed pursuant to O 20 r 2."

19 The motion was returnable for, and fixed for hearing on, 20 July 1999.

20 By an amended notice of motion filed on 19 July 1999 Wimmera sought in paras 1 and 2 the following orders:

"1. The proceeding be dismissed pursuant to O 20 r 2.

2. Alternatively, the proceeding be stayed pursuant to O 20 r 2 pending the hearing and determination of the opposition proceeding in relation to Australian Patent Application No 676682 (45513/93) before the Commissioner for Patents."

21 RGC made it clear that it would consent to an interim stay generally of the kind described in para 2. The hearing commenced on 20 July on the understanding that an order of that kind would be made by consent in any event. Accordingly, on that day by consent but without admissions I ordered that the proceeding be stayed pending the hearing and determination of the Opposition Proceeding or earlier order of the Court. The hearing on 20 July did not have to be concluded as a matter of urgency and the Court Proceeding was stood over part heard and was later fixed for further hearing on 6 December 1999 when the hearing was concluded. In the meanwhile, the Opposition Proceeding had been fixed for hearing to commence on 21 February 2000.

22 It remains to note the other orders sought in Wimmera's notice of motion. In the alternative to summary dismissal, Wimmera seeks an order under O 29 r 2 for determination, as of a preliminary issue, of the question whether its conduct as alleged in the amended statement of claim, that is, the making of the Obtaining Representations, was "in trade or commerce" within the meaning of s 52 of the TP Act. Finally, further or in the alternative, Wimmera seeks an order pursuant to O 62 r 3(2) that:

(a) Wimmera have leave to tax the costs the subject of this Court's order in its favour of 28 May 1999; and

(b) the costs the subject of that order be paid forthwith after taxation.

SUBMISSIONS AND OPINION

23 At the forefront of its submissions, Wimmera refers to s 60 of the Act which provides in subsections (1) and (4) as follows:

"(1) Where the grant of a standard patent is opposed, the Commissioner must decide the case in accordance with the regulations."

"(4) The applicant, and any opponent, may appeal to the Federal Court against a decision of the Commissioner under this section."

24 Subsections 154(1) and (2) of the Act provide that this Court has jurisdiction with respect to matters arising under the Act and that this Court's jurisdiction to hear and determine appeals against decisions or directions of the Commissioner is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under s 75 of the Constitution. Section 160 of the Act provides that on hearing such an appeal, this Court may exercise any one or more of the wide range of powers identified in that section. An appeal against a decision or direction of the Commissioner is in the nature of a hearing de novo: Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 119; Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co [1969] HCA 7; (1969) 120 CLR 136 at 142 (Kitto J); Genetics Institute Inc v Kirin-Amgen Inc (1996) 138 ALR 731 (FCA/Heerey J); Acushnet Co v Spalding Australia Pty Ltd (No 2) (1990) AIPC ¶ 90-720 (FCA/Northrup J) at 36,660. But there is no right of appeal to a Full Court against a judgment or order of a single Judge of the Court in the exercise of its jurisdiction to hear and determine appeals from decisions or directions of the Commissioner, except with the leave of the Court: s 158(2) of the Act (on the nature of that leave see Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; (1999) 44 IPR 257 (FC).

25 In sum, the Commissioner must decide the issue of the truth or falsity of the obtaining allegation in the Opposition Proceeding and both RGC and Wimmera will have a right of appeal to this Court which will determine that issue de novo, but an appeal will lie to a Full Court from the single Judge's decision on that appeal only with the leave of the Court, whereas an appeal would lie to a full Court as of right under s 24 of the Federal Court of Australia Act 1976 (Cth) from the final judgment of a single Judge in this proceeding.

