Goodman Fielder Pte Ltd v Conga Foods Pty Ltd

Federal Court of Australia|2021-03-31|Before: Burley J

INTRODUCTION 1 On 17 December 2020 I published my reasons in Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808 (judgment) and directed that the parties prepare and provide to my chambers proposed short minutes of order to give effect to the judgment. The parties disagreed as to the final orders that should be made, and the issues were debated at a subsequent form of orders hearing conducted on 11 March 2021. These reasons assume familiarity with the judgment and generally adopt the definitions used in it. 2 In summary, the issues between the parties are: (1) The scope of declaratory and injunctive relief, and in particular: (a) what products were in issue at trial; and (b) whether an injunction should be granted in respect of the use of the Rana mark, the words LA FAMIGLIA RANA and @lafamigliarana (together, the La Famiglia Rana Marks) on the Rana website, Rana Facebook Page and Rana Instagram page; (2) Whether the respondents should be permitted a sell-through period in respect of infringing products currently in, or in transit to, Australia, or whether the Court should order that the infringing products be delivered up to the applicants; (3) Whether the Court should order that the respondents withdraw their application to register the Rana mark; (4) Whether orders should be made for the amendment and cancellation of the Goodman marks; (5) What orders should be made in respect of costs; and (6) Whether orders should be made in respect of leave to appeal and confidentiality. 3 Each party adduced further evidence in support of its position. The applicants rely on an affidavit sworn by Ronni Kahn AO, the founder and CEO of OzHarvest. The respondents rely on affidavits provided by: Catherine Mary Still, who is the solicitor with conduct of the proceedings on their behalf; Nicola Zelger, who is the trade marketing and export sales director of Rana; and Daniel James Thompson, who is the chief sales and marketing officer of Conga.

DISPUTED FORM OF DECLARATORY AND INJUNCTIVE ORDERS

2.1 The issues 4 The applicants seek a declaration in the following form: The respondents have, since November 2017, infringed Australian trade mark registration number 1155473 by using, as a trade mark, each of , LA FAMIGLIA RANA and @lafamigliarana (La Famiglia Rana Marks) in relation to pasta products. 5 The applicants seek an order in the following form: The respondents, whether by themselves, their directors, employees, agents or howsoever otherwise, be restrained from infringing Australian trade mark registration number 1155473, including in particular, from using any of the La Famiglia Rana Marks on or in relation to pasta products, but excluding pesto and pasta sauces. (general injunction). 6 The applicants also seek an order that within 30 days the respondents: (a) take all steps that are necessary to cancel or amend the account name and URL details for the following social media accounts, to the extent that they are accessible to persons in Australia, to names and URLs that do not include "LA FAMIGLIA": (i) https://www.facebook.com/lafamigliarana/ (ii) https://www.instagram.com/lafamigliarana/?hl=en (b) take all steps that are necessary to remove all social media posts from the accounts referred to in sub-paragraph (a) that feature LA FAMIGLIA, including the La Famiglia Rana Marks; and (c) take all steps that are necessary to remove all references to LA FAMIGLIA including the La Famiglia Rana Marks, from the www.rana.com.au website. (the social media injunction). 7 The underlined words in the general injunction and the social media injunction were proposed by the applicants during the course of the form of orders hearing. 8 The respondents accept that a declaration is appropriate, but submit that it should be confined in its scope to the goods that were found to infringe the applicants' marks, being, they contend, fresh filled pasta products, and specifically the 11 varieties or flavours of fresh filled pasta which have been or are currently sold by the respondents in Australia. To similar effect, the respondents submit that injunctive relief should not go beyond fresh filled pasta to include lasagne sheets and gnocchi or any other non-filled pasta, which they contend were not products in issue at the hearing. They oppose the grant of the social media injunction, on the basis that the Rana Facebook page and Rana Instagram page are directed to consumers in the United Kingdom, not Australia.

