TM25 Holding B.V. v Ghamloush (No.2)
[2016] FCCA 3064
•5 December 2016
FEDERAL CIRCUIT COURT OF AUSTRALIA
| TM25 HOLDING B.V. & ORS v GHAMLOUSH (No.2) | [2016] FCCA 3064 |
| Catchwords: INTELLECTUAL PROPERTY – Infringement of trade marks and copyright –costs – undefended hearing – mediation vacated late due to respondent’s default – costs of airfares and accommodation already incurred. |
| Cases cited: TM 25 Holding BV & Ors v Ghamloush [2016] FCCA 2106 |
| First Applicant: | TM25 HOLDING B.V. |
| Second Applicant: | G-STAR RAW C.V. |
| Third Applicant: | G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) |
| Respondent: | MOHAMMAD GHAMLOUSH |
| File number: | MLG 2388 of 2014 |
| Judgment of: | Judge Riley |
| Hearing date: | On written submissions |
| Date of last submission: | 6 September 2016 |
| Delivered at: | Melbourne |
| Delivered on: | 5 December 2016 |
REPRESENTATION
| Counsel for the applicants: | Mr Tom Cordiner |
| Solicitors for the applicants: | K&L Gates |
| Counsel for the respondent: | No appearance |
| Solicitors for the respondent: | No solicitor on the record |
THE COURT ORDERS THAT:
The respondent pay the applicants’ costs of the proceeding fixed in the sum of $17,849.
There be no order as to the costs of the mediation scheduled on 25 August 2015.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT MELBOURNE |
MLG 2388 of 2014
| TM25 HOLDING B.V. |
First Applicant
And
| G-STAR RAW C.V. |
Second Applicant
And
| G-STAR AUSTRALIA PTY LTD (ACN 084 011 852) |
Third Applicant
And
| MOHAMMAD GHAMLOUSH |
Respondent
REASONS FOR JUDGMENT
Introduction
This is an application for costs following the determination of a claim of infringement of trade marks and copyright. The substantive issues were dealt with by the court in TM 25 Holding BV & Ors v Ghamloush [2016] FCCA 2106.
The applicants now seek:
a)the costs of the proceeding to be taxed in default of agreement on the Federal Court scale; and
b)indemnity costs to be taxed in default of agreement for a mediation scheduled on 25 August 2015 which was vacated.
The respondent did not participate in the final hearing but had previously been represented by solicitors. The respondent did not attend for the delivery of judgment. At that time, it was decided that the question of costs would be decided based on written submissions. The applicants have filed written submissions. The respondent has not done so.
The costs of the proceeding
The applicants have submitted that it is proper in this case to order the costs of the proceeding on the Federal Court scale because, they submit, the matter was more complex than usual and/or had issues of proof that were far more complex than the normal run of similar cases.
The applicants said that was the case because:
a)the respondent filed a bare denial defence and thus put the applicants to the proof of various formal and straightforward matters that should have been admitted;
b)the applicants advised the respondent by letter that if he did not admit matters that he could not realistically dispute they would seek the costs of proving those matters on an indemnity basis;
c)the respondent did not file any evidence or participate in the final hearing;
d)because the respondent denied the relevant importations, the applicants were obliged to subpoena Department of Immigration and Border Protection and other third parties; and
e)the final hearing required junior counsel to take the court through the law and, as there was no contradictor, a higher burden was placed on the applicants to ensure a fair trial.
Against those submissions is the fact that the final hearing proceeded on an undefended basis. Rather than taking two days, as estimated when the matter was listed for final hearing, the matter took about two hours. There was no need for the applicants’ witnesses to be cross examined, and, if memory serves me correctly, they did not attend court because there was no notice requiring them to do so. Similarly, the respondent did not attend and there was no need to cross examine him.
Although the applicants were put to the proof of all matters, that does not entitle them to additional costs. Rather, it means that they did not save the expenditure on various costs that would have been saved if those matters had been admitted. The issuing of subpoenas is factored into the scale of costs.
Although junior counsel did take the court through the law and the facts of the case, the applicants have not identified anything that made this matter significantly more complex than other trade mark and copyright infringement cases.
In all of these circumstances, it does not seem to me to be appropriate to order the costs of the proceeding on the Federal Court scale. On the contrary, it seems to me that the scale of this court is adequate to deal with the matter.
The scale, by my calculation, would allow for the following:
a)Item 1, up to completion of first court date: $2,887
b)Daily hearing fee for first directions: $294
c)Second directions hearing: $294
d)Item 7, preparation for a two day matter: $9,756
e)Item 13, counsel’s fees, with loading, one day: $3,243
f)Item 13, solicitor’s attendance, half day: $1,081
g)Item 9, taking judgment: $294
$17,849
The costs of the mediation on 25 August 2015
On 4 May 2015, a registrar ordered the parties to attend a mediation. As the respondent lives in Sydney, the applicants, whose solicitors are based in Melbourne, consented to the mediation taking place in Sydney. It was scheduled for 25 August 2015.
However, on 24 August 2015, the respondent’s former legal representatives informed the court and the respondent would be unable to attend, as he had departed for Lebanon on 14 August 2015 due to a family emergency. The mediation was vacated. However, the applicants had already incurred the costs of their solicitor’s airfares and accommodation.
Another mediation was scheduled in Melbourne on 20 November 2015. The respondent appeared at that mediation, possibly by telephone. It lasted two hours but did not resolve the matter.
The applicants submitted that they should get the costs of the airfares and accommodation that they booked for the mediation on 25 August 2015, because that money was thrown away, in circumstances where the respondent knew 10 days earlier that he would be unable to attend the mediation.
The applicants agreed to attend a mediation in Sydney, knowing that their solicitors were in Melbourne and the respondent was in Sydney, and knowing that the events in question occurred in Sydney. The applicants could have filed the proceeding in Sydney and avoided all of these issues.
More importantly, if the respondent had attended the mediation in Sydney, the applicants would have borne the cost of their solicitor’s airfares and accommodation without question. As it happened, another mediation took place in Melbourne, without the applicants incurring any further costs for their solicitor’s airfares or accommodation. Consequently, the applicants did not actually incur any costs above those that they had agreed to incur in any event.
In these circumstances, I do not consider that it is appropriate to order that the respondent pay the applicants’ costs of their solicitor’s airfares and accommodation connected with the mediation on 25 August 2015 on an indemnity or any other basis.
I certify that the preceding seventeen (17) paragraphs are a true copy of the reasons for judgment of Judge Riley
Date: 5 December 2016
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