Tivo Inc v Vivo International Corporation Pty Ltd (No 2)

The case of Tivo Inc v Vivo International Corporation Pty Ltd (No 2) involved Tivo Inc, the applicant, cross-respondent, and Vivo International Corporation Pty Ltd, the first respondent and cross-claimant, with an additional party, the second respondent, also involved in the proceedings. The dispute centered around trade mark infringement, with Tivo Inc asserting that Vivo International Corporation Pty Ltd had infringed upon its registered trade mark for TIVO by using a mark for VIVO that was substantially identical or deceptively similar in relation to specified goods. The case was heard in the Federal Court of Australia.

The central legal issues addressed by the court were whether the former or current Federal Court Rules applied in determining the costs of the proceedings, and whether Tivo Inc, as the applicants and cross-respondents, should be awarded costs on an indemnity basis following a rejected offer of compromise. Additionally, the court had to decide whether the costs of the second respondent, incurred in relation to the claim for accessorial liability, should be paid by Tivo Inc.

In its decision, the court determined that the current Federal Court Rules applied to the proceedings. It found that Tivo Inc was entitled to costs on an indemnity basis because the offer of compromise had been rejected. The court also ruled that the costs of the second respondent should be borne by Tivo Inc, as they were exclusively attributable to the claim against the second respondent for accessorial liability. The court ordered that these costs be assessed on a party and party basis.

The final orders of the court included the cancellation of the first respondent's trade mark registration for VIVO, a restraint on the first respondent from using the VIVO mark in relation to specified goods, and the dismissal of the fast track cross-claim. Additionally, the court ordered that the monies deposited by Tivo Inc as security for costs be released to them, with interest, and that the first respondent pay Tivo Inc's costs on the specified basis. The court also directed that the second respondent's costs be paid by Tivo Inc.