26 Wimmera relies on certain passages in my Reasons for Judgment of 18 January 1999. It will be recalled that those Reasons were concerned with RGC's motion seeking an order restraining Wimmera from taking any further step in the Opposition Proceeding. In declining to grant the injunction, I relied on a line of authority to the general effect that it is a sound exercise of discretion of a superior court not to grant injunctions which would have the effect of staying proceedings properly before inferior tribunals and courts, particularly those invested with a specialist jurisdiction to entertain the particular proceeding: see Dalgety Wine Estates Pty Ltd v Rizzon [1979] HCA 41; (1979) 141 CLR 552; Boyd v Halstead, Ex parte Halstead [1985] 2 Qd R 249 (McPherson J); R v Windridge, Ex parte Pacific Coal Pty Ltd [1992] 2 Qd R 180 (FC). In the course of my Reasons for Judgment, I said ((1999) AIPC ¶ 91-459 at 31,152):

"I have no doubt that this Court should decline to grant an injunction having the effect of staying a proceeding before a specialist tribunal where the only issue to be decided by the Court is one which is properly before that tribunal and which it was given power to decide. So, in this case, if RGC sought only a declaration that the obtaining representations were misleading and deceptive and an injunction restraining Wimmera from repeating them to the Commissioner (see (a) earlier), interlocutory injunctive relief having the effect of staying the opposition proceeding and effectively preventing the Commissioner from fulfilling his statutory function of resolving the conflict as to whether RGC or Wimmera is the inventor of the Invention, should be refused. The truth or falsity of the obtaining representations is the very issue before the Commissioner."

27 On the hearing of the motion, RGC had emphasised that the issues raised in the Court Proceeding were wider than those able to be considered in the Opposition Proceeding. It accepted that in respect of the obtaining allegation, however, the Court Proceeding covered the same field as the Opposition Proceeding and pointed to those causes of action which were based on the non-obtaining allegations, principally, estoppel. Senior counsel for RGC said that it was the presence in this proceeding of the pleading of estoppel that distinguished it from the Opposition Proceeding. As noted earlier, after the amended statement of claim was filed, the non-obtaining allegations disappeared from this proceeding. Counsel for Wimmera suggests that it follows that RGC cannot now reasonably resist dismissal of this proceeding.

28 Senior counsel for RGC submits, however, that the earlier motion was concerned only with the question of whether an injunction should be issued which would have the effect of staying the Opposition Proceeding and that it is consistent with the continuation of the Opposition Proceeding that the Court Proceeding should also continue, at least on terms which have in fact been implemented, that it be stayed pending the hearing and determination of the Opposition Proceeding.

29 Wimmera submits that at least the way forward on its present motion is indicated by my statement in the earlier Reasons for Decision ((1999) AIPC ¶ 91-459 at 31,152) that a superior court:

"should be slow to interfere with the exercise by [an] inferior court or tribunal of the jurisdiction with which it has been invested by the legislature"

and that

"[i]f it is inappropriate to grant an injunction having the effect of staying the proceeding in the inferior court or tribunal, it is also inappropriate that the proceeding in the superior court continue where there are no longer issues before the superior court which distinguished the two proceedings."

Wimmera submits that it is "vexatious" within the meaning of O 20 r 2 for the obtaining issue to be litigated between the parties in more than one forum.

30 Wimmera relies on a dictum of Walsh J in Forster v Jododex Australia Pty Ltd [1972] HCA 61; (1972) 127 CLR 421. That case was concerned with an enquiry by a mining warden in respect of applications for authorities to enter to search for minerals on land said to be the subject of another person's exploration licence. Subsection 46(3) of the Mining Act 1906 (NSW) provided that an authority to enter was not to be granted in respect of land on which another person was already entitled to carry on operations under an exploration licence. After the mining warden's enquiry had commenced, the licensee obtained a declaration from the Supreme Court of New South Wales in its equitable jurisdiction that it was the holder of an exploration licence over the land the subject of the applications for the authorities to enter. The object of the equity suit was to establish that the applications for the authorities to enter must be refused. No member of the Court accepted a submission that the Supreme Court had lacked jurisdiction to make the declaration. But it was also submitted that a proper exercise of discretion had required the Court to decline to make the declaration. Walsh J said that this question had caused him considerable difficulty. He pointed out that it had become the duty of the warden to deal with the applications for authorities to enter in accordance with s 50 and other relevant provisions of the Mining Act 1906 (NSW), and that the warden had initiated an enquiry. His Honour said (at 427):

"In my opinion, there is no reason to doubt that in the proceedings before the warden, if they had continued without any intervention by the Supreme Court, Jododex would have had the opportunity to raise and to debate the question whether the provisions of the Act precluded the grant of the authorities to enter, by reason of the fact that Jododex was, as it claimed, the holder of an exploration license, validly granted to it and validly renewed.

