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

In the matter of UCP Gen Pharma AG versus Mesoblast, Inc, the applicant sought a declaration that a trade mark of the respondent was invalid, and sought to have it removed from the Australian Register of Trade Marks. The case was initially determined by a delegate of the Registrar of Trade Marks, and was subsequently appealed to the Federal Court of Australia. The central issue in the appeal was whether the applicant, having been successful in the appeal, was entitled to its costs of proceeding before the delegate.

The court considered the principles relating to costs in Australian courts. It noted that ordinarily, the unsuccessful party in a proceeding is liable for the costs of the successful party. However, this principle is not absolute, and there are circumstances in which the court may decline to order costs. The court found that in this instance, the basis of the applicant's success in the appeal lay in facts which had arisen after the hearing before the delegate. Therefore, the court was of the view that it would not be appropriate to order the respondent to pay the applicant's costs of proceeding before the delegate.

Accordingly, the court dismissed the applicant's application for costs with respect to the proceeding before the delegate of the Registrar of Trade Marks. The court did, however, order that the moneys paid into court by the applicant in compliance with the orders made in the proceeding on 1 September 2011, together with any accrued interest, be released to the applicant. The entry of these orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.