Acohs Pty Ltd v Ucorp Pty Ltd (No 6) - [2013] FCA 1345

FEDERAL COURT OF AUSTRALIA
Acohs Pty Ltd v Ucorp Pty Ltd (No 6) [2013] FCA 1345

Citation: Acohs Pty Ltd v Ucorp Pty Ltd (No 6) [2013] FCA 1345

Parties: ACOHS PTY LTD (ACN 009 572 187) v UCORP PTY LTD (ACN 062 768 094) and BERNARD BIALKOWER

File number: VID 873 of 2004

Judge: JESSUP J

Date of judgment: 17 December 2013

Catchwords: COSTS – whether costs should be apportioned in circumstances where applicant succeeded on limited point on appeal but ultimately obtained permanent injunctive relief – where nature of applicant’s case altered by amendment at end of trial – where applicant unsuccessful in various aspects of its case

Cases cited: Acohs Pty Ltd v Ucorp Pty Ltd (2010) 86 IPR 492
Acohs Pty Ltd v Ucorp Pty Ltd (2012) 201 FCR 173
Acohs Pty Ltd v Ucorp Pty Ltd(No. 2) [2012] FCAFC 67
Acohs Pty Ltd v Ucorp Pty Ltd(No 5) [2013] FCA 1006

Date of hearing: 19 November 2013

Place: Melbourne

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 14

Counsel for the Applicant: Mr G Dalton

Solicitor for the Applicant: White Ellis Lawyers

Counsel for the Respondents: Mr P Wallis

Solicitor for the Respondents: Holding Redlich

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 873 of 2004

BETWEEN:
ACOHS PTY LTD (ACN 009 572 187)
Applicant

AND:
UCORP PTY LTD (ACN 062 768 094)
First Respondent

BERNARD BIALKOWER
Second Respondent

JUDGE:

JESSUP J

DATE OF ORDER:

17 DECEMBER 2013

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.Order 1 made on 2 September 2010 be amended –
(a)by deleting “Of the respondents’ costs referred to in Order 2 made on 10 June 2010, those that were” and by substituting therefor “The applicant pay the respondents’ costs”; and
(b)by inserting before the words “be taxed” the words “such costs to”.

2.The applicant pay the respondents’ costs incurred only in resisting the applicant’s claims that –
(a)the respondents had engaged in conduct in contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth);
(b)the respondents had engaged in passing off;
(c)the respondents had infringed the applicant’s trade mark;
(d)the source code for an electronic document in HTML format was an original work in which the applicant owned the copyright, and/or had been reproduced by the respondents;
(e)the “Blackwoods compilation” was an original work in which the applicant owned the copyright, and/or had been reproduced by the respondents;
(f)the respondents had infringed the applicant’s copyright by reproducing material safety data sheets at the request of J Blackwood & Son Ltd.

3.The applicant pay the respondents’ costs thrown away by reason of the application to amend, and the subsequent amendment of, the Sixth Further Amended Statement of Claim, the subject of the leave granted on 18 September 2009.
4.Subject to costs orders previously made in this proceeding, the respondents pay two-thirds of the applicant’s costs, including reserved costs, remaining after deducting costs incurred –
(a)in prosecuting either of the claims referred to…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] FCA 1345
Decision Date: 17 December 2013

CaseChat Overview and Summary

Acohs Pty Ltd sought review of an earlier decision in the Federal Court of Australia, challenging the apportionment of costs between itself and Ucorp Pty Ltd. The case revolved around various intellectual property and trade practices claims, including allegations of misleading or deceptive conduct, passing off, trade mark infringement, and copyright infringement. The trial judge had previously ordered Acohs to pay all of Ucorp’s costs, but the current application sought to revise this order in light of the trial judge’s decision to grant leave to amend the statement of claim after the trial had concluded.

