Xenophon & No Pokies Compaign Inc v Spencer No. Scgrg-00-87

XENOPHON & ANOR v SPENCER
[2000] SASC 337

Civil

1................ DOYLE CJ....... This is an application by plaintiffs in an action for an order for costs against the defendant.

The first plaintiff, Mr Xenophon, is a Member of the Legislative Council of the South Australian Parliament. He is widely known in the community in connection with his campaign against poker machines. He is frequently referred to as the “No Pokies” Member of Parliament.
The second plaintiff is an incorporated association named “No Pokies Campaign Inc.” Mr Xenophon is the president of the Association. The objectives of the Association include the abolition of gaming machines.
On 18 May 2000 Mr Xenophon became aware that the defendant Mr Spencer had applied to register a political party with the name “No Pokies Party”. He became aware of this through a public advertisement. Mr Spencer has had no prior political association with Mr Xenophon with the Association or, so far as Mr Xenophon is aware, with the political activities of Mr Xenophon.
These findings which I make are based upon the only affidavit material before me, comprising an affidavit from Mr Xenophon.
In his affidavit, Mr Xenophon deposes to what I consider to be an understandable concern on his part, and a reasonable concern, that the registration by the defendant of the name “No Pokies Party” would cause confusion in the minds of the public and would imply an association between the plaintiffs and the party that the defendant ought to register.
Mr Xenophon objected to the registration of the proposed party. He did so by lodging an objection with the State Electoral Commissioner. By letter dated 2 May 2000, sent by Mr Xenophon’s solicitors, Mr Xenophon sought undertakings from Mr Spencer. In brief, the undertakings were not to use the name “No Pokies Party”, or a similar name, in a way that would cause the public to believe that there was an association between either of the plaintiffs and the proposed political party.
By letter dated 25 May 2000 Mr Spencer replied to the solicitors. He said that until the Electoral Commissioner had made his decision on the application to register the party, it was ‘inappropriate to either acquiesce or accede to your demands’.
In early August 2000 Mr Xenophon learned that Mr Spencer had applied to register the words “No Pokies Party” as a trade mark under the Trade Marks Act. Mr Xenophon received information suggesting that Mr Spencer was asserting that if the trade mark was registered, that registration would prevail, being pursuant to Commonwealth legislation, over any registration of the name under State law. Again Mr Xenophon was reasonably concerned by this. He sought further information. He ascertained that a request had been made for an expedited examination of the application for a registration of the trade mark.
By letter dated 25 August 2000, Mr Xenophon was informed by the State Electoral Commissioner that the application to register the name “No Pokies Party” had been disallowed.
On 29 August 2000 the plaintiffs issued these proceedings. In brief, they sought an injunction to restrain the defendant from registering the trade mark and from using the name “No Pokies” and similar names.
Although the defendant’s residential address was known to the plaintiffs, considerable difficulty was experienced in effecting service.
From the affidavits filed before me, I was previously satisfied that Mr Spencer was aware of the proceedings and was endeavouring to avoid being served.
When the matter first came before me on 8 September, I ordered that service of the proceedings be deemed to have been effected on Mr Spencer by the leaving of relevant documents at his address and by the posting of those documents to him. In other words, I ordered that the steps already taken to effect service be deemed to have been effective service. I ordered that that order be served on Mr Spencer in the same way, and adjourned the application for an injunction to 15 September.
At that stage, that is on 8 September, I was not prepared to grant an ex parte injunction, that is an injunction in Mr Spencer’s absence. In so deciding I was influenced by a letter of 30 August 2000, that is, after proceedings were issued, that Mr Spencer had sent the solicitors Mr Xenophon. In that letter he said he did not propose to pursue the registration of the political party. He gave an undertaking not to use the name “No Pokies Party”, and like names, in a way that could mislead people to believe that he was associated with either of the plaintiffs.
Another document provided by Mr Spencer to the solicitors establish that Mr Spencer had, on 31 August 2000 written to the Trade Marks Office abandoning his application to register the trade mark.
The matter came before me again on 15 September. Mr Spencer was present, although he had not filed an appearance. When he appeared again before me today, he undertook to file an appearance, and on that basis I heard him today.
On 15 September it was clear enough that Mr Spencer had retreated from the field, and that his trade mark application and application to register the name of a political party had been abandoned. He did not resile from the undertaking that he had already given. On 15 September I was not prepared to grant an injunction although by now Mr Spencer was present. I took the view that it was not appropriate to make any order in view of the conduct and undertakings by Mr Spencer.
Today the plaintiffs seek an order for costs of the proceedings. The present state of the proceedings is as described. I have ordered that service be deemed to be effected on Mr Spencer. He has not appeared in the proceedings but has undertaken to do so. I have not dismissed the application for injunction, but at this stage have not been prepared to make an order for an injunction. No pleadings have been filed. It remains open to the plaintiffs to proceed with their action. There is obviously little point in them doing so. Whether the plaintiffs could prove the asserted entitlement to restrain the use of the relevant names remains to be seen. Apart from the order as to service, the plaintiffs have not obtained any other order. In short, events have overtaken the proceedings. As I said, it is fair to say that Mr Spencer has retreated from the field of battle.
