Manhaas Industries (2000) Limited v Fresha Export Limited

[2012] NZHC 2256

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV-2011-485-001255 [2012] NZHC 2256

UNDER  the Trade Marks Act 2002

IN THE MATTER OF     an appeal from the decision of the Assistant

Commissioner of Trade Marks dated 31

May 2011

BETWEEN  MANHAAS INDUSTRIES (2000) LIMITED

Appellant

ANDFRESHA EXPORT LIMITED Respondent

Judgment (on the papers):      3 September 2012

JUDGMENT AS TO COSTS OF COLLINS J

[1]      On  31  May  2011  an  Assistant  Trade  Mark  Commissioner  revoked  the

appellant’s trade mark registration in respect of the mark “OCEAN QUEEN”.  On

23 July 2012 I determined an appeal from the Assistant Trade Mark Commissioner’s

decision.  I dismissed the appeal and invited submissions as to costs.

[2]      The parties have been unable to agree on costs.  The appellant submits that it is entitled to costs because, from its perspective it was forced to pursue its appeal when the respondent reneged upon an agreement to assign the trade mark to it.  Such an assignment would have rendered the appeal unnecessary.

[3]      The respondent submits that it is entitled to costs because it has succeeded on appeal and because there was no complete agreement as to assignment because the appellant could not guarantee that any assignment of the trade mark would have been

free of all encumbrances and security interests.

MANHAAS INDUSTRIES (2000) LIMITED V FRESHA EXPORT LIMITED HC WN CIV-2011-485-001255 [3 September 2012]

[4]      The parties have now  provided me with  copies  of their communications (some  of  which  are  privileged)  to  demonstrate  the  merits  of  their  respective positions.

[5]      It is most unfortunate that the parties were unable to achieve a resolution of their differences.  From my perspective the appellant could, and should have either:

(1)given the undertaking sought by the respondent that the assignment of the trade mark would be free of any encumbrances or securities;  or

(2)       abandoned its appeal.

[6]      Either course of action would have circumvented the need for the parties to participate in an appeal with its associated costs.

[7]      I  am  far  from  convinced  that  the  appellant  is  entitled  to  costs.    In  my assessment, the bulk of the responsibility for the appeal having to proceed rests with the appellant for failing to take one of the two courses set out in [5] above.

[8]      I  have  determined  that  the  costs  associated  with  this  appeal  should  be determined in the normal way.  The respondent has succeeded.  Costs should follow

the event. The respondent is entitled to costs on a scale 2B basis.

D B Collins J

Solicitors:

A J Park Law, Wellington for Appellant

Baldwins Law Limited, Wellington for Respondent