Apple and Pear Australia Limited v Pink Lady America LLC [2015] HCATrans 348 (18 December 2015)

Last Updated: 21 December 2015

[2015] HCATrans 348

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Melbourne No M250 of 2015

B e t w e e n -

APPLE AND PEAR AUSTRALIA LIMITED (ACN 101 551 348)

Applicant

and

PINK LADY AMERICA LLC

Respondent

Application for stay

NETTLE J

TRANSCRIPT OF PROCEEDINGS

AT MELBOURNE ON FRIDAY, 18 DECEMBER 2015, AT 2.58 PM

Copyright in the High Court of Australia

MR R.M. GARRATT, QC: If the Court please, I appear with my learned friend, MR M.D. TEHAN, for the applicant. (instructed by Hall & Wilcox)

MR M.W. WISE: If the Court pleases, I appear with my friend, MR A.F. SOLOMON-BRIDGE, for the respondent. (instructed by Arslans Lawyers)

HIS HONOUR: Yes, Mr Garratt, it is your application?

MR GARRATT: It is, your Honour. Your Honour, this is an application for a stay pending the hearing of an application for special leave to appeal. The application is brought in respect of a decision of the trial judge and a decision of the Court of Appeal, both of which deprive the plaintiff at trial and the applicant in the Court of Appeal - - -

HIS HONOUR: Has the Court of Appeal made a decision or just refused to do so until February?

MR GARRATT: Well, your Honour, it is a question of how one construes what it has done. It has, in effect, said it will not deal with the lodged stay application before February. It is not simply a matter for Registry staff. It is a matter of the judges themselves having so determined. One sees that from the communication with the President. It is the President who has affirmed that the court would not deal with the application before February. That, your Honour, is a decision, in our submission.

HIS HONOUR: It might be a decision, I am not sure it is an order. You are better off with Justice Croft’s refusal of the proposal to hold or the authority to hold the securities pending the appeal.

MR GARRATT: That on any view is an order, your Honour, and your Honour has, of course, jurisdiction under section 73 in respect of orders of the Supreme Court which would include at least that. In effect, that encompasses both. So, your Honour, the question focally on a special leave application is, well, what is the ground of special leave? The ground relied upon here is in section 35A(b), the interests of the administration of justice. That is the question, your Honour, here.

Perhaps I should go back a step and just remind your Honour a little bit about the proceeding. The subject matter of the proceeding is trademarks and trademark applications in Chile. Four trademark applications made by the respondent – that is PLA – were the subject of an option deed between the parties dated June 2007. Marks in fact issued on three of those four applications in due course. One of those marks at the time, 2007, was in use in the export trade between Chile and other exporting countries of “Pink Lady” branded apples.

The option deed gave PLA the right to a perpetual licence over the three marks for use in the export trade from Chile to North America if APAL exercised an option to take an assignment of the marks on issue. In fact, PLA offered to transfer the trademark applications to APAL before marks issued on them, which APAL accepted. The trial judge treated that dealing as an agreement to the exercise of the option in the option deed in a different manner to that for which the option deed provided.

Accordingly, there arose under the option deed a perpetual licence in respect of the three marks that issued on the four applications, one of them, as I say, being the mark that was being used in international trade at the time. There was no issue at trial that the option deed was ambiguous or that it did not express the true agreement of the parties such that it had to be rectified. In terms, the option deed referred unambiguously only to particular marks the subject of specific trademark applications identified by number.

In 2008, the group of countries which exported and imported apples under the “Pink Lady” brand decided that the trade should be conducted under a different or refreshed brand from the end of 2008, and that was implemented from 2009. The trial judge held that as a matter of construction the option deed also gave rise over the refreshed mark because of “the commercial context and wider commercial considerations as between APAL and PLA”, and I am referring to paragraph 144 of his Honour’s reasons.

HIS HONOUR: There was also the point about the licence being in perpetuity, was there not?

MR GARRATT: Well, yes, he did rely on that as well. He said the perpetuity plus the whole commercial context meant. He said that the schedule of the four trademark applications was to be read as including any logo “that became the mandated logo to be used internationally” by the group of exporter and importers. He expressed that holding at paragraph 142.

