Anheuser-Busch Incorporated v Budweiser Budvar National Corporation HC Wellington CIV-1997-485-35

[2005] NZHC 1703

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-1997-485-35

CP 361/97

UNDER

The Trade Marks Act 1953 The Fair Trading Act 1986

IN THE MATTER OF

(i)  Registered Trade Mark Infringement

(ii)  Passing Off

(iii)  Breach of the Fair Trading Act

(iv)  Revocation of Registered Trade Marks

BETWEEN

ANHEUSER-BUSCH INCORPORATED

Plaintiff

AND

BUDWEISER BUDVAR NATIONAL CORPORATION

First Defendant

AND

BEER FORCE INTERNATIONAL (1993) LIMITED

Second Defendant

Hearing:

14 April 2005

Appearances: Mr Brown and Mr Fogherty for Plaintiff

Mr Miles QC and Ms Laurenson for First Defendant No Appearance by the Second Defendant

Judgment:      11 May 2005

In accordance with HCR 540(4) I direct the Registrar to endorse this judgment with the delivery time of 4.00 pm on 11 May 2005

SUPPLEMENTARY JUDGMENT OF DOOGUE J ON COSTS

[1]                 The earlier judgment by me of 18 April 2005 dealt with costs in this Court in respect of the substantive proceeding following a decision of the Court of Appeal. AB applied for costs. BB resisted that. I ordered that costs in respect of the substantive proceeding in this Court should lie where they fell. AB’s application for costs also included an application for an order for repayment of costs already paid by

ANHEUSER-BUSCH INCORPORATED V BUDWEISER BUDVAR NATIONAL CORPORATION HC WN CIV-1997-485-35 [11 May 2005]

it to BB. Such an order was made in the judgment of 18 April 2005. Costs  in  respect of AB’s application for costs in respect of the substantive proceeding were reserved. In paragraph [56] of the judgment of 18 April I recorded that the parties agreed that costs in respect of AB’s application should be assessed on a 2B basis and that they asked that I reserve the issue of costs for further submissions. I recorded that in the ordinary course BB would be entitled to its costs on a 2B basis notwithstanding that it had slightly increased the costs by pursuing costs on its own account. Counsel for the parties have now filed written memoranda in respect of the issue of costs on AB’s application.

[2]                 AB now asks that the costs and disbursements on its interlocutory application for the repayment of costs already paid and for costs on the substantive proceeding should lie where they fall. It says it was the successful party on that  application albeit that it only succeeded in part. It further says that there is no basis for an award of costs to BB as it was an unsuccessful party. It accepts that AB failed in relation to an issue but says that it is debatable whether that issue significantly increased the costs of BB. It submits that the bulk of the time at the hearing was not spent dealing with AB’s application for costs but with an argument by BB that New Zealand law on costs should be brought into line with an alleged English approach. BB failed on that argument. AB says that there is no basis for treating BB as a successful party because it had at all times opposed the order for repayment of the costs on the substantive proceeding already paid by AB.

[3]                 BB seeks costs in respect of the application by AB on the basis that the order for repayment of costs already paid was a necessary sequel in one form or another of whatever order was made as to the costs of the substantive proceeding. It says that it was successful on the true issue, namely the costs of the substantive proceeding, on which AB failed entirely.

[4]                 In reaching the tentative view expressed by me in paragraph [56] of the earlier decision of 18 April I had already considered and addressed in my mind all the arguments now put forward by counsel in their written memoranda. I had no doubt then or now that the essential issue in respect of AB’s application was whether it was entitled to the costs of the substantive proceeding that it sought. The order as

to repayment upon which AB succeeded was a natural consequence of the order that costs should lie where they fall. The nature of that order was always going to be an ancillary matter depending upon the determination of the true dispute as to costs.   BB may have shown some intransigence in respect of costs but in this litigation the intransigence of both parties is a common place and not out of the ordinary. While BB may have formally opposed the repayment application it was apparent that unless BB itself succeeded in achieving a costs award it would have to be repaid. Any failure by BB to repay it to date is dealt with by the interest that flows on such amount. It is true that BB sought the costs of the substantive proceeding upon a  basis not at present part of the law of New Zealand. However, that did no more than slightly increase the costs of the hearing before me. It was certainly not a matter for HCR 48(d). It is BB that was successful on AB’s application as it successfully resisted AB’s application for costs. If BB had been fortunate enough to achieve  some measure of success for costs on its own behalf in respect of the substantive proceeding then the sum repayable by it to BB would have reduced.

[5]                 I accordingly order that BB is entitled to its costs of AB’s application for costs on the substantive proceeding on a 2B basis. Unless agreed, such costs, together with any reasonable disbursements, including a reasonable allowance for counsels’ travel and accommodation fees, are to be fixed by the Registrar. The costs reasonably include an allowance for second counsel.

Doogue J

Solicitors:

B M Sullivan, Henry Hughes & Co, Wellington G F Arthur, A J Park, Wellington