GAIN Capital UK Limited v Citigroup Inc

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS BETWEEN: GAIN CAPITAL UK LIMITED

JUDGE: YATES J DATE: 14 SEPTEMBER 2015 PLACE: SYDNEY

REASONS FOR JUDGMENT 1 The respondent, Citigroup Inc, seeks an order that the appellant, Gain Capital UK Limited, provide further security for the respondent's costs of the proceeding in the sum of $380,000. The security sought is for costs to the conclusion of the hearing of the proceeding. The appellant has already provided security in the sum of $20,000 on a "without admissions" basis. The appellant is a foreign corporation that is resident outside Australia.

Background 2 The proceeding is an appeal from the decision of the Registrar of Trade Marks (the Registrar) in opposition proceedings brought by the respondent under Pt 5 of the Trade Marks Act 1995 (Cth) (the Trade Marks Act). 3 On 9 November 2010, the appellant filed trade mark applications 1393370 and 1393371. The details of each mark are not relevant for present purposes. The applications were accepted under s 33 of the Trade Marks Act on 28 April 2011 and, pursuant to s 34(b), advertised as accepted on 12 May 2011. 4 On 8 November 2011, the respondent filed notices of opposition under s 52 of the Trade Marks Act. On 8 August 2012, the respondent, as opponent, filed three declarations in support of its oppositions. By 9 May 2013, the appellant, as trade mark applicant, had filed five declarations in answer. On 14 October 2013, the respondent filed one declaration in reply. 5 The oppositions were based on ss 44, 59(a) and 60 of the Trade Marks Act. On 10 April 2014, a hearing was conducted before a delegate of the Registrar (the delegate). On 6 May 2014, the delegate found that the respondent had established its ground of opposition under s 60 of the Trade Marks Act in respect of both trade mark applications and, under s 55 of the Trade Marks Act, refused to register each trade mark. The delegate did not separately consider the grounds advanced under ss 44 and 59(a) because it was not necessary for him to do so. 6 On 27 May 2014, the appellant filed a notice of appeal from the Registrar's decision, under s 56 of the Trade Marks Act.

The present application 7 The respondent relies on s 56 of the Federal Court of Australia Act 1976 (Cth) (the Federal Court Act) which provides: 56 Security (1) The Court or a Judge may order an applicant in a proceeding in the Court, or an appellant in an appeal under Division 2 of Part III, to give security for the payment of costs that may be awarded against him or her. (2) The security shall be of such amount, and given at such time and in such manner and form, as the Court or Judge directs. (3) The Court or a Judge may reduce or increase the amount of security ordered to be given and may vary the time at which, or manner or form in which, the security is to be given. (4) If security, or further security, is not given in accordance with an order under this section, the Court or a Judge may order that the proceeding or appeal be dismissed. (5) This section does not affect the operation of any provision made by or under any other Act or by the Rules of Court for or in relation to the furnishing of security. 8 Rule 19.01(1) of the Federal Court Rules 2011 provides: (1) A respondent may apply to the Court for an order: (a) that an applicant give security for costs and for the manner, time and terms for the giving of the security; and (b) that the applicant's proceeding be stayed until security is given; and (c) that if the applicant fails to comply with the order to provide security within the time specified in the order, the proceeding be stayed or dismissed. 9 The respondent also relies on s 1335(1) of the Corporations Act 2001 (Cth) which provides: (1) Where a corporation is plaintiff in any action or other legal proceeding, the court having jurisdiction in the matter may, if it appears by credible testimony that there is reason to believe that the corporation will be unable to pay the costs of the defendant if successful in his, her or its defence, require sufficient security to be given for those costs and stay all proceedings until the security is given. 10 There is no dispute between the parties as to the relevant principles to be applied. Their dispute lies in the application of those principles. 11 The appellant resists the order sought on three bases. 12 First, the appellant submits that it has trading arrangements in place in Australia, and thus assets in Australia, which are sufficient to satisfy the amount of security sought by the respondent. 13 Secondly, the appellant submits that, in the exercise of its discretion, the Court should not order the appellant to provide security because its appeal is "defensive" and that it is effectively in the position of a defendant, the respondent having commenced opposition proceedings in the face of the appellant's entitlement to have the trade marks registered following acceptance of the trade mark applications by the Registrar. 14 Thirdly, the appellant submits that the amount sought by the respondent as security is excessive in the circumstances. It submits that, if security is to be ordered, it should be in an amount not exceeding $100,000.

