Bickford’s Australia Pty Ltd v Trink Tank Pty Ltd

This was a fight about a drinks brand, but the judgment is really about procedure and forum. Bickford’s owned the registered trade mark SPRITZ for non-alcoholic soft drinks. Trink Tank sold non-alcoholic beverages under the Grupetto brand. The parties exchanged solicitor correspondence from January to April 2025 about Bickford’s trade mark rights and alleged infringement.

The turning point came when Bickford’s warned that it intended to sue in the Federal Court unless undertakings were given and a revocation application against the SPRITZ mark was withdrawn. Trink Tank did not give the undertakings, although the revocation application was withdrawn. Before Bickford’s filed its foreshadowed claim, Trink Tank moved first and lodged a proceeding in the FCFCoA seeking relief for alleged unjustified threats of trade mark infringement. A few days later, Bickford’s filed its own Federal Court infringement proceeding against Trink Tank and its director, Mr Bax.

That might have been only a two-party procedural skirmish, except there was already another Federal Court case on foot. In separate proceedings, Bickford’s had sued Noot Drinks Co Pty Ltd and its director for alleged infringement of the same SPRITZ mark, and the Noot respondents had cross-claimed to cancel the registration. That existing Federal Court case became central to the judge’s reasoning because it meant the same trade mark was already being litigated in another forum with validity issues in play.

The judge had two interlocutory applications before the court. First, Bickford’s asked for the FCFCoA proceeding to be transferred into the Federal Court under s 32AC of the Federal Court of Australia Act 1976 (Cth). Second, Trink Tank asked the court to set aside Bickford’s originating application under r 13.01(1)(a) of the Federal Court Rules 2011 (Cth) and s 32AA(1), strike out the statement of claim and dismiss the proceeding. In the alternative, Trink Tank sought transfer of Bickford’s proceeding to the FCFCoA under ss 32AB and 32AA(2).

So the court was not deciding the underlying merits of infringement or unjustified threats. It was deciding the proper forum and the effect of the statutory scheme that regulates overlapping proceedings between the Federal Court and the FCFCoA. The key statutory provisions identified in the judgment were ss 32AA, 32AB and 32AC of the Federal Court of Australia Act.

Section 32AA(1) mattered because it says proceedings must not be instituted in the Federal Court if the FCFCoA has jurisdiction in the matter and proceedings in respect of an associated matter are already pending in the FCFCoA. Section 32AC mattered because it gives the Federal Court a discretionary power to transfer a civil proceeding from the FCFCoA to the Federal Court, including where proceedings in respect of an associated matter are pending in the Federal Court and the interests of the administration of justice support transfer. Section 32AB was relevant to the alternative transfer request made by Trink Tank.

The judgment is useful because it ties the practical forum dispute back to the statutory transfer regime. The court accepted that s 32AA(1) operates as a statutory bar where its requirements are met. The judge referred to earlier authorities including Carantinos, Isser and Boumelhem as support for that proposition. In other words, this was not treated as a mere case management preference. If an associated matter is already pending in the FCFCoA and that court has jurisdiction, a later Federal Court filing is not simply inconvenient. It is barred.

The next question was whether the Noot proceeding was an associated matter. The judge adopted the general approach drawn from Philip Morris that, speaking generally, one matter is associated with another if the two matters arise out of substantially the same, or closely connected, facts. That mattered because s 32AC(6)(b) required the court to have regard to whether proceedings in respect of an associated matter were pending in the Federal Court when deciding whether to transfer the FCFCoA proceeding.

The judge held that the Noot proceeding was associated with the FCFCoA proceeding. The reasons were concrete. Both proceedings concerned alleged infringement of the same trade mark. The relevant trade appeared to be a niche market. Both proceedings turned, in a practical sense, on whether the SPRITZ registration remained on foot. If Noot succeeded in cancelling the mark, that could answer or materially affect the Trink Tank dispute. The judge also considered the risk of inconsistent findings and inconsistent decisions across two courts, made worse by the possibility of appeals from both.

