FPInnovation Pty Ltd v Registrar of Trade Marks (No 2)
[2013] FCA 975
•27 September 2013
FEDERAL COURT OF AUSTRALIA
FPInnovation Pty Ltd v Registrar of Trade Marks (No 2) [2013] FCA 975
Citation: FPInnovation Pty Ltd v Registrar of Trade Marks (No 2) [2013] FCA 975 Parties: FPINNOVATION PTY LTD (ACN 121 215 209) v REGISTRAR OF TRADE MARKS File number: NSD 1477 of 2012 Judge: COWDROY J Date of judgment: 27 September 2013 Legislation: Federal Court of Australia Act 1976 (Cth) s 43 Cases cited: Australian Securities Commission v Aust-Home Investments Ltd (1993) 44 FCR 194
Bragg v Secretary, Department of Employment and Training (1995) 59 FCR 31
FPInnovation Pty Ltd v Registrar of Trade Marks [2013] FCA 826
Latoudis v Casey (1990) 170 CLR 534
Milne v Attorney-General (Tas) (1956) 95 CLR 460Date of hearing: 28 August 2013 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 23 Counsel for the Applicant: Mr M Hall Counsel for the Respondent: Ms A Mitchelmore Solicitor for the Applicant: Hazan Hollander Solicitor for the Respondent: Australian Government Solicitor
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1477 of 2012
BETWEEN: FPINNOVATION PTY LTD (ACN 121 215 209)
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
COWDROY J
DATE OF ORDER:
27 SEPTEMBER 2013
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The orders made on 16 August 2013 be varied to include the following before order 1:
“1A. The question whether relief should not be granted to the Applicant on discretionary grounds be determined as a preliminary issue.”
2.Save as to order 4, the parties pay their own costs between 7 November 2012 and 2 April 2013 inclusive.
3.Prior to and including 6 November 2012 and after and including 3 April 2013, the Applicant pay the costs of the Respondent.
4.The Applicant pay the costs thrown away of the Respondent as a result of the listing on 20 December 2012.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1477 of 2012
BETWEEN: FPINNOVATION PTY LTD (ACN 121 215 209)
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
COWDROY J
DATE:
27 SEPTEMBER 2013
PLACE:
SYDNEY
REASONS FOR JUDGMENT
In the principal proceeding, the applicant (‘FPInnovation’) had sought review by the Court of a decision of the Registrar of Trade Marks (‘the Registrar’) to revoke the registration of certain trade marks and applications for the registration of trade marks (‘the revocation decision’). The Registrar filed an interlocutory application on 2 April 2013 to have the proceeding dismissed pursuant to r 30.02(b) of the Federal Court Rules 2011 (Cth). By its decision delivered on 16 August 2013 (‘the primary judgment’), the Court dismissed FPInnovation’s application: FPInnovation Pty Ltd v Registrar of Trade Marks [2013] FCA 826. The substantive dispute between the parties is set out in that decision.
This judgment concerns the question of costs of the proceeding. Each party seek orders for two issues, being the costs referable to a listing on 20 December 2012 (‘the December listing’) and the remainder of the costs in the proceeding.
COSTS OF THE DECEMBER LISTING
FPInnovation applied urgently to the Court on 17 December 2012 to have the principal proceeding relisted due to the alleged inadequate production of documents by the Registrar.
The Registrar had previously produced documents pursuant to orders made on 16 November 2012. FPInnovation believed however that written records, predominantly notes or communications made by the delegate of the Registrar who made the revocation decision, must have existed and should have been produced. Mr Hazan, solicitor for FPInnovation, specifically requested such records from Mr Gouliaditis, solicitor for the Registrar, in an email dated 14 December 2012. Such email also complained of delays in the production of documents generally.
Mr Gouliaditis replied by email on the same day noting that:
i.Mr Hazan had not responded to a letter dated 30 November 2012 which requested consent from FPInnovation for an extension of time to produce documents from 4 December 2012 to 12 December 2012;
ii.Mr Hazan had been advised on 5 December 2012 that the process of production was completed on that day, and it was suggested that the inspection be held on 7 December 2012;
iii.In the absence of a response, Mr Gouliaditis had written again to Mr Hazan on 10 December 2012 to advise that all of the documents had been produced to the Court.
By email dated 17 December 2012 Mr Hazan wrote to the Court, relevantly stating:
The applicant requests a relisting in the current Court term in relation to production issues the subject of Order 1 of the current timetable. Our counsel Mr Michael Hall is available on Thursday this week as he is otherwise engaged in a trial on the other days. I understand that Mr Gouliaditis who represented the respondent is not available on Wednesday as he is in Canberra that day.
The applicant is concerned to have the relisting this term so as to avoid delays that may protract the timetable, especially since significant time elapsed in the period from a hearing at IP Australia to the making of the decision the subject of review.
On the same day Mr Hazan responded to Mr Gouliaditis again asserting that not all of the relevant documents had been produced by the Registrar.
By email dated 18 December 2012 Mr Gouliaditis refuted the accusations stating, inter alia:
Documents material to the decision
We are instructed that all documents material to the decision are either on the electronic file and have been produced, or no longer exist. That material entirely consists of the examination files, representations from your client (including evidence and submissions) and legal reference material including standard texts and case law.
The decision-maker advises that he did make hand-written notes at the hearing, and did annotate printed copies of various authorities. However, these were not retained. Similarly, the decision itself went through a number of revisions, but drafts were not kept.
In light of the above explanation, we invite you to agree to the forthcoming directions-hearing being vacated.
In effect Mr Gouliaditis was restating his instructions as set out in his letter to Mr Hazan dated 14 December 2012. Further discussions between the parties then took place between 18 and 20 December 2012.