In my opinion, when a special tribunal is appointed by a statute to deal with matters arising under its provisions and to determine disputes concerning the granting of rights or privileges which are dependent entirely upon the statute, then as a general rule and in the absence of some special reason for intervention, the special procedures laid down by the statute should be allowed to take their course and should not be displaced by the making of declaratory orders concerning the respective rights of the parties under the statute. In other words, I think that it will ordinarily be a wise exercise by the Supreme Court of the discretion which it has under s.10 of the Equity Act to decline to undertake the tasks which have been committed by the Parliament to a specialized tribunal. While I agree with Gibbs J. that s. 10 ought not to be construed as if it contained words excepting from its operation cases arising under the Act, I think that the procedure set out in the Act itself should be regarded as the normal procedure for dealing with such cases."

31 Gibbs J (with whom Stephen J agreed on the point) held that it could not be said that the Supreme Court's discretion to exercise the declaratory jurisdiction was not supportable.

32 It will be noted that in conformity with its purpose, the equity proceeding was brought on for hearing prior to the warden's inquiry. In this respect, the case is unlike the present one in which, because of the interim stay, the Opposition Proceeding will be heard and determined before the Court Proceedings.

33 The cautionary note sounded by Walsh J against superior courts' exercising their declaratory or injunctive jurisdiction in relation to issues properly before specialist inferior courts or tribunals has been referred to without disapproval in: Slattery v Public Service Board [1983] 3 NSWLR 41 at 47; Concord Council v Optus Networks Pty Ltd (1996) 90 LGERA 232 (NSW/Dunford J) at 267; Council of the Shire of Noosa v T M Burke Estates Pty Ltd (1998) 100 LGERA 318 (Qld/CA) at 321-323 (Pincus J); Dalgety Wine Estates Pty Ltd v Rizzon [1979] HCA 41; (1979) 141 CLR 552 at 563 (Gibbs J), at 568 (Stephen J), at 574 (Mason J). See also Attorney General v Ripon Cathedral (Dean & Chapter) [1945] Ch 239; North Eastern Marine Engineering Company v Leeds Forge Company [1906] 2 Ch 498 (CA) (an application for a declaration that an expired patent had been invalid in which the Court of Appeal upheld dismissal of the action on the ground that the proper procedure was the statutory one of petition for revocation of the patent); Slough Estates Ltd v Slough Borough Council [1968] Ch 299.

34 In Slattery v Public Service Board, above, Lee J in the Supreme Court of New South Wales dismissed a summons seeking declarations and orders which would have resolved issues which were before the Industrial Commission of New South Wales. His Honour accepted that the position would have been different if a decision could not have been obtained from the Commission on the matter which the plaintiffs had brought before the Court.

35 It is necessary to distinguish a case in which there is an attempt to "pre-empt" the inferior court or tribunal and one like the present in which there can be no question of pre-emption. The question here is whether it is vexatious for this proceeding to be maintained after the Opposition Proceeding has been heard and determined, having regard to the fact that the Commissioner will have performed his statutory duty of deciding the obtaining issues and that each party will have the right of appeal to this Court previously described from his decision.

36 RGC submits that Wimmera's duplication submission oversimplifies the position for reasons which I will now note in terms which are a paraphrase of RGC's submissions.

(a) The Commissioner cannot deal with RGC's claim for injunctions, damages under s 82 of the TP Act and further or other orders under s 87 of the TP Act.

37 Wimmera seizes on the fact that RGC has conceded that it did not act or refrain from acting in reliance on the Obtaining Representations. But I accept RGC's submission that reliance by a claimant for damages under s 82 of the TP Act is not required in all cases: see Janssen-Cilag Pty Ltd v Pfizer Pty Ltd (1992) 37 FCR 526 (Lockhart J) at 530-532. However, the amended statement of claim is an adequate pleading in the present respect, nonetheless. It states in para 25 only this:

"By reason of the respondent's conduct as aforesaid the applicant has suffered loss and damage".

