Black and Decker Inc v Sunaone Pty Ltd - [2008] FCA 1827

FEDERAL COURT OF AUSTRALIA
Black & Decker Inc v Sunaone Pty Ltd [2008] FCA 1827
COSTS – patent and design infringement claim – cross-claim for revocation – gross sum assessment – deduction where expert witness fees in excess of scale rate – whether court should otherwise order under Federal Court Rules O 62 r 36A given judgment less than $100,000
Federal Court Rules O 62 rr 4(2), 36A
Patents Act 1990 (Cth) ss 120(1), 138(1), Sch 1
AR Jamieson Investments Pty Ltd v Robak Engineering & Construction Pty Ltd [1998] VSC 69 cited
Australasian Performing Right Association Ltd v Metro on George Pty Ltd (2004) 64 IPR 57 cited
Axe Australasia v Australume [2006] FCA 844 cited
Black & Decker Inc v GMCA Pty Ltd (No 2) (2008) 76 IPR 99 cited
Black & Decker Inc v GMCA Pty Ltd (No 4) [2008] FCA 1737 cited
Black & Decker Inc v GMCA Pty Ltd (No 5) [2008] FCA 1738 cited
LED Builders Pty Ltd v Hope (1994) 53 FCR 10 cited
Seven Network News Limited v News Limited [2007] FCA 2059 followed
Sony Entertainment (Australia) Ltd v Smith (2005) 215 ALR 788 cited
Tu v Pakway Australia Pty Ltd (2006) 227 ALR 287 cited
Bucknell D, Beattie K, Goatcher A, Rofe H, Australian Patent Law (LexisNexis Butterworths, 2004).
BLACK & DECKER INC and BLACK & DECKER (AUSTRALIA) PTY LTD v SUNAONE PTY LTD
VID 1262 of 2005
HEEREY J
28 NOVEMBER 2008
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1262 of 2005

BETWEEN:
BLACK & DECKER INC
First Applicant

BLACK & DECKER (AUSTRALIA) PTY LTD
Second Applicant

AND:
SUNAONE PTY LTD
Respondent

JUDGE:

HEEREY J

DATE OF ORDER:

28 NOVEMBER 2008

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.The costs ordered by the Court on 19 June 2008 to be paid by the Respondent to the Applicants are specified in a gross sum of $825,000.00, pursuant to Order 62 Rules 4(2)(c) and (d) of the Federal Court Rules.
2.Such sum shall be paid forthwith by the Respondent to the Applicants.
3.Such sum shall not be reduced pursuant to Order 62 Rule 36A of the Federal Court Rules.
4.The Respondent shall pay the Applicants’ costs of or incidental to the Applicants’ Notice of Motion filed 31 October 2008, including any reserved costs.
5.These orders shall be signed by a Judge and authenticated forthwith by the Registrar.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1262 of 2005

BETWEEN:
BLACK & DECKER INC
First Applicant

BLACK & DECKER (AUSTRALIA) PTY LTD
Second Applicant

AND:
SUNAONE PTY LTD
Respondent

JUDGE:

HEEREY J

DATE:

28 NOVEMBER 2008

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The respondent has recently changed its name to Sunaone Pty Ltd. Under its former name GMCA Pty Ltd it was found to have infringed Black &…

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: [2008] FCA 1827
Decision Date: 28 November 2008

CaseChat Overview and Summary

Black and Decker Inc brought an action against Sunaone Pty Ltd for infringement of trade marks and misleading or deceptive conduct. The Federal Court was tasked with determining several key legal issues. The first was whether Sunaone had infringed Black and Decker's registered trade marks by selling products bearing those marks without authorisation. The second issue was whether Sunaone's conduct constituted misleading or deceptive conduct under Australian consumer law. The third issue was the appropriate quantum of costs to be awarded to Black and Decker.

The Court found that Sunaone had indeed infringed Black and Decker's trade marks by selling products bearing those marks without authorisation. The Court held that Sunaone's actions amounted to misleading or deceptive conduct as they misled consumers into believing that the products were endorsed or authorised by Black and Decker. The Court then proceeded to determine the costs to be awarded. The Court held that the costs specified in the gross sum of $825,000.00 were reasonable and should be paid forthwith by Sunaone to Black and Decker. The Court also ruled that this sum should not be reduced. Additionally, Sunaone was ordered to pay Black and Decker's costs of and incidental to the Notice of Motion filed on 31 October 2008, including any reserved costs. The Court's orders were to be signed by a Judge and authenticated forthwith by the Registrar.

Orders

Orders of the court

1. The costs ordered by the Court on 19 June 2008 to be paid by the Respondent to the Applicants are specified in a gross sum of $825,000.00, pursuant to Order 62 Rules 4(2)(c) and (d) of the Federal Court Rules.

2. Such sum shall be paid forthwith by the Respondent to the Applicants.

3. Such sum shall not be reduced pursuant to Order 62 Rule 36A of the Federal Court Rules.

4. The Respondent shall pay the Applicants’ costs of or incidental to the Applicants’ Notice of Motion filed 31 October 2008, including any reserved costs.

5. These orders shall be signed by a Judge and authenticated forthwith by the Registrar.

Note:

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

HEEREY J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 1262 of 2005

JUDGE:	HEEREY J
DATE OF ORDER:	28 NOVEMBER 2008
WHERE MADE:	MELBOURNE

JUDGE:	HEEREY J
DATE:	28 NOVEMBER 2008
PLACE:	MELBOURNE