Because of that enlarged scope of the option deed, the court found that conduct by APAL in 2012 and subsequently, by reference to the refreshed mark only, was a repudiation of the option deed which meant that the repudiation had not been accepted – and still has not – that APAL had to transfer to PLA, said his Honour, the three trademarks that had issued on

the four applications specified in the option deed. The court then went further - - -

HIS HONOUR: Why, because they had acted in breach of the terms?

MR GARRATT: Yes. His Honour implied a term into the deed that if we did not give the full benefit of the deed we had to transfer ownership of the marks. Again, your Honour, no express language - - -

HIS HONOUR: What, Mackay v Dick - - -

MR GARRATT: The Mackay v Dick basis.

HIS HONOUR: So if you breached that, you were then obligated implicitly to reconvey the marks.

MR GARRATT: Yes, even though, your Honour, of course, one could get enjoyment of perpetual licence by specific performance, for example, or injunction and the necessary premise of having a licence is that APAL retained ownership, otherwise there was no need for a licence. So his Honour finds in the face of those legal realities an implied term that if we, that is APAL, did not give the substance of the implied licence, it had to transfer ownership of the three marks that had issued on the four applications. But he went further and declared that APAL had to transfer to PLA as well its application to the refreshed mark in Chile and to withdraw opposition to PLA’s application in Chile to the refreshed mark, all as a matter of construction, your Honour.

HIS HONOUR: You are telling me this to persuade me that there is a significant chance of success on appeal?

MR GARRATT: Yes, your Honour, I am.

HIS HONOUR: Is it in dispute, Mr Wise, that there is at least an arguable case for APAL?

MR WISE: We do not say that the application for leave to appeal to the Court of Appeal is vexatious or has no prospect of success. We would not put it as high – that way.

HIS HONOUR: Thank you for that. So it comes down to whether there is irreparable harm or preserving the subject matter pending appeal, does it?

MR WISE: That is correct, and, your Honour, can I indicate that we are seeking to have this application adjourned over.

HIS HONOUR: Does not the wheel come off on Monday?

MR WISE: No, it does not, your Honour. The position at present is documents have not yet been executed by our learned friends. We received notice from them on Wednesday that a particular person had to exercise the power of attorney. That necessitated the documents being redrafted in Chile and translated again, sent back. We have provided them to our learned friends. There are many steps that need to be taken before we get to a position where these documents get filed in Chile. They need to be executed before a notary public by APAL, that is our learned friends. That document then needs to be provided to my instructor. We then need to get the signature of the notary public apostilled by the Department of Foreign Affairs and Trade.

HIS HONOUR: Sorry, Mr Wise, you are going too fast for me.

MR WISE: I am sorry.

HIS HONOUR: My fault, not yours. As I understood the position, the orders require APAL to execute and deliver to you the instruments by next Monday.

MR WISE: That is correct. What we can do with them subsequent to that, there are numerous steps that have to be taken before we can even send them over to our client in America to execute and take the same steps. Those steps are execution for a notary public.

HIS HONOUR: Will all that take until February of next year?

MR WISE: That is the one thing I cannot tell your Honour.

HIS HONOUR: Well, unless it does then there is a risk of the problems to which Mr Ortuzar refers, is there not?

MR WISE: We want some time to put on an affidavit to deal with those points. We say there is no such risk, particularly given two matters: first, the undertakings that we provided already to the court, which is that we will not encumber the marks pending the application for leave to appeal - - -

HIS HONOUR: No, that is all right. You can tell me in a moment. I just wanted to ascertain whether there is a dispute about the merits of the appeal. Plainly there is not. I will hear first from Mr Garratt about the risks, if he does not get the sort of relief he wants, and then from you.

MR WISE: Yes.

HIS HONOUR: Mr Garratt.

MR GARRATT: Your Honour, the risks are of several kinds. One is a very distinct legal risk, that is, if we withdraw the opposition to the refreshed mark in Chile - - -

HIS HONOUR: Then you have to go the proceedings route, which is four to five years.