38 RGC has not particularised its alleged loss and damage. So far as the pleading reveals, on the assumption (which must be made) that the Obtaining Representations were false, the only loss and damage which RGC will have suffered will be the cost of establishing that falsity before the Commissioner. Wimmera is entitled to particulars of the loss and damage suffered by RGC down to the time of commencement of the Court Proceeding as a result of the contravention of s 52 of the TP Act by the making of the Obtaining Representations.

39 RGC's solicitors have stated in correspondence that in their view the issue of damages could be resolved only after liability was established and they sought Wimmera's agreement to separate trials of the questions of liability and damages. This matter has apparently not been pursued, but the fact remains that Wimmera is entitled to particulars of the loss and damage that RGC claims it suffered prior to commencement of this proceeding as a result of the alleged contravention. I would have allowed RGC a limited time in which to supply such particulars and in default dismissed this proceeding relating to the claim for damages under s 82.

40 Similarly, RGC's solicitors advised Wimmera's solicitors that RGC would seek appropriate relief under s 87 of the TP Act but that it was "impractical to identify in advance of the trial on damages what orders might be sought" and that "[o]f necessity, the orders sought [would] depend upon the evidence presented at the trial and the findings of the Court". Sometimes it is difficult to identify finally the orders to be sought until all the evidence is in, but RGC must make the attempt. On the present hearing senior counsel for RGC said that RGC would seek an order that Wimmera send corrective letters to ANSTO, CCWA and MPL. But RGC's standing to seek any order under s 87 is dependent on its having suffered or being likely to suffer loss or damage by conduct of Wimmera in contravention of s 52. Again, Wimmera is entitled to particulars of the loss and damage which RGC claims it suffered prior to the commencement of this proceeding.

41 In so far as the amended application claims an injunction restraining Wimmera from making the Opposition Representation, it is misconceived. That injunction is inappropriate having regard to the fact that an order has been made staying the Court Proceeding until after the Opposition Proceeding has been heard and determined. In so far as the amended application seeks injunctions restraining Wimmera from making the obtaining allegation to other persons, there is no suggestion that it will do so after the determination of the Opposition Proceeding and any appeal against the Commissioner's decision has been determined. In my opinion, on this ground this proceeding should be dismissed in relation to RGC's claims for injunctive relief.

(b) RGC's case for declarations also has utility and the Commissioner does not have jurisdiction to make the declarations.

42 RGC relies on Philips Electronics NV v Remington Products Australia Pty Ltd (1997) 39 IPR 303 (FCA/Lehane J). In that case, the applicants alleged infringement of two registered trademarks relating to electric shavers. The respondent filed a cross-claim seeking a declaration that the subject of a pending trademark application by the first applicant was not registrable under the Trade Marks Act 1995 (Cth) and an order that the Registrar of Trade Marks remove the pending trade mark application from the Register or, alternatively, an order that the first applicant withdraw that trade mark application.

43 The applicants filed a notice of motion seeking orders "striking out" the relevant paragraphs of the cross-claim that related to this relief. The primary basis for this application was that the Court lacked jurisdiction to decide the matters raised by the cross-claim because the fate of a trade mark application was not in itself a matter for the Court. The applicants also submitted that in any event the subject matter was not appropriate for declaratory relief.

44 Lehane J declined to grant the relief sought on the motion. His Honour held that it had not been established, to the level of satisfaction required, that the Trade Marks Act should be construed as depriving the Court of jurisdiction to grant the declaratory relief sought in the cross-claim. His Honour thought, however, that it would be a rare case where a court would find it appropriate to grant declaratory relief in relation to a pending trade mark application rather than allow the statutory procedure to take its course and that the existence of that procedure was an important consideration on the exercise of discretion although it was not a bar to declaratory relief.

45 Philips v Remington is distinguishable from the present case. Wimmera does not submit that the Court lacks jurisdiction to grant the declarations sought by RGC. Rather, it submits that it is clear to the required level of satisfaction that the Court would not exercise its discretion to grant them. The way in which a discretion is exercised in one case is not of precedential value for a later case. I note, however, that Lehane J appears to have been influenced by the fact that there were other issues in Philips v Remington, which made it necessary that there be a final hearing in any event, so that little would have been gained by the striking out sought by the applicant in that case.

