Energy Beverages LLC v Cantarella Bros Pty Ltd (No 2)

Energy Beverages LLC (EB) applied to the Federal Court for a stay of dismissal orders and a stay of costs orders, as well as for indemnity costs and suppression orders, in proceedings against Cantarella Bros Pty Ltd (Cantarella). EB argued that the Federal Court had the power to rectify the Trade Marks Register if its appeals were successful, but that a stay was a more suitable course pending the determination of the appeals. Cantarella opposed the applications on the basis that the appeals had no reasonable prospect of success and that the applications were brought late. The Court was required to determine whether a stay or rectification of the Register was the more suitable course pending the determination of the appeals, whether the applications for a stay and for indemnity costs were appropriate, and whether suppression orders were necessary.

The Court found that while the Federal Court has the power to rectify the Register if an appeal is successful, the more appropriate mechanism to preserve the status quo and the subject matter of the appeal is a stay of the dismissal orders. The Court noted that the Register accurately records the present position, but that the questions of whether the MOTHERSKY mark should proceed to grant and the MOTHERLAND mark should remain on the Register have not yet been finally determined. The Court also found that the applications for a stay and for indemnity costs were appropriate, as EB had an arguable case on appeal and would be in a materially better position if it had accepted Cantarella's offer to settle the proceedings. However, the Court found that Cantarella was not wholly successful in the proceedings and therefore there would be no order as to costs in respect of the stay and indemnity costs applications. Finally, the Court found that suppression orders were necessary to prevent prejudice to the proper administration of justice.

The Court made the following orders: the dismissal orders and costs orders were stayed until the determination of the appeals; EB was ordered to pay Cantarella's costs up to 30 June 2021 and on an indemnity basis from 30 June 2021; there was no order as to costs in respect of the stay and indemnity costs applications; and suppression orders were made to prevent prejudice to the proper administration of justice.