JWH Group Pty Ltd v Kimpura Pty Ltd
[2004] WASC 39 (S)
•17 MARCH 2004
JWH GROUP PTY LTD & ANOR -v- KIMPURA PTY LTD & ANOR [2004] WASC 39 (S)
| SUPREME COURT OF WESTERN AUSTRALIA | Citation No: | [2004] WASC 39 (S) | |
| Case No: | CIV:2188/2003 | 19-21 & 27 JANUARY, 3, 12, 20, 27 FEBRUARY & 8 APRIL 2004 | |
| Coram: | PULLIN J | 17/03/04 | |
| 8/04/04 | |||
| 7 | Judgment Part: | 1 of 1 | |
| Result: | Costs order made in favour of plaintiffs | ||
| B | |||
| PDF Version |
| Parties: | JWH GROUP PTY LTD RURAL BUILDING COMPANY PTY LTD KIMPURA PTY LTD (ACN 006 048 479) J-CORP PTY LTD |
Catchwords: | Practice and procedure Costs Special costs order Plaintiff partially successful Plaintiff awarded nominal damages Turns on own facts |
Legislation: | Nil |
Case References: | Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 Hughes v Western Australian Cricket Association Inc (1986) ATPR 40-748 JWH Group Pty Ltd v Kimpura Pty Ltd [2004] WASC 39 LMI Australasia Pty Ltd v Baulderstone Hornibrook (No 2) [2002] NSWSC 72 Madden v McConnell [2001] NSWSC 1051 Mok v Minister for Immigration, Local Government & Ethnic Affairs (No 2) (1993) 47 FCR 81 Oshlack v Richmond River Council (1998) 193 CLR 72 Permanent Building Society v Wheeler (No 2) (1993) 10 WAR 569 Phillips Fox (a firm) v Westgold Resources NL [2000] WASCA 85 Rosniak v Government Insurance Office (1997) 41 NSWLR 608 Alltrans Express Ltd v CVA Holdings Ltd [1984] 1 WLR 394; [1984] 1 All ER 685 AngloCyprian Trade Agencies Ltd v Paphos Wine Industries Ltd [1951] 1 All ER 873 Australian Trade Commission v Disktravel [2000] FCA 62 Calderbank v Calderbank [1975] 3 All ER 333 Cretazzo v Lombardi (1975) 13 SASR 4 Esther Investments Pty Ltd v Markalinga Pty Ltd (1992) 8 WAR 400 Flotilla Nominees Pty Ltd v Western Australian Land Authority [2003] WASC 122 (S) McDade v Minister for Immigration and Multicultural Affairs [2000] FCA 809 NRMA Ltd v Morgan (No 3) [1999] NSWSC 768 Re Elgindata Ltd (No 2) [1992] 1 WLR 1207; [1993] 1 All ER 232 Schmidt v Gilmour [1988] WAR 219 |
JURISDICTION : SUPREME COURT OF WESTERN AUSTRALIA
- IN CIVIL
DECISION : 8 APRIL 2004 FILE NO/S : CIV 2188 of 2003 BETWEEN : JWH GROUP PTY LTD
- First Plaintiff
RURAL BUILDING COMPANY PTY LTD
Second Plaintiff
AND
KIMPURA PTY LTD (ACN 006 048 479)
First Defendant
J-CORP PTY LTD
Second Defendant
Catchwords:
Practice and procedure - Costs - Special costs order - Plaintiff partially successful - Plaintiff awarded nominal damages - Turns on own facts
(Page 2)
Legislation:
Nil
Result:
Costs order made in favour of plaintiffs
Category: B
Representation:
Counsel:
First Plaintiff : Mr M H Zilko SC & Mr M S Van Brakel
Second Plaintiff : Mr M H Zilko SC & Mr M S Van Brakel
First Defendant : Mr M J McCusker QC & Ms B J Murray
Second Defendant : Mr M J McCusker QC & Ms B J Murray
Solicitors:
First Plaintiff : Clayton Utz
Second Plaintiff : Clayton Utz
First Defendant : Mallesons Stephen Jaques
Second Defendant : Mallesons Stephen Jaques
Case(s) referred to in judgment(s):
Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261
Hughes v Western Australian Cricket Association Inc (1986) ATPR 40-748
JWH Group Pty Ltd v Kimpura Pty Ltd [2004] WASC 39
LMI Australasia Pty Ltd v Baulderstone Hornibrook (No 2) [2002] NSWSC 72
Madden v McConnell [2001] NSWSC 1051
Mok v Minister for Immigration, Local Government & Ethnic Affairs (No 2) (1993) 47 FCR 81
Oshlack v Richmond River Council (1998) 193 CLR 72
Permanent Building Society v Wheeler (No 2) (1993) 10 WAR 569
Phillips Fox (a firm) v Westgold Resources NL [2000] WASCA 85
Rosniak v Government Insurance Office (1997) 41 NSWLR 608
(Page 3)
Case(s) also cited:
Alltrans Express Ltd v CVA Holdings Ltd [1984] 1 WLR 394; [1984] 1 All ER 685
AngloCyprian Trade Agencies Ltd v Paphos Wine Industries Ltd [1951] 1 All ER 873
Australian Trade Commission v Disktravel [2000] FCA 62
