C a Henschke & Co v Rosemount Estates Pty Ltd
[1999] FCA 1813
•21 DECEMBER 1999
FEDERAL COURT OF AUSTRALIA
C A Henschke & Co v Rosemount Estates Pty Ltd [1999] 1813
C A HENSCHKE & CO AND ORS v ROSEMOUNT ESTATES PTY LTD
S 50 of 1999FINN J
21 DECEMBER 1999
CANBERRA
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
S 50 OF 1999
BETWEEN:
C A HENSCHKE & CO
First ApplicantDORIS ELVIRA HENSCHKE and CHRISTINE ANN STEVENS (as executors in the Estate of the late Cyril Alfred Henschke)
Second ApplicantsAND:
ROSEMOUNT ESTATES PTY LTD
RespondentJUDGE:
FINN J
DATE OF ORDER:
21 DECEMBER 1999
WHERE MADE:
CANBERRA
THE COURT ORDERS THAT:
1.The application (including the application referred by the Deputy Registrar of Trade Marks pursuant to s 94 of the Trade Marks Act under reference dated 8 June 1999) in these proceedings be dismissed.
2. The cross-claim in these proceedings be dismissed.
3.The applicants pay the respondent's costs of and incidental to the application herein, including reserved costs, such costs to be taxed if not agreed.
4.The cross-claimant pay the cross-respondents' costs of and incidental to the cross-claim herein, including reserved costs, such costs to be taxed if not agreed.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
S 50 OF 1999
BETWEEN:
C A HENSCHKE & CO
First ApplicantDORIS ELVIRA HENSCHKE and CHRISTINE ANN STEVENS (as executors in the Estate of the late Cyril Alfred Henschke)
Second ApplicantsAND:
ROSEMOUNT ESTATES PTY LTD
Respondent
JUDGE:
FINN J
DATE:
21 DECEMBER 1999
PLACE:
CANBERRA
REASONS FOR JUDGMENT
My reasons for decision in this matter were published on 11 November 1999. At that time I ordered that the respondent's cross-claim be dismissed. In consequence of a direction I then gave, the parties have since agreed to my making an order that:
"The application (including the application referred by the Deputy Registrar of Trade Marks pursuant to section 94 of the Trade Marks Act under reference dated 8 June 1999) in these proceedings be dismissed."
I gave a further direction that the applicants file and serve written submissions relating to whether they are "persons aggrieved" for the purposes of their non-use application under s 92 of the Trade Marks Act 1995 (Cth) to have the Hill of Gold mark removed from the Trade Marks Register.
The applicants accept that in light of my findings both in their Trade Mark Act and Trade Practices Act claims, they are not "persons aggrieved" for s 92 purposes. Nonetheless, against the contingency of a successful appeal against my judgment, they have requested that I give reasons and conclusions on the non-use claim. While I accept that there are circumstances in which it may be appropriate to express a view on matters that do not strictly arise in consequence of findings already made, I do not consider that the present case is one in which such a view should be expressed. The applicants do not have standing to make their non-use application. That in my view must be the end of the matter in the circumstances. I should add for the sake of completeness that the agreed order referred to above encompasses the non-use application.
Finally there is disagreement between the parties on the question of costs. The respondent seeks indemnity costs in relation to costs it incurred in relation to six of its own expert witnesses. The basis of this claim is that (a) from 22 September 1999 the respondent communicated to the applicants its concerns relating both to the volume of expert evidence it was receiving from the applicants as also to certain expressions of opinion in the experts' affidavits; (b) on 23 September 1999 the respondent filed a notice of motion seeking to have the number of expert witnesses to be called by each party to be limited to one and to have an early ruling on the admissibility of significant parts of the applicants' proposed expert evidence; (c) the notice of motion was brought on before me on 27 September when I deferred ruling on admissibility until the trial though adverting to the availability of indemnity costs as a possible means of averting prejudice occasioned by the expert evidence issue; (d) on 5 October 1999 the respondent's solicitors notified the applicants' solicitors that the respondent intended to seek an order for indemnity costs in relation to the respondent's preparation of further affidavit evidence to counter the evidence objected to, if the applicants continued to rely on it and it was found to be inadmissible; (e) the respondent after 27 September incurred significant cost in preparing the affidavit evidence of six experts and in arranging for the attendance of two of the experts at the hearing at the applicants' request; and (f) the applicants' expert Mr Forrestal apart, I did not admit (for some purposes) or attribute weight to (for other purposes) the evidence of the applicants' experts.
