GLOBERIDE, INC. AND LEANNE MORRIS

[2024] NZHC 2931

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2024-404-203 [2024] NZHC 2931

UNDER

the Trade Marks Act 2002

IN THE MATTER

of an appeal from a decision of the Assistant Commissioner of Trade Marks

BETWEEN

GLOBERIDE, INC.

Appellant

AND

LEANNE MORRIS

Respondent

Hearing:	On the papers
Counsel:	T Mahood and J Glover for the Appellant D Marriott for the Respondent
Judgment:	9 October 2024

JUDGMENT OF GORDON J

[As to costs]

This judgment was delivered by me

on 9 October 2024 at 3.30 pm, pursuant to r 11.5 of the High Court Rules

Registrar/Deputy Registrar Date:

Solicitors:

HGM Legal, Auckland

J Glover, Barrister, Auckland D Marriott, Barrister, Auckland

GLOBERIDE, INC. v MORRIS [2024] NZHC 2931 [9 October 2024]

[1]This is a decision on costs.

[2]        The appellant, Globeride, Inc. (Globeride), applied to the New Zealand Intellectual Property Office (IPONZ) to revoke New Zealand trade mark no. 986073 (FEEL ALIVE trade mark). The FEEL ALIVE trade mark was owned by the respondent, Ms Morris. Ms Morris filed a counterstatement and evidence in the IPONZ proceeding in support of the registration.

[3]        On 5 December 2023, the Assistant Commissioner  of  Trade   Marks (Assistant Commissioner) directed that the FEEL ALIVE trade mark remain on the register of trade marks in relation to a narrowed range of goods.1 Globeride appealed this decision to the High Court, seeking complete revocation of the FEELALIVE trade mark. Ms Morris was content to abide the decision of the Court and accordingly took no part in the appeal.

[4]        On 9 August 2024, I allowed the appeal (the judgment).2 In an earlier minute, the proceeding had been set as category 2 and leave had been granted for Ms Morris to be heard on costs. Accordingly, I reserved costs.

[5]        Globeride seeks costs and disbursements in the sum of $19,883.50. This sum is comprised of $17,033.50 in relation to the judgment on a 2B basis, and $2,850 in relation to the IPONZ proceedings.

[6]        Ms Morris opposes the award of any costs. Mr Marriott on her behalf submits that Ms Morris bore no responsibility for any costs incurred by Globeride, either in the appeal or the IPONZ proceeding. Further, following  delivery  of the judgment,  Ms Morris made an offer, described as on a without prejudice  save as to costs basis, to settle the issue of costs. Globeride did not respond to the offer. In the  circumstances, Mr Marriott submits that it is appropriate for the Court to dismiss Globeride’s application for costs.

1      Morris v Globeride, Inc [2023] NZIPOTM 50.

2      Globeride, Inc. v Morris [2024] NZHC 2234.

Should costs be awarded against Ms Morris?

Costs on the IPONZ proceeding

[7]        Mr Mahood, counsel for Globeride, submits that it is appropriate for this Court to award $2,850 of reasonable costs and disbursements in relation to the IPONZ proceedings as set out  in  Schedule  2  to  this  judgment,  which  was  annexed  to Mr Mahood’s submissions.

[8]        Mr Mahood submits that it is appropriate to award costs associated with the IPONZ  proceedings  now,  rather  than   sending   the   matter   back   to   the Assistant Commissioner for determination of costs,3 for the following reasons:

(a)the Court on appeal has broad powers to make any order the Court thinks just, including any order as to costs;4

(b)the interests of justice and interests of efficiently using judicial (or quasi-judicial) resources are best served by this Court exercising its discretion to fix costs now, especially where the costs sought ($2,850) are modest;5 and

(c)this Court has previously exercised its discretion to determine costs relating   to   IPONZ   proceedings   in   appeals    of    an Assistant Commissioner’s decision.6

[9]The Assistant Commissioner’s determination as to costs was that:7

Both parties have had a measure of success and I consider it appropriate each party bear their own costs.

3      Trade Marks Act 2002, s 166(1).

4      High Court Rules 2016, r 20.19(1)(c).

5      Skids Programme Management Ltd v McNeill [2012] NZCA 491 at [12].

6      Effem Foods Ltd v Cadbury Ltd HC Wellington CIV-2004-485-2127, 12 December 2005 at [22]. Courts have also reversed or set aside costs orders made by the Assistant Commissioner of Trade Marks on successful appeal: see McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 40 (CA) at [59]; Mars New Zealand Ltd v Heinz Wattie’s Ltd [2012] NZHC 591 at [88]; Wistbray Ltd v Ferrero SpA HC Wellington CIV-2007-485-460, 11 December 2008 at [47].

7      Morris v Globeride, Inc, above n 1, at [65].

[10]      Given that Globeride has succeeded on appeal, it is appropriate that costs in the IPONZ proceeding are reconsidered. For the reasons advanced by Mr Mahood set out in [8] above, I consider it is appropriate for this Court to undertake that exercise.

[11]      Mr Marriott submits that Ms Morris simply filed a counterstatement to allow evidence of what use had been made of the trade mark  to be put before the Assistant Commissioner. She did not file submissions. It was then up to  the Assistant Commissioner to make a decision. Mr Marriott accordingly submits that on that basis no costs should be awarded in the IPONZ proceeding.

[12]I do not agree.

