O'Connor and Cowley Concepts Pty Ltd v Moller Og and Ors (No.2)

[2009] FMCA 681

FEDERAL MAGISTRATES COURT OF AUSTRALIA

O'CONNOR & COWLEY CONCEPTS PTY LTD v MOLLER OG COMPANY A/S & ORS (No.2) [2009] FMCA 681

PRACTICE AND PROCEDURE – Costs – costs associated with service outside of the jurisdiction.

Applicant: O'CONNOR & COWLEY CONCEPTS PTY LTD ACN 097 579 836

First Respondent: MOLLER OG COMPANY A/S

Second Respondents: PHILIP COWLEY AND
ELIZABETH O'CONNOR-COWLEY

File Number: BRG 830 of 2008

Judgment of: Wilson FM

Hearing date: 25 June 2009

Date of Last Submission: 25 June 2009

Delivered at: Brisbane

Delivered on: 25 June 2009

REPRESENTATION

Counsel for the Applicant: Mr Eliades

Solicitors for the Applicant: Xavier Kelly & Co

Solicitor for the First Respondent: Clayton Utz

ORDERS

1. That the first respondent pay to the applicant its costs of complying with Order 1 (b) made on 26 March 2009.

2. That the applicant's other costs of effecting service on the first respondent form part of its costs in the proceedings.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA AT
BRISBANE

BRG 830 of 2008

O'CONNOR & COWLEY CONCEPTS PTY LTD ACN 097 579 836

Applicant

And

MOLLER OG COMPANY A/S

First Respondent

PHILIP COWLEY AND ELIZABETH O'CONNOR-COWLEY

Second Respondents

REASONS FOR JUDGMENT

1. The court has today dealt with the First Respondent’s application for a stay of the principal proceedings.

2. The Applicant seeks an order for indemnity costs pertaining to its service of the initiating proceedings and other documents on the First Respondent, a corporation based in Denmark which also has international operations in a number of countries.

3. The history of the proceedings demonstrates that the Applicant certainly attempted to negotiate and facilitate a means of service that minimised its costs of doing so.  It was met, once the proceedings were threatened, with correspondence from a Sydney based firm of patent and trademark attorneys associated with a national firm of solicitors, but those attorneys made it clear that they were not instructed to act in the proceedings in this Court.

4. The First Respondent was entitled to insist on proper service being effected upon it, notwithstanding that the consequence of doing so would be to put the Applicant to some cost.  If the Applicant is successful in the proceedings those additional costs will no doubt be visited on the First Respondent.

5. The Applicant took a little time to bring an application to the Court for leave to serve the proceedings out of the jurisdiction.  That application was filed on 24 March 2009 and heard on 26 March when I granted leave to serve the proceedings out of the jurisdiction by two means.  The first was by sending the documents by registered mail to the registered office of the First Respondent and the second was to attend to personal service of the documents at the registered office of the First Respondent in Denmark.

6. On 3 April 2009 the documents were sent by registered mail and shortly thereafter a partner of the Sydney office of the First Respondent's solicitors contacted the Applicant's solicitors.  At that time that solicitor purported to communicate about proceedings in the Trademarks Office, referred to as the opposition proceedings, and said that she had no instructions to act in the proceedings in this Court nor to accept service on behalf of the First Respondent.

7. Two weeks later the Applicant was required to comply with the second limb of the order for service out of the jurisdiction, that is personal service on the First Respondent's registered office in Denmark.  Very shortly after that the Applicant’s solicitors received communications from two firms of solicitors, one of whom said that they were acting in the opposition proceedings and the same solicitors who now act for the First Respondent confirmed that they were acting in these proceedings.

8. It seems to me that although the First Respondent was entitled to insist that service be effected on it in accordance with the Rules, once the documents were sent by registered mail to the registered office of the First Respondent on 3 April 2009 the First Respondent's solicitors were engaged very shortly thereafter, such that by 16 April 2009 the partner of the Sydney office of the firm who now has conduct of the proceedings was contacting the solicitors for the Applicant.  In my view reasonable conduct would then have been to advise the Applicant's solicitors that the second means of service, that is personal service on the First Respondent's registered office, was no longer required because the solicitors had been instructed in the proceedings.

9. I am not persuaded that the First Respondent should pay all of the costs incurred by the Applicant at this stage, that were incurred by reason of having to serve the First Respondent out of the jurisdiction.  However, as I have said, I think that certain costs were unreasonably, from the point of view of the First Respondent, incurred and could have been saved.

I certify that the preceding nine (9) paragraphs are a true copy of the reasons for judgment of Wilson FM

Deputy Associate: J.K. Gasteen

Date:    16 July 2009