Bendigo and Adelaide Bank Limited v Community First Credit Union Limited

INTRODUCTION 1 On 11 March 2021, the Full Court delivered judgment in an appeal and an application for leave to appeal by Bendigo and Adelaide Bank Ltd ('Bendigo') in NSD1956 of 2019 and NSD1963 of 2019: see Bendigo and Adelaide Bank Limited v Community First Credit Union Limited [2021] FCAFC 31 ('Judgment'). The terminology used in these reasons adopts that used in the Judgment. The parties are in general agreement with respect to the orders consequential on the Judgment. 2 Bendigo seeks the following orders in NSD1956 of 2019: (1) the appeal be dismissed; (2) the Register be rectified by cancelling Australian trade mark registration number 784796 for the words and device B COMMUNITY BANK and Australian trade mark registration number 887023 for the words COMMUNITY BANK; (3) the application lodged by the applicant on 11 August 2017 and accepted for filing on 14 August 2017 be otherwise dismissed; and (4) Bendigo pay CFCU's costs of the appeal on the ordinary party and party basis, taxed if not agreed between the parties. 3 Bendigo seeks the following orders in NSD1963 of 2019: (1) the application for leave to appeal be dismissed; (2) the decision of the Registrar given by her delegate on 21 July 2017 be set aside; (3) CFCU's trade mark applications, being: (a) trade mark application number 1541594 for COMMUNITY FIRST MUTUAL BANK; and (b) trade mark application number 1541620 for COMMUNITY FIRST BANK, proceed to registration; and (4) Bendigo pay CFCU's costs of the application for leave to appeal on the ordinary party and party basis, taxed if not agreed between the parties. 4 Whilst CFCU considers Bendigo's proposed orders 2 and 3 in both proceedings are otiose in light of final orders made by the primary judge on 24 October 2019 (order 3 in NSD1386/2017 and order 1 in NSD1389/2017) giving effect to the reasons published in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited [2019] FCA 1553, we consider it appropriate to make these orders for the sake of clarity. 5 There is one remaining issue as to whether Bendigo should bear the costs incurred by CFCU between 22 July 2020 and 31 July 2020 with respect to issues associated with the preparation of the Appeal Book on an indemnity basis. 6 CFCU seeks orders that Bendigo pay CFCU's costs on an indemnity basis "in relation to and occasioned by the issues associated with the Appeal Book" in this period, and more particularly that Bendigo should pay indemnity costs in relation to Bendigo's decision to "delete the court book pagination prescribed by Markovic J in order 13 of the orders made on 29 October 2018".

DISCUSSION 7 The principles in relation to the award of indemnity costs are well established. The Court has a broad discretion to order costs: s 43 of the Federal Court of Australia Act 1976 (Cth) (the 'Act'). The Court must consider the overarching purpose as set out in ss 37M and 37N of the Act. Costs ordinarily follow the event and are awarded on a party and party basis unless there are particular or special circumstances which would warrant the Court making a special costs order, including an order that costs be assessed on an indemnity basis: Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 at 232-234 (Sheppard J). 8 It was submitted by CFCU that the particular circumstances that warrant the making of an indemnity costs order here are the wasted costs resulting from a unilateral decision of the solicitors for Bendigo without ever notifying CFCU to delete pagination of the court book from the hearing at first instance when preparing Part C of the Appeal Book. 9 On 29 October 2018, the primary judge made orders in NSD1386/2017 and NSD1389/2017 including order 13 requiring CFCU to file an electronic copy of the court book with page numbers on each page of every document. 10 It is common ground between the parties that, when combined with the original affidavit and annexure pagination, the addition of the court book pagination resulted in dual pagination. 11 We accept that, when preparing the Appeal Book, Bendigo considered that this dual pagination may lead to unnecessary confusion for both the parties and the Court. As references to documents listed in Part B of the Appeal Book would need to refer to the original pagination, and to avoid unnecessary confusion by having multiple sets of pagination on documents in the Appeal Book, Bendigo decided to remove the court book pagination from Part C of the Appeal Book. 12 On 16 July 2020, Bendigo sent an electronic and hyperlinked copy of Part C of the Appeal Book to CFCU. CFCU apparently first raised issues with the removal of the court book pagination by email on 23 July 2020. Bendigo then sent CFCU an email on the same day explaining the reasons for the removal, including that there were instances where the court book pagination could not be removed due to technical difficulties. In these instances, dual pagination remained. 13 CFCU submits that it incurred significant costs because its submissions, which had already been filed, needed to be amended to ensure that the Full Court could correlate the references in its submissions to Part C of the Appeal Book. 14 There is some dispute as to the process and communication between the parties. We are inclined to the view that if CFCU's solicitors had discussed the matter with Bendigo's solicitors after receiving Bendigo's email of 23 July 2020, then the updating of CFCU's submissions could have been avoided, and a mutually agreeable solution could have been found. 15 There was also some dispute as to whether CFCU in any event could reasonably have incurred significant expense in the way it now contends. However, we do not need to consider this further. 16 We are of the view that, to the extent CFCU was materially affected or did in fact incur any unnecessary costs as a result of the court book pagination removal, the circumstances surrounding Bendigo's decision to undertake the court book pagination removal cannot be a basis to justify CFCU's claim for payment of indemnity costs. 17 The task of the court book pagination removal was done in good faith and in an attempt to assist the parties and the Court. It is unfortunate if CFCU was inconvenienced and put to further expense. This is not a basis for awarding indemnity costs as sought here. 18 In our view the decision of Bendigo to undertake court book pagination removal was a reasonable decision undertaken to attempt to reduce confusion resulting from multiple sets of pagination. We do not think that the actions of Bendigo were other than in accordance with the overarching purpose as set out in ss 37M and 37N of the Act. Whilst it may have been a better practice to have consulted more with both CFCU and the Court before removing the court book pagination, we do not think the circumstances surrounding Bendigo's decision give rise to a basis for awarding indemnity costs. 19 We will make the orders substantially in the form sought by Bendigo as set above. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Middleton, Burley and Thawley.

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