Sufficient assets in the jurisdiction? 15 The appellant relies on its own financial statements as at 31 March 2012 and the financial statements of its sister company, Gain Capital Australia Pty Ltd (GCA), as at 31 March 2015, to attempt to demonstrate that it has assets in Australia which are sufficient to satisfy the amount of the security sought by the respondent. There is no explanation of these financial statements beyond that given by the appellant's counsel in the course of oral submissions. The effect of those submissions is as follows. GCA is indebted to the appellant for a certain sum exceeding the amount of the security that is sought. As at 31 March 2015, GCA held cash at bank and in hand in an amount which exceeds its indebtedness to the appellant. GCA's financial statements as at 31 March 2015 record that these funds have been placed with "reputable financial institutions". 16 I note the following matters. There is nothing in the evidence before me which identifies the financial institutions to which GCA's financial statements refer or where the funds might be held. There is no evidence which explains the nature of the debtor/creditor relationship between GCA and the appellant, other than that it is in respect of hedge transactions. Even if it be assumed that GCA's indebtedness to the appellant is an asset of the appellant held in Australia, the circumstances under which that debt is recoverable, and the practical ability of the appellant to recover it if compelled to do so, have not been addressed. There is no evidence before the Court to suggest that the appellant itself has any control over GCA or that GCA has agreed to bear any responsibility whatsoever for any costs that might be awarded against the appellant in the proceeding. 17 Further, there is no evidence before the Court to identify the location of the appellant's other assets. 18 The purpose of ordering security for costs against an applicant/appellant resident outside Australia is to ensure that a successful respondent will have a fund available within the jurisdiction of the Court against which it can enforce a judgment for costs, so that it does not bear the risk of uncertainty of enforcement in a foreign country or is otherwise exposed to the inconvenience that might be presented by the complexity of, and time required for, undertaking such enforcement: Energy Drilling Inc v Petroz NL (1989) ATPR ¶40-954 at 50,422; Kent Heating Ltd v Cook On Gas Products Pty Ltd (1984) 59 ALR 277 at 279. 19 Given the unknown circumstances mentioned above concerning GCA's debt to the appellant, this asset should be disregarded when considering whether security should be ordered. Given the absence of any other assets in the jurisdiction to which practical recourse might be had by the respondent to enforce payment of a costs order in its favour, the respondent is exposed to the risk, inconvenience and cost of attempting to enforce an order for costs against the appellant as a foreign corporation in a presently unknown foreign jurisdiction in which its other assets are located. This circumstance weighs heavily in favour of an order for security being made: P S Chellaram & Co Ltd v China Ocean Shipping Co (1991) 102 ALR 321 at 323; NV Sumatra Tobacco Trading Company v British American Tobacco Australia Services Ltd (2008) 79 IPR 286 (Sumatra Tobacco Trading) at [13].

