Gain Capital UK Limited v Citigroup Inc (No 2)

Gain Capital UK Limited appealed against a decision of the Registrar of Trade Marks, which was upheld by the Full Court, that Gain Capital’s application for registration of a trade mark be refused. The matter came before the court on an interlocutory application by Gain Capital for leave to amend its notice of appeal, the reply and to rely on further evidence. The application for leave to amend was opposed by Citigroup Inc. The court was required to determine whether the interests of justice required the application to be granted, and whether prejudice to the respondent could be adequately remedied by an indemnity costs order. The court considered the application under section 37M of the Federal Court of Australia Act 1976 (Cth), which requires the court to consider whether it is just for the amendment to be made. The court found that the proposed amendment narrowed the scope of the proceedings, and the delay in seeking to amend was not satisfactorily explained. The court found that the prejudice to the respondent would be significant and could not be adequately remedied by an indemnity costs order. The court made orders that Gain Capital had leave to amend its notice of appeal and reply, but the hearing was vacated and rescheduled for a later date. The court also made orders that Gain Capital was to pay the costs of the interlocutory application.

In reaching its decision, the court considered the affidavit of Citigroup’s solicitor, Christopher Francis Jordan, who provided detailed evidence of the history of the proceedings, the steps taken by the parties to date, and the prejudice that would flow to Citigroup if the amendment was permitted. The court found that the prejudice to Citigroup was significant and could not be adequately remedied by an indemnity costs order. The court also considered the submissions of Gain Capital’s counsel, who argued that the amendment would narrow the scope of the proceedings and that the prejudice to Citigroup was overstated. The court found that the prejudice to Citigroup was significant and that the interests of justice required the application to be granted, subject to the payment of costs.