The central legal issue before the court was whether the costs should be apportioned given that Acohs had succeeded on a limited point on appeal but ultimately obtained permanent injunctive relief. The court also needed to consider the effect of the amendment to Acohs’ statement of claim at the end of the trial, which altered the nature of its case, and Acohs’ lack of success in various aspects of its case.

The court held that Acohs should pay Ucorp’s costs only in resisting certain claims that Acohs had lost. These included claims related to contraventions of trade practices legislation, passing off, trade mark infringement, and copyright infringement in relation to specific works. Additionally, Acohs was ordered to pay the costs thrown away by the amendment to the statement of claim and the subsequent amendment itself. Conversely, Ucorp was ordered to pay two-thirds of Acohs’ remaining costs, after deducting those associated with the unsuccessful claims and the amendment process.

The court made several orders, including amending the earlier order on costs, directing Acohs to pay Ucorp’s costs in specific instances, and requiring Acohs to pay the costs resulting from the amendment to the statement of claim. Ucorp was ordered to pay two-thirds of Acohs’ remaining costs, subject to previous costs orders in the proceeding.

Orders

Orders of the court

1. Order 1 made on 2 September 2010 be amended –

(a) by deleting “Of the respondents’ costs referred to in Order 2 made on 10 June 2010, those that were” and by substituting therefor “The applicant pay the respondents’ costs”; and

(b) by inserting before the words “be taxed” the words “such costs to”.

2. The applicant pay the respondents’ costs incurred only in resisting the applicant’s claims that –

(a) the respondents had engaged in conduct in contravention of ss 52 and 53 of the Trade Practices Act 1974 (Cth);

(b) the respondents had engaged in passing off;

(d) the source code for an electronic document in HTML format was an original work in which the applicant owned the copyright, and/or had been reproduced by the respondents;

(e) the “Blackwoods compilation” was an original work in which the applicant owned the copyright, and/or had been reproduced by the respondents;

(f) the respondents had infringed the applicant’s copyright by reproducing material safety data sheets at the request of J Blackwood & Son Ltd.

3. The applicant pay the respondents’ costs thrown away by reason of the application to amend, and the subsequent amendment of, the Sixth Further Amended Statement of Claim, the subject of the leave granted on 18 September 2009.

4. Subject to costs orders previously made in this proceeding, the respondents pay two-thirds of the applicant’s costs, including reserved costs, remaining after deducting costs incurred –

(a) in prosecuting either of the claims referred to in Order 1 made on 2 September 2010 as amended this day,

(b) in prosecuting any of the claims referred to in Order 2 above, and

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Citation:	Acohs Pty Ltd v Ucorp Pty Ltd (No 6) [2013] FCA 1345
Parties:	ACOHS PTY LTD (ACN 009 572 187) v UCORP PTY LTD (ACN 062 768 094) and BERNARD BIALKOWER
File number:	VID 873 of 2004
Judge:	JESSUP J
Date of judgment:	17 December 2013
Catchwords:	COSTS – whether costs should be apportioned in circumstances where applicant succeeded on limited point on appeal but ultimately obtained permanent injunctive relief – where nature of applicant’s case altered by amendment at end of trial – where applicant unsuccessful in various aspects of its case
Cases cited:	Acohs Pty Ltd v Ucorp Pty Ltd (2010) 86 IPR 492 Acohs Pty Ltd v Ucorp Pty Ltd (2012) 201 FCR 173 Acohs Pty Ltd v Ucorp Pty Ltd(No. 2) [2012] FCAFC 67 Acohs Pty Ltd v Ucorp Pty Ltd(No 5) [2013] FCA 1006
Date of hearing:	19 November 2013
Place:	Melbourne
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	14
Counsel for the Applicant:	Mr G Dalton
Solicitor for the Applicant:	White Ellis Lawyers
Counsel for the Respondents:	Mr P Wallis
Solicitor for the Respondents:	Holding Redlich

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 873 of 2004

JUDGE:	JESSUP J
DATE OF ORDER:	17 DECEMBER 2013
WHERE MADE:	MELBOURNE