The court also noted evidence from Trink Tank and its solicitor saying they did not presently intend to challenge validity in the FCFCoA proceeding. But the judge did not treat that as decisive. The fact that instructions might change later, together with the history of a revocation application that had already been filed and then withdrawn, meant the possibility of validity issues re-emerging could not be ignored.

The Federal Court ordered that the FCFCoA proceeding, MLG 1128 of 2025, be transferred to the Federal Court. The judge held that the discretion under s 32AC was enlivened and should be exercised. The court had regard to the matters required by s 32AC(6), including the existence of associated proceedings in the Federal Court, the sufficiency of the Federal Court’s resources, and the interests of the administration of justice. The judge also recorded that the consultation required by r 27.02(2) of the Federal Court Rules had occurred through the Chief Justice and the Chief Judge of the FCFCoA.

The court then dismissed Bickford’s own Federal Court proceeding. The reason was direct. Both parties accepted that s 32AA(1) is a statutory bar where its requirements are met, and the judge said there was no doubt that this was so. Because the FCFCoA proceeding had already been filed and was an associated matter, Bickford’s later Federal Court proceeding had been instituted in the face of that bar.

The judge rejected the idea that Bickford’s proceeding should instead be transferred to the FCFCoA. Once the FCFCoA proceeding itself was being transferred into the Federal Court, there was no point sending Bickford’s proceeding the other way. Section 32AA(2), which deals with proceedings instituted in contravention of s 32AA(1) and subsequently transferred to the FCFCoA, therefore did not operate on the facts as the judge resolved them.

Importantly, the dismissal did not determine the merits against Bickford’s. The judge said there had been no consideration of the substantive merits and that Bickford’s could still pursue its claim against Trink Tank as a cross-claim in the transferred proceeding if so advised. That was the court’s practical solution to preserving the real controversy while enforcing the statutory bar.

The costs orders are commercially significant. Trink Tank was ordered to pay Bickford’s costs of both interlocutory applications on a party and party basis. The court also ordered that if Bickford’s filed a cross-claim in the transferred proceeding, Trink Tank would pay Bickford’s thrown-away costs on an indemnity basis for the work required to recast the claim.

The judge described Trink Tank’s FCFCoA filing as what appeared to be a pre-emptive strike. The court was careful to say that Trink Tank was entitled to file when it did. But it did so on clear notice that Bickford’s intended to file in the Federal Court imminently and on notice of the existing Noot proceeding. The judge considered that, had Trink Tank waited only a few days, it could have brought its unjustified threats claim as a cross-claim in Bickford’s Federal Court proceeding. By not doing so, Trink Tank caused unnecessary costs and created the potential for inconsistent findings between courts.

Businesses should not read this as saying that filing first is improper. The better reading is narrower and more practical. A tactical filing may be legally available, but if it fragments a dispute that is already closely connected to existing litigation, the court may later reorganise the proceedings and make costs orders against the party whose strategy created duplication. That is especially likely where the same trade mark, the same market and the same validity issues are already before another court.

If you are enforcing a trade mark, this case is a reminder to think beyond the demand letter. Consider whether there are already related proceedings, whether another party may respond with an unjustified threats claim, and whether your own claim should be brought as a fresh proceeding or by cross-claim. If you are on the receiving end of a demand, filing quickly in another court may change the procedural landscape, but it may not secure a lasting forum advantage if there is already associated Federal Court litigation.

The judgment was delivered on 24 June 2025 by O'Sullivan J in the Federal Court of Australia. The hearing took place on 4 June 2025. The procedural chronology mattered to the result because the FCFCoA proceeding was lodged on 8 April 2025 and accepted for filing on 9 April 2025, while Bickford’s Federal Court proceeding was not filed until 14 April 2025.

This remains a procedural authority about transfer, dismissal and costs in overlapping trade mark litigation. It should not be read as a final determination of the underlying brand dispute between Bickford’s and Trink Tank.