2.2 The arguments 9 The applicants submit that the issue of whether or not "pasta products" generally infringe was live at the hearing and that the declaration and the general injunction reflect the conclusions reached on the question of infringement in the judgment. They submit that the form of orders proposed is modelled upon injunctions in a form approved by the Full Court in Calidad Pty Ltd v Seiko Epson Corporation (No 2) [2019] FCAFC 168; 147 IPR 386 at [30]-[31], [44], [46], [49] (Greenwood, Jagot and Yates JJ), and that the order proposed by the respondents which confines the scope of the injunction to specific types of fresh filled pasta is too narrow. The applicants also contend that it is appropriate to grant orders specifically directed to Rana's social media accounts and website. 10 The respondents contend that the judgment included no finding of infringement in respect of any product other than fresh filled pasta, and that the declaratory and injunctive orders should reflect the conclusion that only filled pasta products infringed. They submit that lasagne sheets and gnocchi should not be included in any injunction, and nor should any other non-filled pasta product, citing Calidad at [44] and [47]. They submit that declaratory relief should be made in precise terms to reflect the conduct constituting contravention. The respondents submit that the social media injunction should not be made because to do so would be to make orders in excess of the jurisdiction of the Court, which is confined to conduct within Australia (s 4 of the Trade Marks Act 1995 (Cth)), and it is only conduct within Australia that was the subject of the relief sought in the originating application, citing Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479 at [43] (Merkel J). This point is particularly acute in the present case, the respondents submit, because the Rana mark was developed by Rana for the United Kingdom market and is, and is permitted to be, used there today.

2.3 Consideration: pasta products 11 A threshold dispute between the parties relates to the manner in which the proceedings were conducted. The applicants contend that whilst an instance of infringing conduct was in respect of the importation and sale in Australia of Rana products in the form of fresh filled pasta such as tortellini and ravioli, their case was not confined only to fresh filled pasta products. They submit that they conducted their case on the broader basis of "pasta products". This distinction, they submit, is of significance, because since the judgment was delivered the respondents have removed the Rana mark from their fresh filled pasta products, but have continued to use it on their fresh lasagne sheets, gnocchi and fettucine sold in Australia, each of which they contend falls within the scope of "pasta products". 12 The respondents contend that the case did not include allegations of infringement that extended to fresh flat pasta or gnocchi products, and that the findings of the Court in the judgment were that infringement was only established in respect of fresh filled pasta. 13 Viewed objectively, there is perhaps some justification for an expression of judicial frustration at the way in which the applicants conducted their case, both in terms of their pleadings and also the manner in which they presented their submissions. The amended statement of claim failed to give particulars in accordance with r 34.48 of the Federal Court Rules 2011 (Cth) (FCR) which requires particulars giving at least one instance of each type of infringement alleged, but instead alleged infringement by reference to "pasta products marked 'LA FAMIGLIA RANA'" (emphasis added). The amended defence only admitted the importation and sale in Australia of filled pasta products bearing the Rana mark. No reply was filed. It might be thought that at this point the identification of the impugned products remained in dispute, and it was for the moving parties seeking relief to identify with some clarity what their infringement suit was about. Within the retail market the reference to "pasta products" generally does not elucidate, especially given that there is a firm divide between dried pasta (displayed and sold on normal shelving) and fresh pasta (kept and displayed in refrigerated displays). However, the applicants did not seek to clarify their case. Neither their written opening nor closing submissions focus on products beyond "pasta products", which is undefined but, as seen below, the Rana products that were the particular subject of submissions were far narrower and the evidentiary focus of the case was on fresh filled pasta sold by the respondents. Indeed, in opening submissions, senior counsel for the respondents said, with no demur from the applicants, that: There are four varieties of the filled pasta, and the evidence gets you depictions also of the other goods in the range which are not the subject of suit, which is to say there's some flat lasagne sheets and there are three types of pasta sauce, two forms of pesto and one form of parmesan sauce. (emphasis added) and And I hope, at least, I think that each of the examples that I just gave would apply on that narrower comparison which is to say of the impugned goods which are filled fresh pasta versus the goods relied upon which are herb bread and garlic bread and possibly pizza bases. (emphasis added). 