A defensive claim? 20 The appellant seeks to invoke the principle that "a party to judicial proceedings, who resides beyond the jurisdiction, should not be required to give security for costs unless, however the parties are arranged upon the record, he is the person invoking or resorting to the jurisdiction for the purpose of establishing rights or obtaining relief": Willey v Synan (1935) 54 CLR 175 (Willey v Synan) at 184; see also at 179-180 and 187. 21 In Maatschappij Voor Fondsenbezit v Shell Transport and Trading Company [1923] 2 KB 166, Scrutton LJ said (at 177): The Court always, as I understand, endeavours to be guided by the substance and not by the form of the matter, and orders security for costs against the foreign attacker, not against the foreigner defending himself or his property from attack. Thus in interpleader, the defendant to the issue may be ordered to give security to the plaintiff if the defendant is really the aggressor: Tomlinson v. Land and Finance Corporation and Rhodes v. Dawson. (Footnotes omitted.) 22 Earlier, Scrutton LJ said (at 177): … but the position, I think, extends to every case where the person against whom security is sought is really defending himself against attack, even if he be nominally a plaintiff, but really defending himself against defendants' previous action against him. 23 In the course of oral submissions, I was taken to a number of Australian authorities that discuss this principle: Willey v Synan; Re Travelodge Australia Ltd (1978) 21 ACTR 217; Amalgamated Mining Services Pty Ltd v Warman International Ltd (1988) 19 FCR 324; Sumatra Tobacco Trading; Global Access Limited v Educationdynamics, LLC [2010] 1 Qd R 525 (Global Access). It will be necessary for me to say something more about Sumatra Tobacco Trading because, like the present case, it concerned an application for security for costs in an appeal brought from a decision of the Registrar in successful opposition proceedings. 24 The appellant's argument is that, in circumstances such as the present, the respondent is to be regarded as the aggressor, not the appellant. Thus, as a matter of discretion, an order for security should not be made against it. 25 The appellant submits that, given acceptance by the Registrar under s 33 of the Trade Marks Act, each trade mark application would have proceeded to registration but for the oppositions filed by the respondent. The Registrar's acceptance conferred valuable rights on the appellant. However, the respondent's commencement of the opposition proceedings prevented those rights maturing into the rights conferred by trade mark registration. The appellant submits that had it not commenced the present appeal, its trade mark applications would have been refused and it would have lost the rights it had gained by virtue of acceptance. It says that it has, in effect, been forced into initiating the appeal in order to prevent its rights being extinguished by the respondent's actions. 26 The appellant places reliance on the fact that the Registrar's decision under appeal was an exercise of executive power, not judicial power. The "appeal", so-called, to this Court is an entirely original proceeding. It is, for the first time, an inquiry involving the exercise of the judicial power of the Commonwealth. 27 In Jafferjee v Scarlett (1937) 57 CLR 115, Dixon J observed (at 126) that, in such an "appeal", the Court is to determine judicially whether the application for trade mark registration should succeed on the merits, not whether the administrative officer (here, the Registrar) has lawfully discharged his or her duties. There is no presumption in favour of the correctness of the decision appealed from, although weight will be given to the Registrar's opinion as that of a skilled and experienced person in the subject matter of the appeal: see also, in this connection, Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 377. Thus, the appellant says, the parties in the present appeal are in the same position as they were before the Registrar; the respondent bears the onus of satisfying the Court that the trade marks should not be registered by reason of some available ground of opposition. 28 In Sumatra Tobacco Trading, the appellant (NVS) applied to register a trade mark under the Trade Marks Act. The respondent filed a notice of opposition. The Registrar's delegate reached a decision under s 55(1) to refuse registration. NVS appealed to the Court under s 56 of the Trade Marks Act. Greenwood J described the nature of the appeal at [9]: [9] On the hearing of an application to the Federal Court by way of an appeal under s 56 of the Act from the delegate's decision, the court may do any one or more of the following, admit evidence orally or on affidavit or otherwise; permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the registrar; order an issue of fact to be tried as it directs; affirm, reverse or vary the registrar's decision or direction; give any judgment, or make any order, that in all the circumstances it thinks fit; order a party to pay costs to another party: s 197 of the Act. The appeal proceeding is a hearing conducted "afresh" or de novo on material properly placed before the court: Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 545 per Needham J; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [32]-[37] per French J; Pioneer Electric Corporation v Registrar of Trade Marks (1977) 137 CLR 670 at 672-3; 17 ALR 43 at 46; 1A IPR 520 at 523 per Aickin J; Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 59; 40 IPR 498 at 506-7; [1998] FCA 440 per Branson J; Kowa Company Ltd v NV Organon (2005) 223 ALR 27; 66 IPR 131; [2005] FCA 1282 at [7] per Lander J; Pfizer Products Inc v Karam (2006) 23 ALR 787; 70 IPR 599; [2006] FCA 1663 at [5] per Gyles J; and Scotch Whisky Association v De Witt (2008) 75 IPR 280; [2008] FCA 73 at [18] per Jessup J. Although the appeal is conducted as a de novo hearing, the scope of the controversy to be resolved in the appeal is determined by the issues framed by the parties. Order 58, r 5(2) requires a party initiating an appeal to identify each ground relied upon to support the orders sought and particulars of each ground. Similarly, by O 58, r 5A(2) a cross-appellant must state and thus frame the specific grounds relied upon in support of the orders the cross-appellant seeks. In that sense, an appeal from the registrar's decision is not simply at large. In this case, NVS seeks to vary the decision by agitating the merits of the matters raised by s 44 of the Act. BAT seeks to agitate all of the matters on which it was unsuccessful. 