FEDERAL COURT OF AUSTRALIA
Wang v Anying Group Pty Ltd (No 2) [2011] FCA 1413
Citation: Wang v Anying Group Pty Ltd (No 2) [2011] FCA 1413 Parties: HUA WEI WANG, XINYING PTY LTD (ACN 118 548 977) and NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568) v ANYING GROUP PTY LTD (ACN 126 282 657), YANYAN SUN and YUN CHEN; ANYING GROUP PTY LTD (ACN 126 282 657), YANYAN SUN and YUN CHEN v HUA WEI WANG, XINYING PTY LTD (ACN 118 548 977), NEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568), REGISTRAR OF TRADE MARKS, CHUANG WANG and ANYING INTERNATIONAL FINANCIAL PTY LIMITED (ACN 105 067 990) File number: NSD 768 of 2008 Judge: FOSTER J Date of judgment: 12 December 2011 Catchwords: COSTS – whether costs should be apportioned across particular issues or discounted having regard to the fact that part of the applicants’ case failed – whether the appropriate exercise of discretion in respect of costs is to discount the award that otherwise would have been made in favour of the successful parties Legislation: Trade Practices Act 1974 (Cth), ss 52, 53(d), 75B and 80
Australian Consumer LawCases cited: Wang v Anying Group Pty Ltd [2011] FCA 1196 related
Kazar (Liquidator) v Kargarian; In the Matter of Frontier Architects Pty Ltd (In Liq) [2011] FCAFC 136 citedDates of hearing: Determined on the papers Date of last submissions: 23 November 2011 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 15 Counsel for the Applicants/ First, Second and Third Cross-Respondents: Mr C Harris SC Solicitor for the Applicants/ First, Second and Third Cross-Respondents: Colin Biggers & Paisley Counsel for the First, Second and Third Respondents/ Cross-Claimants: Mr J Garnsey QC, Mr C Moschoudis Solicitor for the First, Second and Third Respondents/Cross-Claimants: Ren Zhou Lawyers Counsel for the Fourth, Fifth and Sixth Cross-Respondents: The Fourth, Fifth and Sixth Cross-Respondents did not appear
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 768 of 2008
BETWEEN: HUA WEI WANG
First ApplicantXINYING PTY LTD (ACN 118 548 977)
Second ApplicantNEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568)
Third ApplicantAND: ANYING GROUP PTY LTD (ACN 126 282 657)
First RespondentYANYAN SUN
Second RespondentYUN CHEN
Third RespondentAND BETWEEN: ANYING GROUP PTY LTD (ACN 126 282 657)
First Cross-ClaimantYANYAN SUN
Second Cross-ClaimantYUN CHEN
Third Cross-ClaimantAND: HUA WEI WANG
First Cross-RespondentXINYING PTY LTD (ACN 118 548 977)
Second Cross-RespondentNEW CENTURY 2001 PTY LTD TRADING AS ANYING SYDNEY COMPANY (ACN 114 661 568)
Third Cross-RespondentREGISTRAR OF TRADE MARKS
Fourth Cross-RespondentCHUANG WANG
Fifth Cross-RespondentANYING INTERNATIONAL FINANCIAL PTY LIMITED (ACN 105 067 990)
Sixth Cross-Respondent
JUDGE:
FOSTER J
DATE OF ORDER:
12 DECEMBER 2011
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
The respondents pay 80% of the applicants’ taxed costs (including reserved costs) of and incidental to…
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Details
- AGLC
- Wang v Anying Group Pty Ltd (No 2) [2011] FCA 1413
- Case
- [2011] FCA 1413
- Decision Date
CaseChat Overview and Summary
Wang v Anying Group Pty Ltd (No 2) involved a dispute between the applicant, Mr Wang, and Anying Group Pty Ltd and others. The matter pertained to allegations of misleading conduct and trade mark infringement in relation to foreign currency exchange services. The Federal Court of Australia was tasked with determining the appropriate relief and costs associated with the proceedings.
The court had to decide on the appropriate exercise of discretion in relation to the costs of the proceedings. The question arose whether costs should be apportioned across particular issues or discounted, considering that part of the applicant's case had failed. The court needed to balance the need for fair and just outcomes with the overarching principle that costs should follow the event.
The court considered that the applicant had succeeded on significant issues but failed on others. It was acknowledged that costs should reflect the outcome of the proceedings as a whole. However, given the partial failure of the applicant's case, the court determined that it was appropriate to exercise its discretion to order a discount on the costs awarded. The court held that a discount of 20% was appropriate, resulting in the respondents paying 80% of the applicant's taxed costs.
The orders of the court included that the respondents pay 80% of the applicants' taxed costs of and incidental to the whole of the proceedings to date, including the cross-claim. The court's decision reflected a balanced approach to the allocation of costs, recognising both the partial success and the partial failure of the applicant's claims.
The court had to decide on the appropriate exercise of discretion in relation to the costs of the proceedings. The question arose whether costs should be apportioned across particular issues or discounted, considering that part of the applicant's case had failed. The court needed to balance the need for fair and just outcomes with the overarching principle that costs should follow the event.
The court considered that the applicant had succeeded on significant issues but failed on others. It was acknowledged that costs should reflect the outcome of the proceedings as a whole. However, given the partial failure of the applicant's case, the court determined that it was appropriate to exercise its discretion to order a discount on the costs awarded. The court held that a discount of 20% was appropriate, resulting in the respondents paying 80% of the applicant's taxed costs.
The orders of the court included that the respondents pay 80% of the applicants' taxed costs of and incidental to the whole of the proceedings to date, including the cross-claim. The court's decision reflected a balanced approach to the allocation of costs, recognising both the partial success and the partial failure of the applicant's claims.