46 In the present case the questions which would be determined by the making of the three declarations will be resolved by the Commissioner or, on appeal from the Commissioner, by this Court. Having regard to the interim stay, the question whether the declarations are to be made will not arise until after the Commissioner's decision. I think it clear to the level of satisfaction required on a motion under O 20 r 2 that the Court would not make the declarations in this proceeding at that time. The questions which the three forms of declaration would resolve would be resolved by the Court's determination of any appeal against the Commissioner's decision.

47 For the above reasons I think that the application should be dismissed in relation to the claims for the three declarations.

(c) The case for the declarations here is not simply the reverse of the Opposition Proceeding, particularly given Wimmera's forensic decision to make no positive case of obtaining or breach of confidence.

48 The Statement shows that issues in the Opposition Proceeding are whether RGC obtained the Invention from Wimmera by the unauthorised use of information which was confidential in character and which was disclosed on a confidential basis to various research organisations including CSIRO and ANSTO which are mentioned in declaration 1. I think it clear that the issues which would be determined by the three declarations are fairly and squarely at the heart of the Opposition Proceeding and will be resolved in it or on appeal to this Court from the Commissioner's decision.

(d) In the circumstances, where the obtaining allegation has been made publicly, the declarations sought have practical utility and commercial value greater than the mere dismissal of the opposition to the grant of the patent.

(e) This is so, a fortiori, where the Commissioner and even the Court on appeal will determine the matter on the basis of whether the opponent, Wimmera, has discharged its onus of showing that its ground is plainly correct: Commissioner of Patents v Microcell Ltd [1958] HCA 58; (1959) 102 CLR 232 at 245-246.

49 So far as I am aware, the reference to the making of the obtaining allegation "publicly" is a reference to the making of it to ANSTO, CCWA and MPL (see below). I do not accept that the making of the declarations would be for those research organisations any more convincing or a more commercially valuable justification of RGC's position than its success in the Opposition Proceeding would be.

50 If it be the fact that Wimmera would bear an onus of showing clearly both before the Commissioner and before the Court on an appeal against his decision that the obtaining allegation was true, an onus that it would plainly not bear in the Court Proceeding, this consideration is one which would disadvantage Wimmera and favour RGC rather than the reverse.

(f) An appeal to a Full Court from a decision of a single judge on an appeal from the Commissioner is only by leave, whereas RGC (and Wimmera) would have an appeal as of right from the judgment of a single judge in the Court Proceeding.

51 I am not persuaded by this consideration for two reasons. The first is that the legislative intention is that RGC (and Wimmera) should not have a right of appeal without the necessity of leave in the circumstances of this case, that is, where there will be a determination by a specialist tribunal and a single Judge on the truth of the obtaining allegation. The second reason is that the consideration mentioned does not favour RGC more than it favours Wimmera: Wimmera as well as RGC would have a right of appeal and it cannot be said now that RGC will lose a benefit if the present proceeding is dismissed.

52 It follows from the above reasons that this proceeding should be dismissed in relation to the claims for the declarations and injunctions. It also follows from those reasons that it should also be dismissed in relation to the claims for statutory damages pursuant to s 82 of the TP Act and other orders pursuant to s 87 of the TP Act, unless RGC supplies particulars of the loss and damage which it claims to have suffered down to the commencement of the proceeding as a result of Wimmera's alleged contravention of s 52 of the TP Act by the making of the obtaining representations.

53 The result to this point makes it necessary for me to deal with an independent attack made by Wimmera on RGC's case. Wimmera submits that Obtaining Representations were not made in "trade or commerce".