14 These statements also bring into relief the fact that there were products bearing the impugned marks that were uncontroversially not the subject of the present proceedings, being Rana's Genovese Basil Pesto, Sundried Tomato Pesto and Parmigiano Reggiano Sauce (Rana's sauce products). As it turns out, information about Rana's sauce products and also the now-contentious gnocchi and flat lasagne products had been put into evidence by the applicants through Mr Hope's evidence, which exhibits a photograph of Rana's lasagne sheets purchased on 3 February 2019, and by the respondents in the affidavits of Mr Chiavegatti and Mr Thompson, both sworn in July 2019. Each of these three affidavits was sworn some months before the hearing. Perhaps surprisingly, nowhere in their opening or closing submissions did the applicants draw attention to the fact that the infringement case was not confined to fresh filled pasta, but extended to Rana's fresh gnocchi and lasagne sheet products. 15 It was this chain of events that led to the following statement in the judgment at [321]: The Rana mark is applied to the packaging of a number of Rana's products including not only fresh-filled pasta, but also fresh sauces (such as basil pesto and parmigiana reggiano sauce), flat cut pasta and gnocchi. Infringement is only alleged in respect of the filled pasta products, which come in six varieties: ricotta and spinach tortellini, pumpkin and roasted onion ravioli, four cheese ravioli, porcini mushroom ravioli, tomato and mozzarella tortellini and feta and kalamata olives tortellini. Each pasta product has a different colour scheme, but substantially the same packaging... (emphasis added). 16 As it transpires, there was more to the applicants' case than met the eye. It seems that prior to the hearing the parties had exchanged correspondence in which the applicants sought to amend their pleadings to expand their case to allege infringement and seek orders restraining the respondents' sale of not only pasta but also "gnocchi, pesto [and] pasta sauce". The respondents opposed the expansion of the case, noting that the applicants had known of Rana's sauce products since January 2019, when Mr Hope's affidavit was filed. Apparently as a consequence, the applicants elected not to seek to amend their pleadings. However, senior counsel for the applicants said from the bar table during the form of orders hearing that his clients took the view that their pleading of "pasta products" in the amended statement of claim was sufficient to cover gnocchi and flat lasagne. It is a shame that this information was not conveyed to the Court during the trial. It should not be for the Court to cast about for the scope of an applicant's case. 17 However, the view of the applicants regarding the scope of "pasta products" in their pleadings was apparently shared by the respondents. Despite the submissions made in opening quoted above, in closing oral submissions senior counsel for the respondents made the following concession: Mr Hall: ... I reminded myself … to make a - what I think is a necessary concession. When we were sued in this case, we were selling filled, chilled pasta, of the different types of tortellini. Since then, we have launched a flat pasta product - the lasagne sheets - and some gnocchi. And I accept that the nature of the pleading of my friend's case means that those products are also in consideration before your Honour and also in... His Honour: is there a list of - in your submissions, for somewhere easily found - of the products that your client is now selling? Is it in your defence, or? Mr Hall: No. It's in the evidence, certainly. His Honour: All right. Yes. That doesn't help me much. Mr Hall: Mr Thompson gives a complete list of them. No. But the reason for making this partial concession is to say it is still the case that you're only asked by our friends to consider my pasta goods, is what it says. His Honour: Yes. Mr Hall: And I'm ready to embrace the idea that gnocchi falls within that broad definition, but not to embrace the idea that pesto does, or that cheese sauce does ... whilst we can't say that just because they sued us before we had launched the lasagne sheets, they are therefore not caught, but we do say that the decision on our friends' part not to sue on the sauces is a deliberate one, and confines the issues for us. (emphasis added). 18 Regrettably, this concession was not developed, and nor was its hinterland of fact further explained. Nor did the applicants refer to the concession, or seek to explain its position in relation to any impugned products in the form of fresh lasagne sheets or fresh gnocchi. Nevertheless, the applicants now rely heavily on the concession, and on the breadth of their closing submissions in referring generally to "pasta products" to contend that the infringement case was run on a broader basis than the fresh filled pasta products identified in [321] of the judgment. As Delphic as that contention may be, in my view it is correct to conclude that the applicants did conduct their case on the broader basis, and that the respondents were aware of that fact and conducted their case on that basis also. Having regard to the passage quoted at [17] above, I reject the submission now made by the respondents that the applicants elected not to include allegations of infringement in relation to gnocchi or lasagne sheets by choosing not to amend their pleadings. 19 My misapprehension as to the scope of the case advanced means that it is necessary to return to section 7 of the judgment with a view to considering whether the Rana fresh gnocchi and fresh lasagne sheet products infringe the 473 word mark. No additional submissions are necessary because, as I have found, both parties proceeded at the hearing on the basis that these products were included within the proceedings, and had the opportunity to make submissions on the subject at that point.