29 NVS was an Indonesian corporation carrying on business from Indonesia. The respondent applied for an order under s 56 of the Federal Court Act that NVS provide security for costs. NVS resisted the application on a number of grounds, including that the respondent, as the opponent in the opposition before the Registrar, should be characterised as the aggressor and instigator of the controversy, with the consequence that, in an appeal to the Court from the Registrar's decision, the respondent should equally be regarded as the aggressor. 30 His Honour rejected that submission, finding (at [33]): [33] The parties have had the benefit of a hearing before the registrar's delegate. A decision has been reached which is now subject to challenge. The appellant raises defined grounds of appeal and the cross-appellant raises a broader range of grounds which, in the judgment of the cross-appellant, calls for a particular class of evidence to be assembled. It seems to me inappropriate to characterise the cross-appellant as an aggressor which has put the applicant for the trade marks in a position before this court in any way analogous to the circumstances in Willey v Synan (1935) 54 CLR 175; [1936] ALR 1 or Re Travelodge Australia Ltd (1978) 21 ACTR 17 as discussed by Wilcox J in Amalgamated Mining Services Pty Ltd v Warman International Ltd (1988) 19 FCR 324; 88 ALR 63. In this case, NVS has elected to appeal from an adverse decision of the delegate and the cross-appellant has elected to formulate broader grounds upon which the delegate's decision was correct. Each party has had the benefit of a hearing before the delegate and each party has chosen to take a course of appealing aspects of that decision. 31 The appellant submits that I should not follow Sumatra Tobacco Trading. It submits that Greenwood J's reasoning was not informed by an argument that the "appeal" is an original proceeding in the Court which represents the first occasion on which the respondent's opposition will be determined judicially. 32 I am not persuaded that his Honour's judgment can be so readily distinguished. Having regard to his Honour's observations that I have quoted at [28] above, it is very clear that his Honour was mindful of the true nature of the "appeal" before him. His Honour's essential point was that, the parties having had the benefit of a determination before the Registrar's delegate, it would not be appropriate to characterise the successful respondent as an aggressor in an appeal initiated by the unsuccessful trade mark applicant to establish its rights. 33 The circumstances of the present case are relevantly indistinguishable from those considered by Greenwood J. Considerations of comity, consistency and certainty in judicial decision-making constrain me to exercise real and deliberate caution before refusing to follow a decision of the Court which has been given in such circumstances. It is normally said that the earlier decision should be followed unless the Judge called upon to apply it considers it to be wrong in the sense of "plainly wrong" or "clearly wrong": see the discussion in BHP Billiton Iron Ore Pty Ltd v National Competition Council (2007) 162 FCR 234 at [83]-[89]. 34 In the present case, the Court is called upon to exercise a broad discretion, particularly under s 56 of the Federal Court Act, to award security for costs. Regard must be had to all the circumstances of the individual case so as to achieve a just outcome in resolving that question. Nevertheless, on the question of whether the present appeal is to be regarded as a defensive proceeding, I am persuaded that I should follow Greenwood J's decision in Sumatra Tobacco Trading. I do not consider his Honour's decision to be wrong such that I should depart from it. 35 Indeed, somewhat similar reasoning, albeit in different circumstances, was adopted by Applegarth J in Global Access when ordering security for costs against a plaintiff who had commenced proceedings for declaratory relief in respect of its entitlement to a domain name (for which it was the registrant) following a decision of the National Arbitration Forum to transfer the domain name to the first defendant in that proceeding. The plaintiff had voluntarily submitted to the processes of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers. The plaintiff argued that the proceeding was commenced by it 'defensively'. This argument was rejected by Applegarth J who described the position as follows (at [57]): [57] ... Rather than being, as the plaintiff submits, clearly in the nature of "defensive proceedings", the proceedings seek to avoid consequences for the registration of the Domain Name that arise by reason of the plaintiff's contractual acceptance of an adjudication process. That process contemplates that a party may seek to submit a matter in dispute to a court of competent jurisdiction for independent resolution. This is what the plaintiff seeks to do. The plaintiff is the plaintiff in both form and substance. It is not really defending itself from attack. It seeks a judicial determination of its rights. In the words of Dixon J in Willey v Synan, the plaintiff is "the person invoking or resorting to the jurisdiction for the purpose of establishing rights or obtaining relief". 36 Similar reasoning, albeit once again in different circumstances, was also adopted by Hodgson JA in Procorp Civil Pty Ltd v Napoli Excavations and Contracting Pty Ltd (No 2) [2006] NSWCA 147 at [5]-[11] when ordering security for costs against an appellant who had instituted a court proceeding to challenge an adjudicator's determination under the Building & Construction Industry Security of Payment Act 1999 (NSW) in respect of progress payments. Hodgson JA reasoned (at [10]): The clear intention of the Building & Construction Industry Security of Payment Act is that progress claims made under the Act be dealt with quickly and without court proceedings, in circumstances where payments made pursuant to such claims are only provisional and the ultimate rights of the parties can be determined in ordinary court proceedings as contemplated by s.32 of that Act. In those circumstances, in my opinion, a party instituting court proceedings to challenge an adjudicator's determination or a judgment pursuant thereto is fairly regarded as being in substance a plaintiff, rather than merely defending a claim made against it. In that respect, it is unlike a company challenging a statutory demand, which is itself a document directed towards the institution of court proceedings against the company. 37 In all the circumstances, I am satisfied that it is appropriate that the appellant be ordered to provide security for the respondent's costs in the present appeal.

