Australian Meat Group Pty Ltd v JBS Australia Pty Limited

1. The applicant to the proceeding at first instance pay the respondent's costs of the proceeding at first instance. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

THE COURT: 1 The Court delivered reasons for judgment and made orders in this appeal on 27 November 2018. The orders made by the Court were as follows: 1. The appeal be allowed. 2. Orders 1, 2 and 3 of the orders of the Court made on 11 December 2017, and the order of the Court made on 22 December 2017, be set aside and in lieu thereof (subject to an order in relation to the costs of the proceeding at first instance) the application be dismissed. 3. Within 14 days, the parties file any submissions and proposed orders (of no more than three pages) on costs of the proceeding at first instance. 4. The appellant be released from its undertaking given on 21 December 2017. 5. The respondent pay the appellant's costs of the appeal. 2 The matter referred to in paragraph 3 - the costs of the proceeding at first instance - was the subject of further written submissions as envisaged by the order. We have considered those submissions and have reached the view that the applicant (respondent before this Court) should pay the costs of the respondent (appellant before this Court) of the proceeding at first instance. These reasons should be read with the substantive reasons (Australian Meat Group Pty Ltd v JBS Australia Pty Limited [2018] FCAFC 207). 3 The reasons this Court considered that it should give the parties the opportunity to make submissions on the costs of the proceeding at first instance are set out in the substantive reasons at [26]-[30] and [45]. 4 The appellant submits that it should have its costs of the proceeding at first instance. It has, after a trial and appeal, had a claim for trade mark infringement against it dismissed. It submits that, in those circumstances, there should be a good reason for depriving it of the costs of the proceeding at first instance and that no such good reason exists. We infer that the costs are likely to be fairly substantial. 5 The respondent acknowledged, quite fairly in our view, the difficulty of making no order as to the costs at first instance. It submits that the appellant should recover only 25% of its costs at first instance. 6 In paragraph 27 of our substantive reasons, we said the following: The appellant (as respondent below) also stressed the strong reputation of the AMH brand in its submissions. That submission was of a particular kind. It invoked a submission that if a trade mark's reputation was strong and ubiquitous it would lessen the likelihood of imperfect recollection of the registered mark and so lessen the likelihood of deception. The approach was said to be supported by Registrar of Trade Marks v Woolworths [1999] FCA 1020; 93 FCR 365 and Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174; 84 IPR 12. The appellant did not, however, submit to his Honour that, if its submissions about Woolworths and Mars were not accepted, then it was impermissible for his Honour to take the reputation of the AMH brand into account in assessing deceptive similarity. 7 In our opinion, the failure by the appellant identified in the above passage should not lead to an order that it be deprived of its costs at first instance. The context is important. It was, after all, the respondent who brought the action for trade mark infringement and who advanced a considerable body of evidence of the reputation in its trade marks which, as this Court held, could not be used in the way it contended. Furthermore, the respondent had other claims where the evidence of reputation would have been undoubtedly relevant. Those claims were claims in passing off, misleading or deceptive conduct under the Australian Consumer Law, and a claim that the appellant had adopted its name and marks with the intention of misleading customers. The first two claims were abandoned by the respondent in its opening submissions at the trial and the third claim was abandoned in the respondent's closing submissions at the trial. Aside from the fact that these circumstances may well justify an order for costs which reflects the abandonment of these claims, the important point is that they reinforce the conclusion that it was the respondent who, in advancing its claims and a considerable body of evidence in support thereof, was primarily responsible for how the case was conducted. 8 The respondent has been unsuccessful in its claim of trade mark infringement and, in addition to the orders the Court has already made, there should be an order that it pay the appellant's costs of the proceeding at first instance. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Chief Justice Allsop and Justices Besanko and Yates.