2.4 Consideration: fresh gnocchi and lasagne sheets 20 In relation to the issue of deceptive similarity considered in section 7.3 of the judgment, in my view the impugned use of the Rana mark in relation to lasagne sheets and gnocchi is materially the same as the use depicted in the packaging set out at [321] and [322] of the judgment. The result is that each use is deceptively similar to the 473 word mark, for substantially the same reasons as those set out in [341] to [352] of the judgment. 21 In relation to the question of whether the fresh gnocchi and fresh lasagne sheets are to be regarded as "goods of the same description" as the 473 designated goods, I refer to the relevant law summarised in section 6.2.3 of the judgment and my reasons for concluding that the Rana fresh filled pasta products are goods of the same description set out in section 7.5 of the judgment. Contrary to the submissions advanced by the applicants, the reasoning in section 7.5 does not read directly onto the gnocchi or lasagne sheet products, nor was it intended to do so. Nevertheless, having regard to the reasons set out in that section and those set out in section 6.3.1 at [293] to [306] of the judgment, as well as the reasons given below, I am satisfied that the Rana fresh gnocchi product and garlic bread are goods of the same description, and that the Rana lasagne sheets are goods of the same description as garlic bread. 22 The definition of gnocchi in the Macquarie Dictionary (5th ed, 2009, Sydney) is: "small dumplings made from potato and flour or semolina, usually served with sauce as a savoury dish". Although some consumers may take the view that gnocchi is not strictly a pasta product, the respondents accept that gnocchi falls within the scope of "pasta" and I consider it likely that many consumers would think of gnocchi as a type of pasta. I also note that the packaging of the Rana gnocchi product in evidence bears the words "Italy's No 1 Fresh Pasta". Although there is no evidence directed to the method of manufacturing gnocchi, it is unlikely that it is prepared in a bakery as garlic bread is, and it is therefore unlikely that a manufacturer of garlic bread will also manufacture gnocchi. However as with fresh filled pasta, the photographs of the "ready meals" sections of supermarket shelves in evidence show that the trade channels of gnocchi and garlic bread overlap. These photographs show that fresh gnocchi is usually co-located with or proximate to fresh filled pasta products, and I have already found in the judgment that fresh filled pasta products are likely to be sold in proximity to garlic bread: at [301]. There is no evidence before me of any "meal deals" for gnocchi and garlic bread, nor any evidence that the products are generally promoted together, but nevertheless both are located in close proximity in the refrigerated sections of shops. Gnocchi may be cooked by boiling or pan-frying, and may be consumed as a meal in itself. Mr Chiavegatti's evidence is that Rana's products, including its gnocchi product, are designed to be eaten alone and do not need anything more than a simple dressing with olive oil or butter. The directions on the packaging of Rana's gnocchi product confirm that evidence by instructing the purchaser to boil or fry the gnocchi and serve with pasta sauce, parmesan cheese, or "simply with a pinch of salt". The Macquarie Dictionary lists the origin of the word as Italian, and I consider it likely that gnocchi would be regarded by many Australians as an Italian meal. In my view, these considerations weigh in favour of a finding that garlic bread is a good of the same description as fresh gnocchi. 23 The comparison is not quite so straightforward in the context of fresh lasagne sheets, but distinctions of fine detail are not appropriate for comparisons of this type: see section 6.2.3 of the judgment, particularly at [284] to [286]. For the following reasons, I conclude that this product too is a good of the same description as garlic bread. The Macquarie Dictionary defines lasagne as follows: 1. a form of pasta in the form of flat sheets. 