The respondent produce for inspection by the applicant the parts of document 45 of the respondent's List of Documents, as referred to at paragraph 32 of the reasons for judgment dated 23 May 2013, comprising copies of extracts from both the agenda for the Council Meetings for 9 December 2005 and the Minutes of the Council's Meeting on 10 June 2005, by Tuesday, 11 June 2013.
The applicant's interlocutory application regarding privilege otherwise be dismissed.
Pursuant to r 20.16 of the Federal Court Rules, the applicant is to provide discovery of documents in the following categories by Tuesday, 11 June 2013:
3.1 All documents recording, evidencing or referring to the applicant's awareness, in the period between 14 June 2005 and 24 June 2005, of any possibility of confusion between the respondent's legal education services and those of the applicant, including but not limited to:
a. Internal minutes of the applicant (including but not limited to board minutes); and
b. Internal correspondence of the applicant.
3.2 All documents and other records of the applicant recording or evidencing the applicant's decision to apply for trade mark number 1061893 and/or to prosecute any such application, including but not limited to:
a. Internal deliberations to apply for each trade mark including without being limited to the purpose of the trade marks and the timing of the applications for each of the trade marks;
b. internal deliberations about the timing or delays in prosecuting either application;
c. correspondence between the applicant and a lawyer or trade mark attorney in relation to the application for any trademarks; and
d. correspondence between the applicant and the Registrar of Trade Marks and/or Australian Industrial Property Organisation and/or IP Australia in relation to the application for any trademarks.
The respondent's interlocutory application regarding discovery otherwise be dismissed.
The time for the respondent to provide the balance of its discovery in accordance with Order 2 of the Orders made on 4 February 2013, be extended from 15 March 2013 to Tuesday 11 June 2013.
The applicant is to pay 90 percent of the respondent's costs of and incidental to both the applicant's interlocutory application dated 15 April 2013 and the respondent's interlocutory application dated 15 April 2013.
The applicant file and serve any affidavit evidence in chief on which it intends to rely on for its originating application by Tuesday 30 July 2013.
The respondent file and serve any affidavit evidence in chief on which it intends to rely on for its cross-claim by Tuesday 30 July 2013.
Each of the parties file and serve any affidavit evidence in answer by Tuesday, 27 August 2013.
Each of the parties file and serve any affidavit evidence in reply by Tuesday, 17 September 2013.
The proceeding be listed for further directions at 9.30 am on Tuesday, 24 September 2013.
Liberty to apply on the giving of 72 hours notice.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
[2]
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION NSD 1441 of 2012
[3]
BETWEEN: THE COLLEGE OF LAW LIMITED ACN 138 459 015
[4]
JUDGE: GRIFFITHS J
DATE: 5 JUNE 2013
PLACE: SYDNEY
[5]
REASONS FOR JUDGMENT
1 On 23 May 2013, judgment was delivered in The College of Law v Australian National University [2013] FCA 492.
2 The parties were able to agree orders reflecting the above reasons for decision, save as to costs. On that matter, the applicant's primary position is that, because of the parties' mixed success, the appropriate costs order for each application is that costs be costs in the cause. Alternatively, the applicant says that it should be ordered to pay only 75 percent of the respondent's costs of the privilege application and that costs of the discovery application be costs in the cause.
3 The respondent says that it should have a costs order in its favour for both applications. It says that the narrowing of the documents the subject of its privilege claims and the Court's decision concerning part of document numbered 45 in Part 2 of the respondent's list of documents are not significant because the key issues of subsistence and waiver took up most of the time in any event. As to the discovery application, while the respondent acknowledges that category 3 was narrowed during the course of the hearing, it emphasises that the applicant still contested that narrow category.
4 Taking all these matters into account, I consider that the appropriate orders are that the applicant pay 90 percent of the respondent's costs of both applications. The respondent was substantially successful in both matters, but I consider that this is an appropriate case to make a modest adjustment to reflect:
(a) the concessions made by the respondent in respect of three of the documents previously said to be privileged and, to a lesser extent, my finding in respect of part of document numbered 45 referred to above; and
(b) the narrowing by the respondent of categories 3 and 7 in its discovery categories.
5 It is also appropriate to make further orders and directions concerning the future conduct of the proceedings.
I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Griffiths.