UCP Gen Pharma AG v Mesoblast, Inc (No 2 )

FEDERAL COURT OF AUSTRALIA

UCP Gen Pharma AG v Mesoblast, Inc (No 2 ) [2012] FCA 500

Citation:		UCP Gen Pharma AG v Mesoblast, Inc (No 2 ) [2012] FCA 500
Parties:		UCP GEN PHARMA AG v MESOBLAST, INC
File number:		VID 597 of 2010
Judge:		JESSUP J
Date of judgment:		16 May 2012
Catchwords:		PRACTICE AND PROCEDURE – Appeal from Registrar of Trade Marks successful – Basis of success lay in facts which post-dated hearing before delegate of Registrar – Whether party successful in court should have its costs of proceeding before delegate.
Legislation:		Federal Court of Australia Act 1976 (Cth) s 43 Trade Marks Act 1995 (Cth) s 197
Date of hearing:	Heard on the papers
Date of last submissions:	17 April 2012
Place:	Melbourne
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	9
Counsel for the Applicant:	Ms S Ryan
Solicitor for the Applicant:	Davies Collison Cave Law
Solicitor for the Respondent:	Mr C Round for Middletons

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 597 of 2010

BETWEEN:	UCP GEN PHARMA AG Applicant
AND:	MESOBLAST, INC Respondent

JUDGE:	JESSUP J
DATE OF ORDER:	16 MAY 2012
WHERE MADE:	MELBOURNE

THE COURT ORDERS THAT:

1.The applicant’s application for costs with respect to the proceeding before the delegate of the Registrar of Trade Marks be dismissed.

2.The moneys paid into court by the applicant in compliance with the orders made in this proceeding on 1 September 2011, together with any accrued interest, be released to the applicant.  

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

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION	VID 597 of 2010

BETWEEN:	UCP GEN PHARMA AG Applicant
AND:	MESOBLAST, INC Respondent

JUDGE:	JESSUP J
DATE:	16 MAY 2012
PLACE:	MELBOURNE

REASONS FOR JUDGMENT

1. In the orders which I made in this proceeding on 15 March 2012, I gave the parties liberty to apply on the matter of costs: [2012] FCA 210. The successful applicant has now applied for its costs in the proceeding before the delegate of the Registrar of Trade Marks. In his decision made on 1 July 2010, the delegate awarded costs in favour of the respondent which, it will be recalled, was successful at that stage.

2. While the applicant has sought its costs of the proceeding before the delegate, the respondent has withheld its consent to the making of such an order.  Neither has it assisted me with any submissions with respect to that application.  Instead, in a short written submission filed on 17 April 2012, it has indicated that it “does not oppose” the variation of the delegate’s costs award sought by the applicant.  The position adopted by the respondent has made it necessary for me to deal with the applicant’s costs application by adjudication. 

3. The applicant has submitted that the court has a broad jurisdiction with respect to costs under s 43 of the Federal Court of Australia 1976 (Cth). That…