[13]      In her counterstatement Ms Morris asserted that the FEEL ALIVE trade mark had been continuously used in New Zealand by her company Feel Alive Ltd as exclusive licensee of the trade mark from 2013 until the present, upon and in physical or other relation to the goods in respect of which the trade mark was registered. She referred to the use of the trade mark as the trading name of her company in relation to the sale of the specified goods; sales of specified goods bearing the trade mark; promotion and sale of the specified goods from her company’s website; and the use of the trade mark in relation to advertising and promotion of her company in the specified goods.

[14]      Ms Morris’ affidavit was stated to be “in opposition to the application for revocation of the Trade   Mark  on  the  basis  of  non-use”.  She  stated   that  the FEEL ALIVE  trade  mark  had  been   continuously   and   exclusively   used   by Feel Alive Ltd as a brand for active clothing and associated accessories with her authority and licence since before 2013 when she applied  for the trade mark and that it continued to be used as at the date of her affidavit.

[15]      Given the position that Ms Morris took in the IPONZ proceeding opposing the application and now that Globeride has been entirely successful, I consider Ms Morris must pay Globeride’s costs and disbursements in the IPONZ proceeding of $2,850 as set out in Schedule 2.

Costs in High Court

[16]      Globeride seeks costs and disbursements of $17,033.50 in relation to the judgment on a 2B basis as set out in Schedule 1 to this judgment, which was annexed to Mr Mahood’s submissions.

[17]      The award of costs and disbursements is governed by part 14 of the High Court Rules 2016 (HCR). The Court has a broad discretion to award the costs of a proceeding.8 So far as possible the determination of costs should be predictable and expeditious.9

[18]      Mr Marriott submits that it would be unfair and unjust to award costs against Ms Morris in circumstances where she took no steps in relation to the appeal and advised the appellant and the Court of this at the earliest possible opportunity.

[19]      Mr Mahood submits that none of the factors in r 14.7 of the HCR which would displace the presumption that the costs of the appeal should follow the event, or would otherwise warrant a reduced costs award, are applicable.

[20]      I accept that none of the specific circumstances listed in r 14.7(a)–(f) applies. There is, however, a catch all “some other reason” provision in r 14.7(g). Costs may be reduced to take account of the less strenuous trial which follows a respondent abiding the outcome, the extent of the reduction being informed also by the extent of the contributing error and the reasonableness of the respondent’s conduct thereafter.10

[21]      In Wang v The District Court of New Zealand Woolford J took the following approach:11

[27]      In this case, given that Mr Wang did not oppose the proceeding and abided by the decision of the Court, I consider it is unfair to require him to be liable for the costs of the proceeding. Although Mr Wang could have consented rather than just “not opposed”, some court time would still have been required to consider the correct legal position, which would not be assumed to fall with the plaintiffs merely as the only represented party. Further, Mr Wang indicated that he would abide the Court decision even

8      High Court Rules 2016, r 14.1.

9      Rule 14.2(1)(g).

10     Hong v Deliu [2016] NZCA 75, [2016] NZAR 667 at [26].

11     Wang v The District Court of New Zealand [2015] NZHC 1611, [2015] NZAR 1678 at [27]–[28].

before submissions were filed. This was prompt, and appears to have been a reasonable position to take. I do not consider that Mr Wang was required to actively consent to the proceedings to be considered to have behaved reasonably.

[28]      In this case, the errors which “necessitated” the filing of an appeal were not as directly attributable to Mr Wang as the errors in issuing resource consents made by the Councils in the cases above. Although the underlying errors were in Mr Wang’s documentation for his private prosecution, the link is not so substantial to warrant a contribution. As evident  from Winkelmann J’s decision, a contribution will not alwaysbe consistent with the overall justice of the case. Costs should simply fall where they lie.

[22]      I intend to follow the approach of Woolford J. The error which necessitated  the appeal was that of the Assistant Commissioner. I do not consider Ms Morris contributed to that error. Ms Morris took no part in the appeal, advising the Court of her position at the earliest opportunity.

[23]Accordingly, I consider costs should lie where they fall in the High Court.

[24]      That being my decision it is not necessary to address the without prejudice save as to costs offer made by Ms Morris.

Result

[25]      The application by Globeride for costs in the IPONZ proceeding succeeds. I order Ms Morris to pay costs and disbursements of $2,850 to Globeride.

[26]      The application by Globeride for costs in the High Court is refused. Costs are to lie where they fall in the High Court.

______

Gordon J

Schedule 1 – Costs of the appeal

Category 2- daily recovery rate $2,390

Activity	Allocated day or part day	Total
52: Commencing an appeal	1	2,390
11: Memorandum for case management conference	0.4	956
13: Appearance at f irst case management conference	0.3	717
55: Preparation of Case on Appeal	1	2,390
56: Preparation of written submissions	3	7,170
57: Appearance at hearing for principal counsel	0.5	1,195
58: Appearance at hearing of second counsel	0.25	597.50
29: Sealing judgment	0.2	478
Disbursements
Filing notice of appeal		500
Scheduling fee		640
Total		$17,033.50

Schedule 2 – Costs before the Intellectual Property Office

Activity	Costs
Preparing and f iling an application for revocation	500
Receiving and perusing trade mark owner’s evidence	400
Preparation of case for hearing	600
Disbursements
Application fee	350
Hearing fee	850
Preparing bundle of documents	150
Total	2,850