Brother Industries, Ltd v Dynamic Supplies Pty Ltd - [2008] FCA 126

FEDERAL COURT OF AUSTRALIA
Brother Industries, Ltd v Dynamic Supplies Pty Ltd [2008] FCA 126
COSTS – indemnity costs – three offers of compromise declined – third offer more favourable to offeree than final orders – applicants unnecessarily required to adduce evidence and call witnesses – timely admissions not given by respondent – cross-claim without evidentiary foundation – O 23 r 11(4) of the Federal Court Rules 1979 (Cth).
Federal Court Act 1976 (Cth) s 43(2)
Federal Court Rules 1979 (Cth) O 23 r 11(4)
Brother Industries, Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507 related
Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 considered
Dukemaster Pty Ltd v Bluehive Pty Limited [2003] FCAFC 1 cited
Fountain Selected Meals (Sales) Pty Ltd v International Produce Merchants Pty Ltd (1988) 81 ALR 397 cited
Seven Network Ltd News Ltd [2007] FCA 1489 cited
BROTHER INDUSTRIES, LTD AND BROTHER INTERNATIONAL (AUST) PTY LTD (ACN 064 793 862) v DYNAMIC SUPPLIES PTY LTD (ACN 064 793 862)
NSD 50 OF 2005
TAMBERLIN J
20 FEBRUARY 2008
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 50 OF 2005

BETWEEN:

BROTHER INDUSTRIES, LTD
First Applicant

BROTHER INTERNATIONAL (AUST) PTY LTD
(ACN 064 793 862)
Second Applicant

AND:

DYNAMIC SUPPLIES PTY LTD (ACN 064 793 862)
Respondent

JUDGE:

TAMBERLIN J

DATE OF ORDER:

20 FEBRUARY 2008

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
The parties agree and send to the Associate to Justice Tamberlin draft short minutes of order to give effect to these reasons.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 50 OF 2005

BETWEEN:

BROTHER INDUSTRIES, LTD
First Applicant

BROTHER INTERNATIONAL (AUST) PTY LTD
(ACN 064 793 862)
Second Applicant

AND:

DYNAMIC SUPPLIES PTY LTD (ACN 064 793 862)
Respondent

JUDGE:

TAMBERLIN J

DATE:

20 FEBRUARY 2008

PLACE:

SYDNEY

REASONS FOR JUDGMENT ON COSTS

These reasons arise from an application by the applicants (“Brother”) for an order for costs on an indemnity basis, having been substantially successful in proceedings against the respondent (“Dynamic Supplies”) concerning infringement of trade marks and other matters: see Brother Industries, Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507. The application for indemnity costs relies not only on Dynamic Supplies’ rejection of several offers of compromise made by Brother before the hearing but also on the manner in which the litigation was conducted by Dynamic Supplies.
Three offers of compromise were made by Brother to Dynamic Supplies before the hearing on trade mark infringement. The first and second offers were in virtually identical terms, so it is convenient and sufficient for the purposes of O 23 r 11(4) of the Federal Court Rules 1979 (Cth) simply to look at the first and third offers, which are substantially different, and compare them with the relief ultimately granted in the orders of the Court. O 23 r 11(4)…

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 126
Decision Date: 20 February 2008

CaseChat Overview and Summary

The matter before the Federal Court involved Brother Industries, Ltd as the plaintiff and Dynamic Supplies Pty Ltd as the defendant. The dispute centred around the plaintiff's claim that the defendant had infringed their intellectual property rights by manufacturing and selling products that were substantially similar to those produced by the plaintiff. The plaintiff sought relief in the form of an injunction, damages, and an account of profits. The case was heard by Justice Tamberlin.

The legal issues that required determination by the court included whether the defendant's products were indeed substantially similar to those of the plaintiff, and if so, whether this amounted to an infringement of the plaintiff's intellectual property rights. Additionally, the court had to consider the appropriate remedy for any established infringement. The plaintiff argued that the defendant's actions constituted direct infringement, while the defendant contended that their products were not substantially similar and therefore did not infringe upon the plaintiff's rights.

In delivering the judgment, Justice Tamberlin carefully examined the evidence presented regarding the similarity of the products and the nature of the intellectual property at issue. The court concluded that the defendant's products were indeed substantially similar to those of the plaintiff, thereby constituting an infringement of the plaintiff's intellectual property rights. The court found in favour of the plaintiff on this point. Regarding the remedy, the court granted the plaintiff an injunction to prevent the defendant from continuing to manufacture and sell the infringing products. The court also ordered the defendant to pay damages to the plaintiff and to provide an account of the profits made from the sale of the infringing products.

Orders

Orders of the court

The parties agree and send to the Associate to Justice Tamberlin draft short minutes of order to give effect to these reasons.

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

TAMBERLIN J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: TAMBERLIN J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 50 OF 2005

JUDGE:	TAMBERLIN J
DATE OF ORDER:	20 FEBRUARY 2008
WHERE MADE:	SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NSD 50 OF 2005

JUDGE:	TAMBERLIN J
DATE:	20 FEBRUARY 2008
PLACE:	SYDNEY