Wilkshire v Registrar of Trade Marks (No 2)

[2009] FCA 1505

FEDERAL COURT OF AUSTRALIA

Wilkshire v Registrar of Trade Marks (No 2) [2009] FCA 1505

PRACTICE AND PROCEDURE – Costs – indemnity costs – such costs not to be awarded as of course following summary dismissal – such costs awarded following application of principles informing the judicial discretion – unrepresented lay applicant not immune to order for indemnity costs – applicant on notice that proceedings had no reasonable chance of success – applicant in breach of prior contractual undertakings in consent orders not to threaten or initiate any form of action in relation to the respondent’s mark – applicant’s history of various unsubstantiated scandalous allegations against the Delegate and the respondent a factor – award of indemnity costs appropriate in the circumstances

Trade Marks Act 1995 (Cth) ss 62A, 88
Federal Court of Australia Act 1976 (Cth) s 31A
Federal Court Rules O 23 r 11

Wilkshire v Registrar of Trade Marks [2009] FCA 1222 considered
Re Wilcox:  Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727 applied
Colgate-Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225 applied
Ogawa v The University of Melbourne (No 2) [2004] FCA 1275 cited
Bhagat v Global Custodians Ltd [2002] FCA 223 cited

Dal Pont, Law of Costs [16.39] ff (2^nd ed, 2009)

PETER JOHN WILKSHIRE v REGISTRAR OF TRADE MARKS and BOMBALA COUNCIL

ACD 6 of 2009

FINN J
15 DECEMBER 2009
ADELAIDE

IN THE FEDERAL COURT OF AUSTRALIA
AUSTRALIAN CAPITAL TERRITORY DISTRICT REGISTRY
GENERAL DIVISION	ACD 6 of 2009

BETWEEN: PETER JOHN WILKSHIRE
Applicant

AND:

REGISTRAR OF TRADE MARKS
First Respondent

BOMBALA COUNCIL
Second Respondent

JUDGE:	FINN J
DATE OF ORDER:	15 DECEMBER 2009
WHERE MADE:	ADELAIDE

THE COURT ORDERS THAT:

1.The applicant pay the second respondent’s costs on an indemnity costs basis (including its costs of the motions of 19 June 2009 and of 21 September 2009).

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

The text of entered orders can be located using eSearch on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
AUSTRALIAN CAPITAL TERRITORY DISTRICT REGISTRY
GENERAL DIVISION	ACD 6 of 2009

BETWEEN: PETER JOHN WILKSHIRE
Applicant

AND:

REGISTRAR OF TRADE MARKS
First Respondent

BOMBALA COUNCIL
Second Respondent

JUDGE:	FINN J
DATE:	15 DECEMBER 2009
PLACE:	ADELAIDE

REASONS FOR JUDGMENT

1. In Wilkshire v Registrar of Trade Marks [2009] FCA 1222 I ordered that the application made by Mr Wilkshire under s 88 of the Trade Marks Act 1995 (Cth) be summarily dismissed under s 31A of the Federal Court of Australia Act 1976 (Cth). The second respondent, the Bombala Council, requested at the time I published my judgment that I vacate my proposed order as to costs as it wished to seek indemnity costs in the matter.

2. The Council puts its claim for indemnity costs on two bases.  The first relies upon the discretion the Court has to depart from the usual principles informing the judicial discretion to award costs where the circumstances of the case…