MR GARRATT: Exactly so.

HIS HONOUR: Yes, I understand that.

MR GARRATT: And, of course, in the meantime that would also mean that PLA may become the registered proprietor of that mark on its own application.

HIS HONOUR: And do with it as it wishes.

MR GARRATT: Yes, causing, frankly, your Honour, complete havoc in the Chilean trade.

HIS HONOUR: Possibly.

MR GARRATT: Possibly. Well, in any event, certainly, your Honour, necessarily detrimentally impacting on the goodwill that APAL has, your Honour, so there are legal issues of that kind.

HIS HONOUR: I am sorry, Mr Garratt, I am coming to this slowly. The marks which you seek to oppose in Chile are “Pink Lady” marks filed - or applications which have been filed by PLA in Chile, notwithstanding that it is the licensee of your “Pink Lady” marks in Chile.

MR GARRATT: Yes, your Honour. PLA has applied - after these disputes arose in 2012 and 2013, PLA applied to register the refreshed mark in its own name in Chile.

HIS HONOUR: The refreshed mark being your refreshed mark?

MR GARRATT: Yes, exactly so. We have registered marks in Chile, your Honour, which mean that the prospects of a successful application by PLA are small. But if we withdraw our opposition - - -

HIS HONOUR: They increase.

MR GARRATT: - - - they increase dramatically because we are the only other registered proprietor of “Pink Lady” marks in Chile. So there are distinct legal risks at that level. There are procedural risks as well, as Mr Ortuzar says. It is by no means automatic that if a reassignment document is ultimately executed by PLA and PLA is, of course, out of the jurisdiction and has nothing here that would make it amenable in any practical way, even if PLA does do that in due course if it loses the appeal, there is no certainty necessarily that the Trademarks Office will promptly register the assignment or, indeed, will register it short of legal process being required.

HIS HONOUR: You mean the Chilean Trademarks Office?

MR GARRATT: Chilean Trademarks Office. Of course, this Court’s writ does not run that far. All that can be done is translate a judgment and use that persuasively in the Chilean office. In the meantime, of course, your Honour, goodwill may have acquired and accumulated around trademarks in PLA’s name or in the name of others, indeed, which could get in the way of a successful retransfer.

Mr Langford gives evidence of the confusion and uncertainty that is going to be caused to growers in Chile as we come into the pending export season. The apple, as your Honour knows, is an autumn fruit and it is therefore harvested in Chile in April/May. Export licences are issued by January to govern the coming year. The important part of it of course though is the first part of that year.

The growers already have boxes stamped with “Pink Lady” marks and referring to APAL’s ownership. If there is no stay, your Honour, then these growers have boxes and materials that they can no longer use. They know there is an appeal on foot, or an application for leave to appeal. They are going to be unlikely to be willing to go and buy a large stock of PLA approved boxes. They may well take the view, and some said this to Mr Langford, that they will simply sell the apples unbranded. They will create new channels of distribution not through the Pink Lady importers in other countries but sell the apples simply unbranded.

Now, of course, that necessarily diminishes the goodwill around the “Pink Lady” brand for all parties concerned, your Honour. So there are these practical issues which will impact upon growers and impact upon APAL. APAL is also, as the parties have known throughout, party to a trademark licence agreement with a company called – I will say the Spanish name but I will refer to it by the initials VR – Viveros Requinoa, which has a master licence agreement for all “Pink Lady” trademarks in Chile and it effectively has been administering the control of the trademark in Chile.

So giving immediate effect of these orders puts APAL in immediate breach of this trademark master licence agreement. So there are third party interests that need to be taken into account as well. Your Honour, that is why we contend that there is irreparable damage that may flow and which may be difficult ultimately to quantify in terms of the impact on the mark and the growers, may be impossible ultimately to reinstate if VR then takes action to terminate the trademark master licence agreement, and all of these are matters that ought be weighed on a stay application that we have been given no opportunity to effectively make.

HIS HONOUR: Was there no civil applications day today in the Court of Appeal?