54 As particulars of the Opposition Representation, RGC refers in its amended statement of claim to the Opposition Statement and the statutory declarations of various persons filed in support in the Opposition Proceeding. The Statement asserts that RGC and Wimmera "at all material times were engaged in the business of mining and upgrading mineral sands or exploration research or development thereof";

? that in furtherance of that business, Wimmera conducted research and contracted research to, inter alia, CSIRO, ANSTO and CCWA;

? that those research organisations had an agreement with Wimmera to do research on topics of interest to, or relevant to, Wimmera's business; and

? that the circumstances of the engagement and the tasks and research to be undertaken were to be treated and remain confidential unless the research organisations were released from that obligation of confidence by Wimmera. The Statement refers to particular documents and information supplied by Wimmera to the research organisations and to work done and reported on by them for Wimmera.

55 The Opposition Statement further alleges

? that on a date not known to Wimmera but prior to 31 July 1992, one or more of the research organisations commenced work for RGC on a project concerned with the removal of radioactive impurities from mineral deposits;

? that the project involved one or more of the research organisations in work for RGC which "was in substance the same as the research project which [the research organisation] until then had been conducting for [Wimmera]";

? that in circumstances not known to Wimmera, information confidential to and the property of Wimmera and concerned with and derived from or resulting from Wimmera's research projects came to be in the possession of, or was used for the purposes of, RGC; and

? that in circumstances not known to Wimmera, its confidential information was used by or on behalf of RGC for the purposes of RGC's research project and as the basis for its patent specification.

56 It is not suggested that the statutory declarations go beyond providing evidence supporting the allegations in the Opposition Statement.

57 So far as the ANSTO, CCWA and MPL Representations are concerned, they are particularised as being contained in certain facsimile transmissions from Arthur Robinson Hedderwicks, solicitors for Wimmera. They are in evidence. In substance, they are identical. Each begins by informing the addressee, ANSTO, CCWA or MPL, that the firm acts for Wimmera which is opposing RGC's application for the patent. Each letter continues:

"The ground alleged is that the invention described in the opposed application was obtained by RGC from our client through the unauthorised use of [Wimmera] information relating to the claimed invention which was disclosed on a confidential basis, by our client to various contract research organisations engaged by our client, including [the addressee]. Our client's understanding through published RGC documents is that [the addressee] has undertaken work on the above subject matter for RGC.

Our client has instructed us to request that [the addressee] make certain documents available for inspection, and allow us to interview relevant personnel still employed by [the addressee].

..........................................................................................................

We should also draw your attention to the fact that the documents inquired after are related to an issue in legal dispute and that, accordingly, the documents should be preserved, as destruction of any documents in such a case may amount to a contempt of court."

58 Wimmera relies on the authoritative construction of the expression "in trade or commerce" to be found in Concrete Constructions (NSW) Pty Ltd v Nelson [1990] HCA 17; (1990) 169 CLR 594. In their joint judgment in that case, Mason CJ, Deane, Dawson and Gaudron JJ said (at 603):

" ... the words `in trade or commerce' refer to `the central conception' of trade or commerce and not to the `immense field of activities' in which corporations may engage in the course of, or for the purposes of, carrying on some overall trading or commercial business."

59 Their Honours also said (at 604):

"What the section [s 52 of the TP Act] is concerned with is the conduct of a corporation towards persons, be they consumers or not, with whom it (or those whose interest it represents or is seeking to promote) has or may have dealings in the course of those activities or transactions which, of their nature, bear a trading or commercial character... In some areas, the dividing line between what is or what is not conduct `in trade or commerce' may be less clear and may require the identification of what imports a trading or commercial character to an activity which is not, without more, of that character."

60 RGC refers to the fact referred to in the Opposition Statement that it and Wimmera are competitors. It also refers to the fact that both have commercial dealings with the research organisations. Finally, it submits that the evidence on the hearing or discovered documents may give a context, not visible at present in which the character of the Obtaining Representations is properly to be assessed.

61 Wimmera had no trading or commercial dealings with the Commissioner. No doubt, like all of Wimmera's activities, the Opposition Representation was made in what was perceived to be the general commercial interests of Wimmera. But Concrete Constructions v Nelson shows that this is not enough. I am persuaded to the required degree of satisfaction that the Opposition Representation was not made in trade or commerce and that this view would not be changed by evidence on the hearing or documents to be discovered by Wimmera. On any reckoning the Opposition Representation was not part of "the central conception" of trade or commerce.

