When is an address for service not an address for service

Effective service is a critical step in litigation and the recent decision in Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited [2021] FCA 323 (26 March 2021) illustrates the risks of getting it wrong.

The facts were complicated by an uncooperative party and the application of jurisdictional issues, multiple laws and rules.  A key learning for lawyers practicing under the Federal Court Rules, including IP Lawyers, is that service can be complicated by a narrow provision in the Federal Court Rules (FRC) (r10.08) which Wilcox J noted ‘may need to be revisited and expanded’.

Service challenges arise when the other side is uncooperative, for example, with a previously accepted address for service being rejected without the substitution of another.  An alternative address for service and a court order will be required, as illustrated by this case.

In simple terms, the case questioned whether service of the notice of appeal of a delegate’s decision on an address for service in Australia constituted effective service.  The complication in this case is that the address for service was an address provided by the party pursuant to s 215 of the Trade Marks Act 1995 (Cth). S 215 of the Trade Marks Act 1995 requires an Australian or New Zealand address for service.

However, this case involved the services of documents relating to an appeal to the Federal Court from a decision of IP Australia. IP Australia is not a Court. Its decisions can be appealed to the Federal Court and are heard on a de novo basis.

The Appellant (‘Freshfood’) needed to effect service upon the Respondent (‘Pablo’) of the notice of appeal and sought initially to achieve this via electronic means and then express post to a nominated address for service under the Trade Marks Act.  Freshfood’s solicitor received notice that the legal practice had not received instructions to accept service, notwithstanding it had been nominated as the address for service.

Examining whether there had been effective service, Thawley J accepted a decision Wilcox J’s on an interpretation of FCR r10.08 which he found applicable in preference to the service provisions of the Trade Marks Act 1995 (Cth).  Rule 10.08 outlines how service may be achieved in a “proceeding brought against the owner of a registered trade mark”.  However, as Wilcox J noted, this was not such a proceeding (as the application had been brought by the registered owner) and so r10.08, although complied with, was of no application in these proceedings.

Fortunately for Freshfood, its solicitor’s alternative argument was accepted by Thawley J.  The solicitor had served the registered address in Singapore. FCR r10.44 provides for the ‘service of other documents’ which the appeal from the delegate’s decision was held to be (and not an originating document). Wilcox J noted that Freshfood’s solicitor had “out on abundance of caution…caused a notice of the sealed notice of appeal to be served upon the respondent…at its registered corporate address in Singapore.

The lesson from the Freshfood case is that service of documents that are not originating documents (such as an appeal of a delegates decision) should be served in accordance with the appropriate Rule of the Federal Court Rules and practitioners cannot merely rely on the address for service of a trade mark.

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