TRADE ME LIMITED AND TRADE JOBS NZ LIMITED COLLEEN MARGARET GETLEY TONY ALAN GETLEY GETLEY LIMITED

[2024] NZHC 3186

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

I TE KŌTI MATUA O AOTEAROA TĀMAKI MAKAURAU ROHE

CIV-2023-404-425

[2024] NZHC 3186

UNDER

the Trade Marks Act 2002 and the Fair Trading Act 1986

BETWEEN

TRADE ME LIMITED

Plaintiff

AND

TRADE JOBS NZ LIMITED

First Defendant

COLLEEN MARGARET GETLEY
Second Defendant

TONY ALAN GETLEY

Third Defendant

GETLEY LIMITED

Fourth Defendant

Hearing:	On the papers
Counsel:	K T Glover and PJM Gerard for the Plaintiff E Gray and L Carter for the Fourth Defendant
Judgment:	31 October 2024

JUDGMENT OF GAULT J

(Costs)

This judgment was delivered by me on 31 October 2024 at 10:00 am pursuant to r 11.5 of the High Court Rules 2016.

Registrar/Deputy Registrar

……………………………………

TRADE ME LTD v TRADE JOBS NZ LTD [2024] NZHC 3186 [31 October 2024]

[1]    In my judgment of 10 June 2024 addressing the interlocutory application by Getley Ltd (Getley) for an order that Trade Me Ltd (TML) file and serve an amended defence to counterclaim that provides more explicit pleading and further and better particulars of TML’s reply and defence to counterclaim,1 I indicated that, given the result, my preliminary view was that costs should lie where they fall. I urged the parties to take a reasonable and proportionate approach to costs. I said that, if costs could not be agreed, memoranda (not exceeding three pages) may be filed within 20 working days and I would determine costs on the papers.2

[2]The parties have been unable to agree costs.

[3]    The defendants filed two memoranda. Getley filed a memorandum seeking 2B scale costs and disbursements totalling $11,613.50 on its interlocutory application. The defendants collectively filed a separate memorandum seeking costs totalling

$16,730 under r 7.77(8) of the High Court Rules 2016 in respect of TML’s initial and first amended statements of claim.

[4]In response, TML filed memoranda opposing each claim for costs.

Costs on the interlocutory application

[5]    It is appropriate to fix costs on Getley’s interlocutory  application  now.3  TML does not suggest otherwise. Rather, TML submits that costs should lie where they fall given the result. Getley submits that partial success is success, and that it was substantially successful; whereas TML submits that Getley did not succeed.

[6]    Several factors indicate that costs should lie where they fall. The context is an interlocutory application for more explicit pleading and further and better particulars. TML provided details of use of the relevant trade marks prior to the hearing. Given that, Getley’s success was modest. The result was mixed.4 Also, I consider the parties

1      Trade Me Ltd v Trade Jobs NZ Ltd [2024] NZHC 1513.

2 At [37].

3      High Court Rules 2016, r 14.8.

4      Trade Me Ltd v Trade Jobs NZ Ltd [2024] NZHC 1513 at [36], referring to the requirements identified at [27], [29] and [32].

share responsibility for the failure to resolve the application without Court determination.

[7]    However, in applying the general principle that the party who fails should pay costs to the party who succeeds (costs follow the event),5 “success on more limited terms is still success”.6 Where appropriate, partial failure can be addressed by reducing costs in accordance with r 14.7(d).7 Viewed in that way, and reviewing Getley’s costs schedule, I consider that Getley is entitled to an award of costs, but the amount should be reduced. Further, I do not consider that 2B costs on this application should include a claim for three separate case management memoranda (which also address other matters and one of which  was joint), nor a claim for second counsel.   I allow one case management memorandum relating to this application. For the remaining 2B costs totalling $8,604, I consider a reduction of 50 per cent is appropriate to reflect the extra time and effort addressing unsuccessful arguments.

[8]    Accordingly, in relation to the interlocutory application, Getley is entitled to costs of $4,302 plus its filing disbursement (excluding GST). Consequently, TML’s application for costs on costs is declined.

Costs under r 7.77(8)

[9]Rule 7.77(8) provides that:

If an amended pleading has been filed under this rule, the party filing the amended pleading must bear all the costs of and occasioned by the original pleading and any application for amendment, unless the court otherwise orders.

[10]   The defendants seek to have costs under r 7.77(8) fixed and paid now on the basis that TML has completely repleaded. They seek costs of $14,340 for pleading to the first amended statement of claim on the basis of 3 x 2B costs (separate claims for each defendant/group of defendants, or alternatively because significantly more time was required than envisaged by the Rules). They also seek $2,390 in respect of the

5      High Court Rules 2016, r 14.2(1)(a).

6      Weaver v Auckland Council [2017] NZCA 330, (2017) 24 PRNZ 379 at [26].

7 At [26].

initial claim (50 per cent of 2B costs for filing a defence) even though they pointed out inadequacies rather than filing a defence.

[11]   The defendants may have grounds for claiming costs in relation to TML’s first amended statement of claim albeit I do not consider there would be good reason to allow costs for three defendants. However, I consider it is premature to fix costs now. Unlike r 14.8, there is no presumption that costs will be fixed at the time of the amended pleading rather than at the end of the proceeding. I consider it is more appropriate to wait until after trial before fixing costs on the amended pleadings.8 Then it will be easier to isolate any wasted costs involved in responding to one or more superseded pleadings. Costs under r 7.77(8) are reserved.

[12]   Having  deferred  fixing  costs  in  relation  to  TML’s  superseded  pleadings, I decline to award TML costs on costs. While the defendants’ application was premature, the costs they seek may ultimately be awarded, and it would also not be appropriate in the circumstances of this case to encourage claims for costs on costs.

Result

[13]   In relation to the interlocutory application, Getley is entitled to costs of $4,302 plus its filing disbursement.

[14]Costs under r 7.77(8) are reserved.

Gault J

Solicitors / Counsel:

Mr K T Glover, Barrister, Auckland

Mr J Scragg and Mr PJM Gerard (plaintiff’s instructing solicitor), Duncan Cotterill, Auckland and Wellington (respectively)

Mr E Gray and Ms L Carter, Barristers, Auckland

Ms K Poole (fourth defendant’s instructing solicitor), kplegal Ltd, Auckland

8      Jones v Norterra Rural Resources Ltd [2014] NZHC 2855 at [32]; and Wishart v Murray [2016] NZHC 3133 at [17]. Compare Day v Official Assignee [2017] NZHC 847 at [38], which involved an unusually large number of amended pleadings. See Jessica Gorman and others McGechan on Procedure (online ed, Thomson Reuters) at [HR7.77.09].