MR GARRATT: No, your Honour. Sorry, I do not think so, your Honour. I cannot tell your Honour, I have not looked at the list. There are judges around and indeed, as your Honour knows, or may remember from Order 64, rule 15(5)(b), a single appellate judge could deal with this stay application on the papers in the first instance, but that is not to have been.

So, your Honour, we contend that we are facing irreparable damage. We contend that the balance of convenience lies heavily in our favour at this time. We contend when one looks at the issues raised under the Burgundy Royale schema that there is a substantial prospect that special leave to appeal will be granted. The deprivation of a party of a real opportunity to present a stay application is utterly inconsistent, in our submission, with the interests of the proper administration of justice. The next question is whether we have failed to take steps necessary to seek a stay - - -

HIS HONOUR: No, I have seen the affidavit as to what the solicitor did.

MR GARRATT: Your Honour, whether the stay will cause loss to the respondent, we do not see that that is so. Indeed, we have offered to the respondent to jointly administer the trademark arrangements in Chile for the coming season. Your Honour may have noticed in the judgment that indeed there were joint brand licences issued from 2008 to 2012, but the notion that we might jointly agree on arrangements to protect the status quo in the interests of both, pending the resolution of the appeal, perhaps even an appeal brought on as quickly as possible - - -

HIS HONOUR: Let us say you get the position held over until February when the Court of Appeal can deal with your application for stay pending appeal, and you were successful in that application, what would happen to PLA meantime about the royalties and so forth to which it says it is entitled?

MR GARRATT: Your Honour, we will keep full accounts and that is no problem there about ascertaining what might ultimately be payable but held up pending - - -

HIS HONOUR: Are there procedures in place already for all of that?

MR GARRATT: We keep proper accounting systems, your Honour, so there is no difficulty with that and we have offered to do that.

HIS HONOUR: In one of these exhibits?

MR GARRATT: Yes, your Honour.

HIS HONOUR: Could you turn it up for me, please.

MR GARRATT: In a second, your Honour. I am not certain whether it is in one of these exhibits but it has certainly been the subject of an offer in writing between the solicitors.

HIS HONOUR: Do you have a copy you can give me? I have exhibit GTL-2 to the affidavit of Mr Langford of 16 December which is a letter from Hall & Wilcox Solicitors to Mr Arslan of 2 December 2015. Is that it?

MR GARRATT: No, your Honour. The letter that I had in mind is in fact exhibited to an affidavit of – sorry, your Honour, it is it. Yes, your Honour has it, I think. It is exhibited to Mr Langford’s affidavit at page 48 of that bundle.

HIS HONOUR: That is right.

MR GARRATT: Sorry, your Honour, I was looking at it in a different source. Your Honour will see that in paragraph 3(c) on the following page we have offered to maintain proper accounts in relation to royalties collected and to pay royalties into trust accounts, your Honour.

HIS HONOUR: How much of 3(a) through (e) would have to be attended to before the Court of Appeal deals with the application for stay pending appeal, for example, granting you the growers’ licences and the rest of it? Does that have to be done before then?

MR GARRATT: If the Court of Appeal can deal with this in early February, your Honour - - -

HIS HONOUR: I am assuming it will.

MR GARRATT: - - - then the renewal of licences can be held over.

HIS HONOUR: You have to maintain proper accounts under 3(c). You do that anyway, you say.

MR GARRATT: Yes.

HIS HONOUR: I will hear what Mr Wise says about it. I think I get the drift of it, Mr Garratt.

MR GARRATT: Thank you, your Honour.

HIS HONOUR: Mr Wise.

MR WISE: Your Honour, the first point is that we would seek to have this held over until next week. We would like the opportunity to put on an affidavit. The affidavit will go to some of the matters that Mr Ortuzar deposes to, many of which we see as being supposition and we think, based on the information that we have from Chile, will not be made out, particularly matters such as the procedural risks that my learned friend referred to, that is – I think it was put this way – that there is no certainty that the Chilean Trademarks Office will register a retransfer if the transfer is made to my client now. We believe that there is no substance in that and there was evidence before his Honour Justice Croft that as a consequence of the exercise of the option in 2007/2008, registrations were transferred and applications for trademarks were transferred.