In these circumstances the respondent submits there are special or unusual matters that warrant the order for indemnity costs sought, as does the "justice of the case".
The language of the submission is cast, understandably, to reflect the language of Sheppard J in Colgate-Palmolive Company v Cussons Pty Ltd (1993) 46 FCR 225 where, at 233, his Honour observed:
"In consequence of the settled practice which exists, the Court ought not usually make an order for the payment of costs on some basis other than the party and party basis. The circumstances of the case must be such as to warrant the Court in departing from the usual course. That has been the view of all judges dealing with applications for payment of costs on the indemnity or some other basis whether here or in England. The tests have been variously put. The Court of Appeal in Andrews v Barnes (supra) at 141 said the Court had a general and discretionary power to award costs as between solicitor and client "as and when the justice of the case might so require". Woodward J in Fountain Selected Meats appears to have adopted what was said by Brandon LJ (as he was) in Preston v Preston (supra) at 637; namely, there should be some special or unusual feature in the case to justify the Court in departing from the ordinary practice. Most judges dealing with the problem have resolved the particular case before them by dealing with the circumstances of that case and finding in it the presence or absence of factors which would be capable, if they existed, of warranting a departure from the usual rule. But as French J said (at p 8) in Tetijo, "The categories in which the discretion may be exercised are not closed". Davies J expressed (at p 6) similar views in Ragata (supra)."
See also Re Wilcox;Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727, especially at 732-733, where the Full Court of this Court re-emphasised both the settled practice referred to by Sheppard J and the basis upon which it would be appropriate to depart from it.
The applicants do not question the principles to be applied. Rather they submit that there is not here such a special or unusual feature as would justify any indemnity costs order. Put shortly their submission is that it was for the respondent to make its own assessment of the evidence filed by the applicants and of the way it should respond to it. That the applicants filed that evidence even if ultimately it was either not admitted or else given little weight was not relevantly "a special or unusual circumstance" the more so when the respondent's expert evidence would be likely to be found to suffer the same defects as the applicants' expert evidence.
While having some sympathy for the respondent to the extent that it was confronted with a significant body of expert evidence from the applicants the admissibility and/or value of which was obviously going to be highly contestable - as proved to be the case - the respondent's decision to replicate such evidence itself by way of response should, in my view, properly be characterised as its own forensic choice. It may ardently have desired not to have been put by the applicants in a position where it had to make the choice - hence its motion of 23 September. But for costs purposes, while the choice it made may have been "necessary or proper" for the purpose of defending its rights: cf Federal Court Rules, O 62 r 19; it was nonetheless made in circumstances where a choice was available. I do not consider that the applicants should be required to pay indemnity costs because the respondent felt it was necessary to choose as it did and in the way that it did. The justice of the case does not require that result. I would add merely by way of comment that the present is far removed from the types of case and of conduct in litigation that are characteristically regarded as being illustrative of special circumstances warranting the sanction of indemnity costs.
Accordingly I will order the applicants to pay the respondent's costs of and incidental to the application including reserved costs, such costs to be taxed if not agreed.
In sum then the orders of the Court are that:
1.The application (including the application referred by the Deputy Registrar of Trade Marks pursuant to s 94 of the Trade Marks Act under reference dated 8 June 1999) in these proceedings be dismissed.
2. The cross-claim in these proceedings be dismissed.
3.The applicants pay the respondent's costs of and incidental to the application herein, including reserved costs, such costs to be taxed if not agreed.
4.The cross-claimant pay the cross-respondents' costs of and incidental to the cross-claim herein, including reserved costs, such costs to be taxed if not agreed.
I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn. Associate:
Dated: 21 December 1999
Counsel for the Applicants: Mr D Shavin QC with Ms G L Schoff Solicitor for the Applicants: Finlaysons Counsel for the Respondent: Mr D K Catterns QC Solicitor for the Respondent: Freehill Hollingdale & Page Argument was presented by way of written submission only Date of Judgment: 21 December 1999
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