TRAFALGAR GROUP PTY LTD Appellant AND BOSS FIRE & SAFETY PTY LTD Respondent

[2024] NZHC 2678

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE

CIV-2023-485-587

CIV-2023-485-589 [2024] NZHC 2678

UNDER

the Trade Marks Act 2022 and Part 20 of the High Court Rules 2016

IN THE MATTER OF

an opposition to trade mark applications nos. 1079021 (FIREBOX) and 1079028 (FYREBOX)

AND

IN THE MATTER OF

BETWEEN

an application for revocation of trade mark registration no. 1049845 (FYREBOX)

TRAFALGAR GROUP PTY LTD

Appellant

AND

BOSS FIRE & SAFETY PTY LTD

Respondent

On the papers:
Counsel:	A J Pietra and V J Powell for Appellant G C Williams for Respondent
Judgment:	16 September 2024

JUDGMENT OF GRAU J

[Costs]

[1]        On 30 April 2024, I dismissed two appeals from decisions of the Intellectual Property Office of New Zealand (IPONZ) regarding trade marks.1 At the end of that

1      Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2024] NZHC 982.

TRAFALGAR GROUP PTY LTD v BOSS FIRE & SAFETY PTY LTD [COSTS] [2024] NZHC 2678

[16 September 2024]

decision, I indicated that I did not see a reason to depart from the usual 2B scale costs, but that parties were to endeavour to agree as to costs.2

[2]        On 22 July 2024, counsel for the respondents wrote to counsel for the appellants seeking payment of their costs in relation to the hearing before me on a 2B basis, being a total of $19,947. The respondents also sought the payment of costs awarded to them following the two original IPONZ decisions, being the $6,000 awarded following one decision, and the $6,900 awarded following the other.3

[3]        The appellants did not respond. Eventually the respondents filed a memorandum seeking the following orders in relation to costs:

(a)an order requiring the appellant to pay the sum of $19,947, being the costs and disbursements associated with the appeal hearing before this Court, as set out in the schedule of costs attached to DLA Piper’s letter to Mr Pietras on 22 June 2024;

(b)an order or direction confirming that the security for costs of $2,390 paid into the Court by the appellant in respect of the appeals and any interest thereon be released to the respondent in part payment of the amount referred to in (a); and

(c)an order entering judgment pursuant to s 166 of the Trade Marks Act 2002 for the $12,900 of costs that were awarded to the respondent by the Commissioner of Trade Marks in respect of the two first instance decisions and granting leave to enforce that order.

[4]        It appears that the appellants have had a change of representation, which may explain the lack of response. In any event, the appellants have now consented to the above orders being made.

2 At [71].

3      Boss Fire & Safety Pty Ltd v Trafalgar Group Pty Ltd [2023] NZIPOTM 37; and Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2023] NZIPOTM 38.

[5]        Costs remain at the discretion of the Court.4 The determination of costs is intended to be predictable and expeditious,5 in keeping with the objective of securing just, speedy, and inexpensive decisions in litigation.6 The general principle is that costs will follow the event; the “loser” pays.7

[6] Given that the appellants have consented to the costs orders sought, and being satisfied that they are appropriate (including that calculations are correct), they are granted accordingly at set out at [3] above.

Grau J

Solicitors:
A J Pietras & Co, Lower Hutt for Appellant

DLA Piper New Zealand, Auckland for Respondent

4      High Court Rules 2016 (HCR), r 14.1.

5      HCR, r 14.2(1)(g).

6      Rule 1.2.

7      Rule 14.2(1)(a).