HIS HONOUR: To APAL?

MR WISE: Yes. So the position was this - - -

HIS HONOUR: But that was with your consent, I assume.

MR WISE: Indeed.

HIS HONOUR: Is not the problem said to be that if you do not consent and co-operate then it could take four to five years in proceedings to compel you to do so?

MR WISE: Well, that might be convincing if my client had not already undertaken to the Supreme Court of Victoria that they will do so.

HIS HONOUR: You have given an undertaking?

MR WISE: Indeed. I do not know whether the materials before your Honour include – I should say, your Honour, we have only received this at about 1 o’clock today.

HIS HONOUR: You are not Robinson Crusoe, Mr Wise.

MR WISE: Indeed, and I am not clear as I do not think the orders made by Justice Croft are in the materials.

HIS HONOUR: Yes, they are.

MR WISE: They are? Well, if I could take your Honour to the order of 11 December, which is page 59 to the affidavit of Mr Batrouney.

HIS HONOUR: I have it, thank you.

MR WISE: Your Honour will see that we gave two undertakings: (a) that until the hearing and determination of any application for leave to appeal or determination or further order it will not sell, transfer, licence or otherwise encumber the “Pink Lady” trademarks in Chile including by having the trademarks become subject to any existing securities which are held over the assets of PLA; and (b), in the event of a successful appeal, it will comply with any order to reassign the “Pink Lady” marks to APAL.

HIS HONOUR: Thank you.

MR WISE: Now, the reason we are in Australia, your Honour, is that option (d) that was the subject of this proceeding - - -

HIS HONOUR: Law of Victoria.

MR WISE: Yes, it required the matter to be dealt with in Victoria, so they bring my client here from the United States. My client is here. He is here represented and gives the relevant undertakings. So much of Mr Ortuzar’s affidavit falls away when one takes into account the fact that my client does give that undertaking.

HIS HONOUR: Yes.

MR WISE: Your Honour, our learned friends referred to a legal risk relating to the withdrawal of the opposition to PLA’s application for the refreshed mark. Just for your Honour to understand the background here, since 2013 when this dispute broke out and my client asserted that there was an implied term of the option deed that should it be denied the full benefit of the licence – perpetual licence that it was provided, we took the position that it was an implied term of the agreement that should they do that then they would be obliged to retransfer the mark.

Now, that then became the subject of this litigation a year later in 2014 and ultimately in 2015. That has been determined by his Honour. So the parties in the meantime have each acted as though they were entitled to be the registered owners. My client, by opposing APAL’s application for the refreshed mark in Chile, and we on our behalf made an application for the refreshed mark in Chile, which is opposed by APAL.

The proposition here, your Honour, is that whoever is declared to be entitled to be the true owner of a mark would be entitled to register the refreshed mark and any other marks that are substantially identical and misleadingly similar. So, one of us is entitled to be the owner of all of these marks.

Now, my learned friend makes reference to, he says, well, if APAL withdraws the opposition to my client’s application for the refreshed mark now, it may take them years to get it back. Well, we would say that is encompassed by the undertaking, that is, if the withdrawal of opposition is made and a mark issues to my client, my client’s undertaking is to reassign, and will do so.

Now, if there is any confusion relating to the breadth of the undertaking via reason of the use of the word “Pink Lady marks to APAL” in that order – I do not think it is defined – but I would say now that it is clearly intended to encompass that refresh mark and my client would reassign it. So, we would say the supposed legal risk falls away and the procedural risk falls away. So what we are left with, in my submission, is this idea of confusion. Your Honour, our learned friends have not put in an email in the chain. It is the penultimate email.

HIS HONOUR: What does that say?

MR WISE: In the penultimate email we set out the reason basis upon which we anticipated that the issues that were raised really did not run. The point that I want to make in relation to confusion, it is encompassed in subparagraph (e) of that email, if there is confusion in the marketplace, which we do not accept, it is a result of years of conflicting positions adopted by APAL and PLA, that is, the notion that a transfer now and potential retransfer is the cause of confusion really cannot be correct.