The amount of security 38 As I have noted, the respondent seeks additional security in the sum of $380,000. This figure has been arrived at by a process of estimation and calculation described by the respondent's solicitor, Mr Jordan. It comprises the following components: an amount of $10,000 in respect of the respondent's costs of reviewing the appellant's affidavit evidence in chief, preparing a notice to admit, and reviewing a notice of dispute; an amount of $200,000 in respect of the respondent's costs of preparing its affidavit evidence in answer; an amount of $10,000 in respect of the respondent's estimated costs of reviewing the appellant's evidence in reply; an amount of $10,000 in respect of the respondent's estimated costs of preparing for and attending a directions hearing; and an amount of $150,000 in respect of the respondent's estimated costs of preparing for and attending the hearing of the appeal, based on an estimate of five days. 39 Mr Jordan has described, in general terms, the work undertaken by the respondent thus far, by reference to these steps. I note, in particular, Mr Jordan's evidence concerning the preparation of eight affidavits on which the respondent proposes to rely at the hearing of the appeal. This particular step represents 629.5 hours spent by Mr Jordan and other solicitors in his firm. Mr Jordan has also described, in general terms, the work he expects to undertake in considering the appellant's evidence in reply and in preparing for and attending both the directions hearing and the hearing of the appeal. Mr Jordan estimates that both he and another solicitor will each spend seven-and-a-half days in preparation for the hearing of the appeal. He has also estimated counsel's fees to be at least $67,500, which includes 10 days' preparation. 40 In calculating the respondent's likely costs, Mr Jordan has used the scale of costs in Sch 3 of the Federal Court Rules 2011. In doing so, he has discounted the maximum hourly rate allowable under Item 1 of the scale in relation to work undertaken, or to be undertaken, by solicitors in his firm less senior and less experienced than him. Mr Jordan has deposed that the rates he has used, by reference to the scale, are less than the rates being charged to the respondent on a solicitor/client basis. 41 The appellant submits that it is usual for recovery of costs on a party/party basis to be in the order of 50 to 60% of actual solicitor/client costs. By this, I understood the appellant to be submitting that, notwithstanding the scale used and discounts already applied by Mr Jordan, the respondent's estimate should be further discounted by 50% to 60%. Further, the appellant submitted that I should take into account that "much of the material that the respondent has claimed as part of the costs of these proceedings, was prepared in some form for the purposes of the hearing below". The appellant has not, however, sought to identify which part or parts of the respondent's affidavits filed in this proceeding are covered by that submission. Nevertheless, I note that an affidavit made by Mr Briggs, a market researcher, annexes a declaration previously made by him, which was apparently used in the hearing before the Registrar's delegate. 42 I have reviewed the affidavits prepared by the respondent, but only for the purpose of gaining an appreciation of their scope and general contents. 43 The present exercise is not one that involves a full assessment of the costs likely to be recovered by a successful respondent. Moreover, the Court does not set out to give a complete and certain indemnity to a respondent. 44 My overall assessment is that, although Mr Jordan has had regard to rates applicable under the scale, there is a significant element of time spent, or to be spent, which might be allowable as solicitor/client costs but not as party/party costs. The order I propose to make should reflect this overall assessment. 45 In my view, the appropriate order, after taking into account the $20,000 that has already been provided, is that the applicant should provide additional security in the sum of $195,000.

Disposition 46 Orders will be made accordingly. The respondent has asked that it be heard on the question of costs following the giving of this judgment. I will give the parties that opportunity. I certify that the preceding forty-six (46) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.