The proceeding came before the Court on 20 December 2012. Following the Court standing the matter down the parties resolved the issue between themselves. This is reflected in a letter dated 20 December 2012 from Mr Gouliaditis to Mr Hazan, which relevantly stated:
We confirm our client’s instructions to the effect that:
·an officer within the Trade Marks Office (TMO) conducted a reasonable search to identify documents required to be produced pursuant to the orders made the Court on 16 November 2012;
·the officer ensured that any documents still in existence and required to be produced were put on the relevant TMO files (if they were not already on the files); and
·this includes any email correspondence relevant to your client.
The Deputy Registrar confirms that he did not consult, by email or otherwise, with the examiners in the course of making the decision under review. Further, as is made clear in the decision, the Deputy Registrar relied exclusively on the material in the TMO files (including your client’s additional evidence and submissions) in making his decision: Re FPInnovation [2012] ATMO 74; 98 IPR 78 at [11] and [33].
As to the issue of the costs of the December listing, FPInnovation contends that they had good grounds for believing that documents not produced existed, and that the letter from Mr Gouliaditis immediately above achieved the purpose of verifying that all relevant documents had been produced. The Registrar submits that the listing of the matter was futile and that her position, as stated in the letter of Mr Gouliaditis of 14 December 2012, remained unchanged.
At the heart of the urgent listing lies an implication that the Registrar, in breach of her duty to the Court, had not produced all relevant documents. There was no basis however for such belief, and the Court is satisfied that FPInnovation made serious allegations of non-production without adequate grounds to do so. The urgent listing, in reality, achieved nothing of any real substance. Mr Gouliaditis’ letter of 20 December 2012 simply confirmed that all relevant documents identified in a search of the Registrar’s files were produced, a position maintained by the Registrar since 14 December 2012.
In the circumstances the Court concludes that the urgent listing of the matter on 20 December 2012 was unnecessary. Accordingly FPInnovation should pay the costs thrown away of that day.
GENERAL COSTS
FPInnovation submits that there should be no order as to the costs of the proceeding as there has been no determination of the merits of the challenge by FPInnovation to the revocation decision: Australian Securities Commission v Aust-Home InvestmentsLtd (1993) 44 FCR 194 at 201. In these circumstances, FPInnovation submits that even if it is entirely successful in having the effect of the Registrar’s decision vitiated under the Trade Marks Act 1995 (Cth) (‘the TM Act’), it will have no redress in respect of the costs of the present proceeding. Reliance is also placed upon a decision under the Administrative Decisions (Judicial Review) Act1977 (Cth) which involved dismissal of administrative proceedings in the absence of any determination being made as to the merits: Bragg v Secretary, Department of Employment and Training (1995) 59 FCR 31 at 34.
In the alternative, FPInnovation submits any costs it is ordered to pay should be reduced for the fact that although the Registrar foreshadowed the filing of her interlocutory application in November 2012, she did not do so until April 2013. FPInnovation incurred expenditure in the intervening period which would otherwise have been avoided.
The Registrar submits that it is entitled to an order for its costs in accordance with the usual course; namely that a wholly successful defendant is entitled to receive its costs unless good reason is shown to the contrary: Milne v Attorney-General (Tas) (1956) 95 CLR 460 at 477. The Registrar also refers to the well-established principle that costs are in their nature compensatory rather than punitive: Latoudis v Casey (1990) 170 CLR 534 at 543.
The Registrar was entirely successful on her interlocutory application. The Court found in the primary judgment that FPInnovation should not have sought judicial review of the revocation decision when provision for review was provided for by the TM Act. In these circumstances, the fact that the merits of FPInnovation’s application have not been determined does not impact upon the Court’s discretion under s 43 of the Federal Court of Australia Act 1976 (Cth) in respect of costs. The Registrar would, prima facie, be entitled to a costs order. However, there are other factors for consideration.
As early as 30 October 2012, the Registrar foreshadowed the possibility of an interlocutory application being made seeking that the application of FPInnovation be dismissed on discretionary grounds. The relevant facts on this issue are set out in the primary judgment at [32] as follows:
The originating application was filed on 28 September 2012, with the matter first returnable before the Court for directions on 7 November 2012. The Registrar asserted orally at the directions hearing that the proceeding should be dismissed as a matter of discretion. The Court requested both parties to provide brief written submissions on the issue. Having received and reviewed the written submissions, on 16 November 2012 the Court determined that the proceeding should continue in accordance with the short minutes of order provided by FPInnovation. Such orders set out a timetable for the inspection of documents relevant to FPInnovation’s originating application.
On 16 November 2012, the Court did not have the benefit of a formal hearing and was not minded at that preliminary stage to dismiss the proceeding.
In the following months, the parties attended to discovery and the production of documents. According to the Registrar’s submissions, it became apparent that issues to be relied upon by FPInnovation were far more extensive than previously believed. FPInnovation contends however that the documents produced were the Registrar’s own documents, and as such the Registrar should have been aware of all issues when her own discovery was completed.
By letter dated 4 February 2013, the Registrar invited FPInnovation to discontinue the proceeding with each party to pay its own costs. Such offer was rejected. Accordingly the Registrar filed an interlocutory application on 2 April 2013 which was decided by the Court in the Registrar’s favour.
The Court accepts that the Registrar should have filed her interlocutory application earlier than 2 April 2013. In the circumstances, each party should pay its own costs incurred between 7 November 2012, being the first return date for the matter, and 2 April 2013. Prior to 7 November 2012 and after 2 April 2013 the costs should be borne by FPInnovation as the unsuccessful party.
Further, as requested by the parties, the Court will amend its orders made on 16 August 2013 to make it clear that the primary judgment was determined as a preliminary issue.
I certify that the preceding twenty-three (23) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cowdroy. Associate:
Dated: 27 September 2013
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