The parties have disseminated press releases, there have been conflicting statements made by the parties to the market that were before his Honour Justice Croft for some years in relation to who was entitled and who was not entitled.

HIS HONOUR: But what about their growers? They will no longer be licensed, will they, to continue to market their product under the “Pink Lady” marks? All their packaging and so forth would have to be destroyed.

MR WISE: Your Honour, we say that is encompassed in subparagraph (d). Our client has issued firstly – we have been on the ground in Chile since 2002, initially issuing import licences, that is permitting exporters to apply the marks before they were registered in Chile - they would apply them in Chile and that constituted an import licence into the United States and North America where my client was registered - and then since these marks were registered since 2007 we have been issuing export licences. So we have a facility and we have people on the ground who can and will issue licences.

Now, the only matter that I do not have evidence of and am seeking evidence of concerns this issue of packaging and whether the packaging is indeed specifically referable to APAL. So the bottom line is we say that we are in a position to issue export licences and of course we will do so. Why would we not? We would because we will garner the royalty and those royalties, of course, if in the event that our learned friends would succeed, we will keep proper accounts and the royalties can then be dealt with appropriately.

HIS HONOUR: What is going to happen if the status quo ante is held until February 2016 which would be inimical to your client?

MR WISE: I put it the other way, your Honour. We say that our learned friends do not demonstrate a substantial case that this is - - -

HIS HONOUR: I have heard that submission already but I would like to know what would happen to your client if the status quo were maintained pro tem.

MR WISE: Well, other than to say my client is denied the fruits of its judgment and the status quo is unhelpful to all concerned, that is as high as I can put it.

HIS HONOUR: Denied fruits in that you would not be getting royalties to which you otherwise say you are entitled?

MR WISE: For the moment.

HIS HONOUR: For that month, I suppose.

MR WISE: That is correct. My learned friend says there are not any royalties for January, that is probably correct, but it is a question of my client being out there in the marketplace with a form of export licence that accurately reflects the legal decision that has been made. Your Honour would note that declarations have been made that my client is entitled to use these marks and our learned friend’s clients are not entitled to use those marks.

HIS HONOUR: Yes.

MR WISE: So we would have a situation where our learned friends would be out there in the marketplace - - -

HIS HONOUR: No, they are not seeking a stay of those parts of yours.

MR WISE: Well, they are not, and so one wonders how can they – how can they then go out and seek to issue export licences now?

HIS HONOUR: Yes. Thank you, Mr Wise.

MR WISE: So, your Honour – if your Honour would just give me one moment?

HIS HONOUR: Certainly.

MR WISE: I just wanted to deal with the question of substantial prospects of success on the special leave. We are not entirely clear in the short time that we have had to deal with this, we are not entirely clear that, firstly, the Court of Appeal has in fact made an order that is amenable to - - -

HIS HONOUR: No, I am proceeding upon the basis that it has been too busy to get to hearing and determining the application. What we are dealing with is Justice Croft’s refusal of an accommodation until the court can deal with the application.

MR WISE: Yes, well, we would say that the starting proposition for that is our learned friends would need to demonstrate error in Justice Croft’s decision and an error probably in the nature of House v King, that is that in his refusal to accede to the form of orders that our learned friends – this is if we are dealing with the 11 December order where his Honour had before him some of the materials that are before you, Mr Ortuzar’s affidavit particularly, his Honour was asked, please put in place a regime of orders that leads to documents being executed and held in escrow with the prothonotary.

HIS HONOUR: I am not sure it is quite so much a question of error whether as it is that it is inappropriate for a trial judge to be left to decide whether orders necessary to maintain the status quo pending appeal should go. That is a function properly ascribed to the Court of Appeal, and because they have not yet had a chance to exercise it, there needs to be some mechanism by which to achieve the same result which is ordinarily done by way of appeal against the trial judge’s refusal of the relief - Paringa Mining - - -

MR WISE: Yes.

