Coram- Davies J.
Date. 4 June 1993
Sydney

should make clear is that costs are not imposed by way of punishment, for an order as to costs is simply an incident of the proceedings. Ordinarily, if an applicant has
successfully sought an order of the Court, then the costs of the application are paid by the respondent. Of course, if the respondent succeeds, the respondent is awarded costs taxed on a party and party basis. So the standard principle is that the successful party will, in addition to any order for an amount recovered, also recover the costs of the proceedings on a party and party basis.

2 8 l U L 1 9 9 3

FEDERAL COURT OF

AUSTRALIA PRINCIPAL

REASONS FOR JUDGMENT REGISTRY

EX TEMPORE

The outstanding issue in these proceedings is one of costs. The first point I
Whilst that is the ordinary rule, the Court retams a discretion and, in the

light of certain conduct on the part of a successful applicant, may even make an order

that the whole of the costs be paid by the successful party.

Now, in these proceedings the applicants have been trading for some time

as manufacturers and retailers of bridal wear and have done so under a number of trading names in which the words "Bridal Factory" have figured prominently. The respondents have, in the past, conducted a retail business dealing with bridal wear under the name "Edessa Bridal", with shops at Fairfield and Chatswood. In March 1993, the respondents altered the nature of their operation by setting up a business

similar to that of the applicants. The respondent's business was located at Wetherill

Park, close to the applicant's business and was set up, not under their trading name of "Edessa Bridal", but under the name "Edessa Brldal Factory". From those premises,

the respondents manufacture and sell bridal wear to the public. So within a very short distance of each other there was established two premises of which either the trade name was Bridal Factory or a substantial part of the trade name was Bridal Factory. That each proprietor knew the other is plain, for the persons standing
behind the applicants and the respondents are all members of the one family.

Now, despite the submissions put by Mr Storie, solicitor for the respondents,

that the legal proceedings have been brought about by the applicant's failure to discuss this matter with the respondents, it seems to me that it must have been known

to the respondents that if they opened a premises close to the applicant's premises and used the applicant's name, together with the word Edessa, they…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Sacks v Permanent Trustee Australia Ltd

Details

AGLC: Sacks v Permanent Trustee Australia Ltd [1993] FCA 502
Case: [1993] FCA 502
Decision Date: 4 Jun 1993

CaseChat Overview and Summary

In the case of Sacks v Permanent Trustee Australia Ltd, the applicant, Youbert Yohana trading as Bridal Factory, sought an injunction against the respondents, Jen V.A. Pty Ltd and individuals Ben, Julius, and Julius Yohanna, to prevent them from using the name "Edessa Bridal Factory" for their business, which was located close to the applicant's bridal wear business. The legal issue before the court was the determination of costs following the agreement on the injunction. The court had to decide whether the respondents should bear the full costs of the proceedings, or if the applicants' choice of business name contributed to the litigation, warranting a reduction in the costs order.

Davies J held that while the standard principle in legal proceedings is that the successful party recovers costs on a party and party basis, the court retains discretion to adjust this based on the conduct of the parties. Given the respondents' delay in recognizing the implications of their business name and their failure to agree to remove the word "Factory" without limitation, the court found it appropriate to order the respondents to pay two-thirds of the applicants' costs. However, the court also considered the applicants' choice of the business name "Bridal Factory," noting that such a name, being descriptive and lacking distinctiveness, could not be monopolized. Consequently, the court reduced the costs order against the respondents by one-third, recognizing the special circumstances of the case.

The court's judgment concluded with an order that the respondents pay two-thirds of the applicants' costs of the proceedings, reflecting a balanced consideration of both parties' conduct and the broader context of the litigation. The decision underscores the court's discretionary power in cost orders and the importance of business name selection in avoiding unnecessary legal disputes.

Orders