I take the view that, at this stage, I have no power to order that Mr Spencer pay the costs of the proceedings as a whole. The proceedings are still on foot. There is no basis for making an order for the costs of the proceedings as a whole.
The application for an injunction remains before me. If the application was pressed, I would, in the light of the event outlined, refuse to order an injunction. I would refuse to make the order simply because Mr Spencer’s assurances and undertakings make it unnecessary to do so. If I were to refuse to make the order for an injunction, I would not order that the plaintiffs pay Mr Spencer’s costs of the application for an injunction. In any event, as Mr Spencer has still not actually appeared in the proceedings, it is doubtful whether he has any entitlement to an order as to costs.
That leaves the question of whether, although I am not making any order for the grant of an injunction, I should make an order for costs in favour of the plaintiffs, relating to the costs of applying for the injunction.
When the application for the injunction was first issued, the application to register a political party had been unsuccessful, but as far as the plaintiffs were aware, the defendant was still making attempts to secure proprietary rights over the relevant names by means of a trade mark application. The defendant at that stage had not given the undertaking that he gave a few days later, not to use the name “No Pokies Party”, or any similar name in a manner that might cause confusion. The question is whether that is a sufficient basis, on the application for the injunction, to make an order against the defendant for costs of the injunction application, even though it is now unnecessary to consider, or to grant the application.
In my opinion an order for costs should be made. That is, an order for the costs of the application for the injunction. But for the undertaking, it is likely that I would have granted at least a limited injunction relating to the use of the relevant names, but possibly not impinging upon the trade mark application because of my doubts about the ability of this Court to make an order that would interfere with that application which was made under Commonwealth law. In other words, but for the undertaking that Mr Spencer gave, it is likely that I would have granted at least certain relief to the plaintiffs on the basis of the affidavit material before me.
In circumstances like this it is not easy to do justice, but I consider that Mr Spencer should pay part of the costs of the application and of the affidavits or perhaps I should say part of the costs of the application to the court. My view is that he should not have to pay the costs of the appearance of counsel on 8 September and 15 September, because I consider that by then it should have been clear that an actual order for an injunction would not have been granted However, I consider in the circumstances the plaintiffs acted reasonably in preparing and issuing the application for an injunction and I consider that it is only as a result of the undertaking Mr Spencer offered that he avoided the makings of an order by me.
Accordingly, I order that the defendant pay to the plaintiffs the costs of the application for the injunction and the affidavits in support, and the costs of an appearance by a solicitor before me on 8 September and 15 September, but not counsel fees incurred in connection with the appearances before me on either of those dates.
Although it will require some effort by the taxing master to precisely quantify that order, I consider that that is as precise as I can be at this stage.
I was also satisfied that the defendant was attempting to avoid service and it was on that basis that I made the order as to service that I did make.
Accordingly, I also order that Mr Spencer pay to the plaintiffs the costs of and incidental to the order made by me on 8 September, that service be deemed to have been effected in the manner provided by that order.
In making that order, my intention is that it embrace the costs of the various attempts to effect service and the cost of proof of those attempts.
As I have indicated, in my view it is not appropriate to make any further order as to costs and, in particular, it is not appropriate to make any order as to the costs of the proceedings generally. The two cost orders that I have made are limited to two distinct aspects of the proceedings, that is the order as to service, and the preparation and the making of the application for an injunction.
It remains open to the plaintiffs, if they see fit, to discontinue the proceedings under rule 52.01. Although that issue is not before me, it may well be that, if the plaintiffs were to discontinue the proceedings, it would be appropriate to order that the plaintiffs not be required to pay the costs for the proceedings to the defendant. In my view the circumstances giving rise to the proceedings are such that that would probably be an appropriate order, as the defendant can fairly be said to have brought these proceedings upon himself and I consider the plaintiff’s conduct to have been reasonable.
The cases make it clear that on an application that a discontinuing plaintiff not pay costs, it is not for the court to try the matters in issue in the proceedings and in expressing the views that I have expressed I was not purporting to do that.
If the plaintiffs were to discontinue the proceedings, it is another question whether despite that discontinuance the defendant should be ordered to pay the costs of those proceedings. I doubt whether it would be appropriate to make that order because, apart from the defendant’s attempts to avoid service, I take the view that it cannot be said that the defendant has been guilty of misconduct. His behaviour may have been opportunistic and there may have been an element of tactics on his part but I must remind myself that the ultimate issue of the entitlement of the plaintiffs to the relief they seek would remain unresolved if the proceedings were to be discontinued.
The most that could be said if they were discontinued is that more or less as soon as the proceedings were on foot, the defendant made it clear he had abandoned his foreshadowed course of action.
For those brief reasons, the only orders I make are the orders as to the cost of the order, as to service of the proceedings and the limited cost orders I have made in relation to the injunction application.

[2000] SASC 337

29 September 2000