HIS HONOUR: I think that is all that is involved. It is not so much House v King whether Justice Croft was right or wrong. It is a question of whether the Court of Appeal gets the opportunity to do what it should have done by now which is to determine whether a stay will go.

MR WISE: Assuming that is the case, then our position is that our learned friends would need to satisfy your Honour that this was an exceptional case and that there is the relevant prejudice that they say there is. Now, we would seek a short period of time to put on a further affidavit going to a couple of things: firstly, the relevant process in the Chilean Trademarks Office; secondly, this issue of confusion, and really to put a reasoned argument to your Honour beyond what I am able to do today. We would, of course subject to the convenience of the Court, but we would perhaps ask for Wednesday for it to come back with us putting on material on Monday or Tuesday.

HIS HONOUR: What is going to happen in the meantime?

MR WISE: Between now and then, nothing problematic.

HIS HONOUR: Well, Monday they have to comply with Justice Croft’s orders otherwise they are in contempt of court.

MR WISE: Yes. So they need to execute before a notary public provided to my instructor. My instructor has steps that she needs to take: apostil first with DFAT; second, after that is done and returned, the documents have to go to the Chilean Embassy to be legalised and then come back, and only after that occurs can we move on.

We can give an undertaking now that whatever state the documents end up in before next Wednesday, we will not send them over to the United States to our client to execute. In other words, we will keep them here pending the further hearing of this matter. So we do not want to hold up the steps of apostilling and legalising, but we will not go beyond that and send them out of the country.

HIS HONOUR: How long is the proposed further hearing going to take on Wednesday?

MR WISE: An hour, given what we have heard today, not more.

HIS HONOUR: Why does it take until Wednesday to get the further evidence together?

MR WISE: Well, it does not need to. We can do it quicker than that. I have commitments on Monday that would prevent me, but could be here on Tuesday – your Honour, we could do Tuesday. There is just one issue, my client, Mr Brandt, is undergoing surgery on Monday but we think that what we need will come from others, subject to us needing to get some instructions from him, but I do not think we do.

HIS HONOUR: All right, thank you. Mr Garratt?

MR GARRATT: Your Honour, material which my learned friend has put on about the absence of confusion seems to be dependent upon the proposition that his client has been involved in the export trade of apples in a significant way from Chile in the last year or two.

HIS HONOUR: Yes.

MR GARRATT: Our evidence is quite to the contrary of that. We would put on evidence disputing that, your Honour. So we would like an opportunity to respond to any such material.

HIS HONOUR: What about his undertakings to Justice Croft? Does that not get rid of the difficulties?

MR GARRATT: Well, your Honour, in our submission it does not at all address the difficulty of the apparent loss - the confusion to growers and construction materials, those aspects of loss which necessarily occur. Your Honour, my learned friend also put forward the proposition that whichever way this goes one person will be the true owner of the marks. Your Honour, on an orthodox legal analysis, in our submission, whichever way it goes the matter ought be resolved such that APAL retains the ownership of the marks in the schedule to the option (d).

We know of no principle, we cannot see how properly applying orthodox principles one gets to the result that the learned judge got to. So if my learned friend is successful in part and there is a repudiation of some kind, it does not lead in point of law, even if he accepts the repudiation and terminates the option (d), to marks going across to PLA. So, your Honour, the merits of this dispute of course are not a centre point but they are something which cannot be lost sight of in an application of this kind.

HIS HONOUR: At the moment you will be restrained as from Monday from dealing in these marks any more or with them any more in Chile?

MR GARRATT: Not quite, your Honour. The position is this, that declarations were made on the 27th. The only order that has been made is that we execute and deliver these transfer documents.

HIS HONOUR: So you will continue to deal as long as you can, presumably.

MR GARRATT: Well, your Honour, export licences were issued on an annual basis and they do not come up for renewal until the end of January. It is not a question of us revoking something that has already been granted. It is simply a declaration as to what the rights of the parties are meant to be – or are – and then, of course, the only positive order at this point is with respect to the execution of the transfers. The matter comes back before Justice Croft on 11 February with respect to the making of orders of any other kind, presumably other coercive orders.