Calderbank v Calderbank [1975] 3 All ER 333
Cretazzo v Lombardi (1975) 13 SASR 4
Esther Investments Pty Ltd v Markalinga Pty Ltd (1992) 8 WAR 400
Flotilla Nominees Pty Ltd v Western Australian Land Authority [2003] WASC 122 (S)
McDade v Minister for Immigration and Multicultural Affairs [2000] FCA 809
NRMA Ltd v Morgan (No 3) [1999] NSWSC 768
Re Elgindata Ltd (No 2) [1992] 1 WLR 1207; [1993] 1 All ER 232
Schmidt v Gilmour [1988] WAR 219
(Page 4)
1 PULLIN J: When I delivered my reasons for decision (JWH Group Pty Ltd v Kimpura Pty Ltd [2004] WASC 39), I reserved for later consideration the terms of judgment. The terms of judgment have now been agreed, save for the question of costs. The plaintiffs seek an order for costs of the action and seek a special costs order. The defendants oppose that and instead seek an order that the plaintiffs pay the defendants' costs of the action and similarly seek a special costs order.
2 The law and principles which apply are as follows. The Court has the power to award costs by reason of s 37 of the Supreme Court Act and O 66 r 1 of the Rulesof the Supreme Court, which provide between them that the costs of and incidental to all proceedings shall be in the discretion of the Court. Order 66 r 2(a) provides:
"In the absence of any special order, where the statement of claim contains more than one cause of action and the plaintiff succeeds on one or more causes of action and the defendant succeeds on another or others, costs shall be allowed to the plaintiff on the cause or causes of action on which he succeeds and to the defendant on that or those on which he succeeds, in the same manner as if separate actions had been brought."
3 Although that is the prima facie position, the Court retains a discretion and will look at the realities of the case and attempt to do substantial justice of the case: see Permanent Building Society v Wheeler (No 2) (1993) 10 WAR 569 at 574. As was said by Owen J in Phillips Fox (a firm) v Westgold Resources NL [2000] WASCA 85 at [28]:
"Where a party has succeeded on some issues and failed on others it is a legitimate exercise of the discretion as to costs to make an overall percentage deduction from the costs that would otherwise be awarded. This is especially so where it would be difficult to compartmentalise the costs from issue to issue. There are practical and pragmatic reasons to deal with costs in this way rather than attempt to award the costs of one issue to party 'A' and the costs of another issue to party 'B'."
4 However, where a litigant succeeds on only a portion of its claim, the circumstances may produce the result that not only should a party be deprived of costs on an issue but there may also be an order that the other parties' costs of that issue be paid: see Hughes v Western Australian Cricket Association Inc (1986) ATPR 40-748; Madden v McConnell
(Page 5)
- [2001] NSWSC 1051; LMI Australasia Pty Ltd v Baulderstone Hornibrook (No 2) [2002] NSWSC 72.
5 Where there is a mixed outcome, the apportionment of costs is very much a matter of impression and broad evaluation. The defendants have produced a schedule showing the precise time spent on issues and then set out, in percentage terms, what proportion this was to the total trial. However, as was said in Dodds Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261, mathematical precision is illusory.
6 A suggestion was made by Keely J in Mok v Minister for Immigration, Local Government & Ethnic Affairs (No 2) (1993) 47 FCR 81 that the power to order a successful litigant to pay the costs of an issue raised and lost ought to be exercised only where the raising of the issue was unreasonable. I accept what Mason P said in Rosniak v Government Insurance Office (1997) 41 NSWLR 608, namely that no such principle exists as a fixed proposition of law.
