Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd

In the Federal Court of Australia, Bohemia Crystal Pty Ltd (BCP) brought an action against Host Corporation Pty Ltd (Host) and Mr Gavan Sullivan, claiming infringement of trade marks and misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth) (ACL). BCP alleged that Host infringed its Bohemia trade marks by importing, advertising, and selling Banquet glassware. Host denied these claims and argued that the Bohemia marks should be removed from the Trade Marks Register. The court found that the Bohemia trade marks should be revoked as they were not capable of distinguishing BCP's goods from those of other persons. The court also found that the BOHEMIA mark was infringed in respect of four of the five impugned uses but that the BOHEMIA CRYSTAL mark was not infringed at all. BCP's claim under the ACL was rejected.

The primary issue before the court was whether BCP was entitled to the costs of its successful trade mark infringement proceeding, given that the trade marks were ordered to be removed from the Trade Marks Register. BCP argued that it had prima facie success in relation to the trade mark infringement claims and that Host and Mr Sullivan should pay the costs of its application. Alternatively, BCP submitted that if costs were ordered generally in favour of Host and Mr Sullivan, the court should allow a percentage reduction of those costs to account for BCP's success in respect of its trademark infringement claim. Host and Mr Sullivan argued that they were entitled to costs on an indemnity basis because BCP had made an offer of compromise that Host and Mr Sullivan had not accepted. The court considered these arguments and concluded that Host and Mr Sullivan were entitled to costs on an indemnity basis.

The court found that BCP's offer of compromise was a genuine attempt to resolve the dispute and that Host and Mr Sullivan had not acted reasonably in rejecting it. The court also found that BCP's success in respect of its trademark infringement claim was not sufficient to warrant a reduction in the costs awarded to Host and Mr Sullivan. Accordingly, the court ordered that BCP pay Host and Mr Sullivan's costs in relation to the application and the cross-claim. The cross-claim was dismissed, and the application was dismissed.

The final orders were that the applicant pay the respondents' costs in relation to the application and the cross-claim, the cross-claim be otherwise dismissed, and the application be dismissed. Entry of orders was dealt with in Rule 39.32 of the Federal Court Rules 2011.