Orders
Orders of the court
The respondents pay 80% of the applicants’ taxed costs (including reserved costs) of and incidental to the whole of the proceedings to date including the Cross-Claim.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
On 21 October 2011, I published Reasons for Judgment in this matter (Wang v Anying Group Pty Ltd [2011] FCA 1196) (the principal judgment). After receiving Written Submissions from the parties as to the appropriate orders to be made, on 16 November 2011, I made orders giving effect to those Reasons. The orders which I made on that day were in the following terms:THE COURT:1.By consent, ORDERS that, with effect from 28 June 2010, the applicants’ entitlement to pecuniary remedies (if any) and the cross-claimants’ entitlement to pecuniary remedies (if any) and the quantum of any such remedies to which any party might be entitled be heard separately from and after all other questions in the proceedings.2.ORDERS that, pursuant to the provisions of s 88(1)(a) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks kept under s 207 of that Act be rectified by cancelling the registration of Australian Registered Trade Mark No 1100722.3.DECLARES that:(a)By carrying on business under or by reference to the name “Anying” (the Anying name); and(b)By using in connection with such business the logo and four Chinese characters depicted below:whether alone or in conjunction with the Anying name (the Anying trade mark), the first respondent has:(i)Passed off its business and the foreign currency exchange services provided by it as those of the third applicant;(ii)In trade or commerce, engaged in conduct that is misleading or deceptive or likely to mislead or deceive within the meaning of s 18(1) of the Australian Consumer Law and, until 1 January 2011, within the meaning of s 52 of the Trade Practices Act 1974 (Cth); and (iii)In trade or commerce, in connection with the supply or possible supply of services namely foreign currency exchange services and in connection with the promotion of the supply or use of such services, made false or misleading representations that it had and continues to have the sponsorship or approval of the third applicant or was affiliated with the third applicant and thereby contravened s 29(1)(g) of the Australian Consumer Law and, until 1 January 2011, contravened s 53(d) of the Trade Practices Act 1974 (Cth).4.DECLARES that the second and third respondents aided, abetted, counselled or procured the contraventions by the first respondent of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law specified in Order 3 above and were knowingly concerned in or party to those contraventions and were thus involved in such contraventions with the consequence that they are both liable for such contraventions by reason of the provisions of s 75B of the Trade Practices Act 1974 (Cth) and ss 2, 18 and 236 of the Australian Consumer Law.5.ORDERS that the first respondent by itself, its officers, its employees, its servants and its agents and otherwise howsoever, be restrained from carrying on business or trading under or by reference to the Anying name or the Anying trade mark or any name or trade mark substantially the same as the Anying name or the Anying trade mark.6.ORDERS that the second and third respondents by themselves, their officers, their employees, their servants and their agents and otherwise howsoever, be restrained from carrying on business or trading under or by reference to the Anying name or the Anying trade mark or any name or trade mark substantially the same as the Anying name or the Anying trade mark.7.ORDERS that the second and third respondents, and each of them, by themselves, their servants, their agents and otherwise howsoever be restrained from:(a)aiding, abetting, counselling or procuring; and(b)being in any way knowingly concerned in or party to another person or entity carrying on business or trading under or by reference to the Anying name or the Anying trade mark or any name or trade mark substantially the same as the Anying name or the Anying trade mark and be further restrained from conspiring with others to cause another person or entity to carry on business or trade in such a manner.8.DECLARES that, by representing to members of the public that:(a)The business of the third applicant and the business of the first respondent were one and the same; (b)The owner of the foreign currency exchange business conducted by the third applicant was the same person or entity as the owner of the foreign currency exchange business conducted by the first respondent; and(c)There was a business connection between the third applicant and the first respondent(the representations)the first respondent:(a)in trade or commerce, engaged in conduct that is misleading or deceptive or likely to mislead or deceive within the meaning of s 18(1) of the Australian Consumer Law and, until 1 January 2011, within the meaning of s 52 of the Trade Practices Act 1974 (Cth); and(b)in trade or commerce, in connection with the supply or possible supply of services namely foreign currency exchange services and in connection with the promotion of the supply or use of such services, made false or misleading representations that it had and continues to have the sponsorship or approval of the third applicant or was affiliated with the third applicant and thereby contravened s 29(1)(g) of the Australian Consumer Law and, until 1 January 2011, contravened s 53(d) of the Trade Practices Act 1974 (Cth).9.ORDERS that the first respondent by itself, its officers, its servants, its agents and otherwise howsoever, be restrained from making the representations, or any of them.10.NOTES that the third applicant has elected to claim an account of profits from the respondents (rather than damages) for passing off and for contraventions of the Trade Practices Act 1974 (Cth) and the Australian Consumer Law.11.ORDERS that the Application and the Further Amended Cross-Claim Application and Second Further Amended Cross-Claim (both of which were filed on 25 May 2010) (the Cross-Claim) otherwise be dismissed to the intent that, save for the relief granted by Orders 2 to 9 above and the preservation to the third applicant by these orders of its right to pursue the respondents for an account of profits, all other claims for relief stand dismissed. 12.ORDERS that, by no later than 23 November 2011, the parties file and serve any Written Submissions that they may wish to make on the question of costs both of the Application and of the Cross-Claim.13.ORDERS that thereafter the question of costs be dealt with on the papers. 14.ORDERS that the proceeding be listed for directions at 9.30 am on 30 November 2011 before Foster J for the purpose of making directions in respect of the third applicant’s claims for an account of profits.
Ratio Decidendi
Legal Principle Established
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