7 I also agree with Anderson J's comment in Permanent Building Society v Wheeler (No 2) (supra) that if an issue is raised unreasonably, that fact will raise considerations relevant to the exercise of the discretion. See also Oshlack v Richmond River Council (1998) 193 CLR 72 at [70]. The matter remains within the Court's discretion. The defendants point out that a plaintiff who recovers only nominal damages will not necessarily be regarded as a successful defendant: see Oshlack v Richmond River Council (supra).
8 I now turn to the facts in this case. The defendants point out that the plaintiffs failed on the issues relating to the Trade Practices Act causes of action, the Copyright Act cause of action, and the passing off causes of action. This, however, is not the way to examine the outcome or to identify the issues. As Toohey J said in the Hughes case, the reference to success or failure on issues is not a reference to precise issues in the technical pleading sense but rather a reference to any disputed question of fact. I would go further and say that the reference is to "areas" of disputed questions of fact.
9 In this case, there were a number of major areas of disputed fact. The first was whether any goodwill had developed in relation to the name Urban Answers. The second was about the ownership of copyright and the right to use the Southern River design. The third area related to the Brighton design, where similar issues were raised. The fourth area was the claim for damages generally, but mainly in relation to the Southern
(Page 6)
- River and Brighton designs. The fifth and catch-all area, but more limited so far as evidence was concerned, included issues about the proper construction of the contract between JWH and Kimpura and the claim relating to the Urban Answers logo.
10 The evidence and the facts were crafted by the plaintiffs into various causes of action, including breach of contract, breach of copyright, trade practice, and passing off. The plaintiffs sought relief which had the four objectives of gaining for one or other of the plaintiffs the right to, first, the name Urban Answers; secondly, the Southern River design; thirdly, the Brighton design; and, fourthly, the Urban Answers logo.
11 The defendants resisted all claims for relief and put all the areas of fact into issue. The defendants submit that the case wholly failed against the second defendant, but in fact the declarations which I will make were resisted by both defendants. The declarations will bind all parties to the litigation.
12 The plaintiffs have succeeded in gaining relief that will result in the first defendant meeting its contractual obligations to the first plaintiff to cause the second defendant to transfer the right to use the Brighton design, the Southern River design, and the Urban Answers logo, to the second plaintiff. The plaintiffs failed to gain any relief in relation to the name Urban Answers.
13 On a broad analysis, the plaintiffs succeeded in two of the major areas of disputed fact; that is, in relation to the Southern River and Brighton designs. They partly succeeded on construction issues. They succeeded on the issue relating to the logo. The plaintiffs failed on the major area of disputed fact relating to Urban Answers, and although they gained an award of damages, they were nominal in amount, and they failed to recover the substantial damages which took up the time in evidence.
14 Overall, my evaluation is that about half the trial was taken up on issues on which the plaintiffs failed. Nevertheless, it is correct to describe the plaintiffs as the successful party. They succeeded in gaining relief in relation to three of the four areas of claimed relief, that is relating to the two designs and the logo, albeit it was not precisely the relief that they hoped for.
15 In my opinion, taking all these factors into account, the plaintiffs should be deprived of some costs but should not be ordered to pay any
(Page 7)
- costs. I would therefore order that the defendants pay one-half of the plaintiffs' taxed costs.
16 There will be a certificate for second counsel and a certificate for the transcript of the proceedings. There will also be an order removing the limit in item 13 of the Supreme Court scale of costs, and although I think that would cover the costs of preparing the tender bundle, I will make an order, as the plaintiffs seek, that the plaintiffs be entitled to their reasonable costs of preparing the tender bundle.
17 In relation to par 6 of the minute proffered by the plaintiffs, the plaintiffs concede that they must pay the defendants' costs of the application to amend the indorsement of claim and to reopen the plaintiffs' case. The only remaining issue is whether or not the costs of 12, 20 and 27 February 2004, or some or all of those days, should be included. In my opinion, all three days followed from the applications to amend (or the stated intention to amend) the indorsement and reopen, and so I would make an order in terms of par 6, which will read:
"The plaintiffs do pay the defendants' costs of the plaintiffs' application to amend their indorsement of claim and reopen their case, including the costs of the hearing on 12, 20 and 27 February 2004."
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