HIS HONOUR: What is the mediation for?

MR GARRATT: Well, that is a good question, your Honour. It is to see – I do not mean to be glib but it is to see whether the whole matter might not be resolved without an appeal I apprehend or perhaps to quantify loss, which is the only other issue, though there will not be before the mediation any material quantifying loss.

Your Honour, my learned friend can point to no harm at this point. He wants to put on material that he says we will not get until Tuesday but is likely to be contested, particularly in its factual aspect. There seems, in our submission, no reason why he should not have more time put on his material, us have the chance to respond to it and we come back if need be in the middle of January. That would appear to accommodate a proper procedural disposition. The submissions can be prepared and filed in advance.

HIS HONOUR: Well, he wants to put something on to answer your material. He has had a very short period of time with which to deal with it. I suppose it is only fair he has some extra time, unappealing though the prospect of dealing with this matter next Tuesday or Wednesday might be to all of us. This matter should be being dealt with by the Court of Appeal.

MR GARRATT: Absolutely.

HIS HONOUR: Instead of me playing around at the edges in order to try to preserve the position such that they can deal with it next February or whenever it is chosen to be. Still, Mr Wise says that he stands to lose - his client does money if he cannot have the benefit of his judgment before then. You say you stand to be inflicted with irreparable harm if he does. I suppose I have to decide it, do I not?

MR GARRATT: Well, there are no royalties coming in at this time of the year, your Honour. They do not come in until the exports happen from April/May. So there is no financial loss of that kind. He said rightly that he is entitled to approach growers stating what the position has been determined to be, presumably with respect to then coaxing them into entering into an export licence with them from February. Nothing is stopping him doing that.

HIS HONOUR: Pardon me just a moment. Mr Wise - - -

MR WISE: Your Honour, there is one correction I need to make. We were given this email and we were told we had received it. What we received, your Honour, was simply the attachment to the email, the text was blank. We did not receive an email in this form.

HIS HONOUR: I dare say that is one of the things which can be dealt with at greater length in the further affidavit material to be put on before Tuesday.

MR GARRATT: Yes.

HIS HONOUR: Mr Wise, I am going to give you some extra time. If you tell me you cannot do it before Tuesday, you cannot, but we will do it on Tuesday. We will start at 9.30 in the morning and I hope it will not take any longer than an hour. You will need to file your affidavits by, say, 2 o’clock on Monday afternoon. That gives Mr Garratt till, say – no, make it midday. He can put his on by 4 o’clock on Monday afternoon in response, if he wishes to.

MR WISE: Yes, your Honour.

HIS HONOUR: Gentlemen, do your best to keep it short having regard to the time of the year which we have reached.

MR GARRATT: We will do that, your Honour.

HIS HONOUR: In the meantime, given that the order of Justice Croft for the conveyance takes effect on Monday, I think that the matter needs to be held pro tem. I will, therefore, grant an interim stay until Tuesday, 22 December.

MR GARRATT: Yes, your Honour.

MR WISE: If your Honour please.

HIS HONOUR: Thank you.

MR GARRATT: Until 5.00 pm that day, your Honour?

HIS HONOUR: Yes, 5.00 pm. What I will direct is that the further hearing of the matter be adjourned until 9.30 am on 22 December 2015. The respondent is to file and serve any further affidavits on which it seeks to rely by no later than 12 noon on Monday, 21 December 2015, and the applicant is to file and serve any further affidavits in reply on which it seeks to rely by no later than 4.00 pm on Monday, 21 December 2015. I have adjourned the further hearing of the matter on the basis of an estimate that the further hearing will take no more than one hour.

Anything further, gentlemen?

MR GARRATT: No, your Honour.

MR WISE: No, thank you, your Honour.

HIS HONOUR: I will reserve the costs of today for the parties. Adjourn then until 9.30 am next Tuesday, 22 December.

AT 3.48 PM THE MATTER WAS ADJOURNED