Pinnacle Runway Pty Ltd v Triangl Limited

FEDERAL COURT OF AUSTRALIA

Pinnacle Runway Pty Ltd v Triangl Limited [2022] FCA 1246

File number(s):

VID 794 of 2016

Judgment of:

MURPHY J

Date of judgment:

19 October 2022

Catchwords:

COSTS – lump-sum costs procedure – whether the second respondent ought to provide the applicant with source material verifying the costs and disbursements claimed – where the source material is sought to verify the apportionment of costs between two related proceedings.

Legislation:

Federal Court of Australia Act 1976 (Cth) ss 37M, 37N

Cases cited:

Bayley & Associates Pty Ltd v DBR Australia Pty Ltd [2014] FCA 346

Paciocco v Australia and New Zealand Banking Group Ltd (No 2) [2017] FCAFC 146

Pinnacle Runway Pty Ltd v Triangl Limited(No 3)[2020] FCA 1379

Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662; 375 ALR 251

Division:

General Division

Registry:

Victoria

National Practice Area:

Intellectual Property

Sub-area:

Trade marks

Number of paragraphs:

26

Date of hearing:

Determined on the papers

Date of last submission/s:

3 March 2022

Counsel for the Applicant:

Mr A Sykes

Solicitor for the Applicant:

Actuate IP

Counsel for the Second Respondent:

Ms M J Evetts

Solicitor for the Second Respondent:

Corrs Chambers Westgarth

ORDERS

VID 794 of 2016

BETWEEN:

PINNACLE RUNWAY PTY LTD

Applicant

AND:

TRIANGL LIMITED

First Respondent

TRIANGL GROUP LIMITED

Second Respondent

ORDER MADE BY:	MURPHY J
DATE OF ORDER:	19 OCTOBER 2022

THE COURT ORDERS THAT:

1.The Second Respondent is not, at this stage, required to provide the Applicant with the source material requested by the Applicant, namely copies of tax invoices, itemised narrations and receipts for the payment of the costs and disbursements of the trademark infringement claim and the cross-claim in order to verify apportionment between the costs and disbursements of those respective proceedings. 

2.Order 3 of the Orders of Justice Murphy dated 3 October 2022 be vacated.

3.The parties shall file their Costs Summary and Costs Response respectively in accordance with Orders 2 and 4 of the Orders of Justice Murphy dated 3 October 2022.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

MURPHY J:

1. In the liability judgment in this matter (Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662; 375 ALR 251) the Court held that: (a) the applicant, Pinnacle Runway Pty Ltd, failed to establish its claim that the second respondent, Triangl Group Limited, had infringed its registered trade mark, DELPHINE; and (b) that Triangl failed to establish its cross-claim that Pinnacle’s registration of the DELPHINE mark should be cancelled on the basis that Pinnacle was not the first to use it.  In the liability judgment at [2] the Court described the litigation as “unfortunate”, said that there was no clear winner, and noted the parties had expended many times more in legal costs in bringing and defending the claim and cross-claim than could have ever been payable for damages if the infringement claim had been successful.  For reasons which…