62 In relation to the ANSTO, CCWA and MPL Representations, the position is a little different. RGC and Wimmera both have commercial dealings with those research organisations in that both engage them to carry out research. Notwithstanding this, I am persuaded to the required degree of satisfaction that the ANSTO, CCWA and MPL Representations were also not made within "the central conception" of trade and commerce. They were not made as part of any commercial dealing but were made in relation to past events and for the purpose of Wimmera's preparation of its case in the Opposition Proceeding. I am satisfied to the required degree that my understanding of this essential nature and role of the ANSTO, CCWA and MPL Representations would not be altered by any evidence that might be given on the hearing or by any documents that Wimmera might discover.

63 RGC relies on Wanem Pty Ltd v John Tekiela (1990) 19 IPR 435 (FCA/Gummow J). In that case solicitors for the applicant, the registered owner of four industrial designs in respect of a "bar chair", wrote to a distributor of similar bar chairs manufactured by the respondent. The solicitors' letter alleged that the distributor had infringed the applicant's designs by selling the respondents' products. It sought undertakings that sales would cease forthwith and particulars of past sales. The letter threatened that if its demands were not met, the applicant would seek an injunction.

64 Gummow J concluded that there had been no infringement.

65 In relation to the solicitors' letter, his Honour rejected a submission that it merely asserted the opinion of the solicitors on the question of infringement and communicated the applicant's intention to commence proceedings. His Honour also rejected a submission that the sending of the letter to the distributor had not been conduct "in trade or commerce". In this respect he relied on the fact that the letter's objective was to bring to an end the dealings in the course of trade between the respondent, its distributor and the customers. He said (at 444):

"In my view, the conduct complained of in the sending of the letter was an aspect of activities or transactions which, of their nature, bore a trading or commercial character, within the meaning of what was said by Mason CJ, Deane, Dawson and Gaudron JJ in Concrete Constructions (NSW) Pty Ltd v Nelson [(1990) 17 IPR 39 at 42-43; 64 ALJR 293 at 295]".

In my respectful opinion, Wanem is distinguishable from this proceeding. Wimmera's solicitors' letter merely explained what was being alleged in the Opposition Proceeding, made no threat and was no more than a letter apt to enquire about the availability of documents and witnesses.

66 There is, in any event, a further ground on which I think that no reasonable cause of action is made out in relation to the ANSTO, CCWA and MPL Representations. This is that on the proper construction of the three letters, the representations in them are true. Wimmera's solicitors were stating no more than that "the ground alleged" by Wimmera in the Opposition Proceeding was that the Invention was obtained by RGC from Wimmera through the unauthorised use of Wimmera's information which was disclosed on a confidential basis by Wimmera to various contract research organisations engaged by it, including the research organisation to which the letters were addressed. It was necessary that Wimmera's solicitors make some statement of that kind by way of introduction to their request that the addressee make documents available for inspection and allow Wimmera's solicitors to interview relevant personnel still employed by the addressee.

67 I am persuaded, to the required degree of satisfaction, that the solicitors' letter does not expressly or impliedly represent that the Invention was in fact obtained by RGC from Wimmera. The statements made in the solicitors' letters were not misleading or deceptive.

68 For this additional reason, this proceeding, in so far as it relates to relief claimed based on the three letters, should be dismissed.

CONCLUSION

69 The proceeding will be dismissed with costs. This result makes it unnecessary for me to deal with Wimmera's motion in so far as it seeks an order that it have leave to tax the costs which were the subject of the order of 28 May 1999 and that those costs be paid forthwith after taxation.

I certify that the preceding sixty-nine (69) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lindgren.

Associate:

Dated: 21 January 2000

Counsel for the Applicant (Respondent on the motion):	Mr D K Catterns QC and Ms S J Goddard
Solicitors for the Applicant (Respondent on the motion):	Clayton Utz
Counsel for the Respondent (Applicant on the motion):	Mr P W Collinson
Solicitors for the Respondent (Applicant on the motion):	Arthur Robinson & Hedderwicks
Date of Hearing:	20 July, 6 December 1999
Date of Judgment:	21 January 2000