Federal Treasury Enterprise (FKP) Sojuzplodoimport v Spirits International B.V. [2021] FCAFC 77 (21 May 2021) (Katzmann, Beach and Markovic JJ)


Catchwords:


TRADE MARKS – ownership of trade marks – vodka products – competing claims to ownership of trade marks between Russian Federation entities and Dutch company – permanent stay of cross-claim – failure to give proper discovery – extent of permanent stay – whether issues estoppel arising from Dutch litigation should have been permitted to be further litigated – relevance and application under Australian law of the principle in Arnold v National Westminster Bank plc [1991] 2 AC 93 – whether discretionary defences of laches, equitable estoppel and rectification under s 88 of the Trade Marks Act 1995 (Cth) should have been permitted to be further litigated – relevance of the discovery given in the US proceeding to the discharge of Australian discovery obligations – leave to adduce new evidence concerning US proceeding – leave refused – principles to apply in permanently staying a proceeding for want of discovery – exercise of discretion – discussion of Clifton (Liquidator) v Kerry J Investment Pty Ltd (2020) 379 ALR 593 – whether discretion miscarried – appeal allowed – limited remitter