2. any of several dishes made with this, especially with minced meat, tomato, and cheese. It is likely that many consumers would regard lasagne sheets, or a cooked lasagna dish made with such sheets, as a meal of Italian origin. In this regard I note that Italian is listed as the origin of the word in the Macquarie Dictionary. While it is difficult to conclude that lasagne sheets alone would supply a consumer's main meal requirements, the addition of fillings such as minced meat, vegetables and cheese to the sheets would create a dish to meet those requirements. There is some evidence that the applicants have taken steps to promote the consumption of garlic bread with a cooked lasagna dish, particularly in the "MAKE THE FAMILIAR LA FAMIGLIA" advertising campaign in 2015 and 2017 (see [81] of the judgment) and on the Goodman Facebook page, however I was not directed to evidence of promotions of garlic bread in conjunction with either cooked lasagna dishes or lasagne sheets undertaken by third parties. It is likely that lasagne sheets are manufactured in the same place and same manner as other forms of pasta, and are not produced in a bakery as is garlic bread. But again the trade channels of fresh lasagne sheets and garlic bread overlap insofar as lasagne sheets are frequently displayed alongside or in proximity to fresh filled pasta in the refrigerated ready meal sections of supermarkets. Additionally, as with the Rana gnocchi product, the packaging of the Rana lasagne sheets bears the words "Italy's No 1 Fresh Pasta". Taking these matters into account, although perhaps on the fringes, I consider fresh lasagne sheets also to be goods of the same description as garlic bread. 24 I should emphasise at this point that my findings in these reasons, and in the judgment, are confined to fresh pasta which, as the evidence reveals, is sold in the refrigerated section of shops. Dried or shelf-stable pasta may (or may not) be another thing. Despite the breadth of the pleading, all relevant comparisons for the purpose of considering whether or not the goods sold by the respondents were "goods of the same description" concern fresh pasta products.

2.5 Consideration: declaratory and injunctive relief 25 A declaration must identify the contravening conduct and be precise in its terms such that a person reading the declaration understands the nature of the contravention and, in broad terms, the conduct constituting the contravention. It is not necessary to put all relevant findings of fact in the declaration but rather the gist of the conduct as found should be identified: Australian Competition and Consumer Commission v Cambur Industries Pty Ltd [2006] FCA 1027; ATPR ¶42-127 at [96] (Besanko J) citing Rural Press Ltd v Australian Competition and Consumer Commission [2003] HCA 75; 216 CLR 53 at [89]-[90] (Gummow, Hayne and Heydon JJ); QS Holdings Sarl v Paul's Retail Pty Ltd (No 2) [2011] FCA 1038 at [4] (Kenny J). 26 In the present case, the findings made concern only fresh pasta products, being those that are kept in refrigerated sections of shops. They include gnocchi and lasagne sheets but (at the election of the applicants) do not include pasta sauces, which were not the subject of suit. It is important that this distinction is clear in any declaratory relief, because the respondents are, and had been for some time prior to the hearing of the proceedings, selling pasta sauces. 27 In their proposed orders, the respondents not only sought to limit the terms of declaratory and injunctive relief to "filled pasta products", but proposed that the declaratory and injunctive orders should list each of the 11 types of filled pasta which they currently sell in Australia, such as "four cheese ravioli" and "tuna marinara tortellini". In my view orders in such specific terms are not appropriate. As the Full Court said in Calidad at [49], the infringer is the party that must bear the risk in respect of its own future conduct, not the party whose rights have been vindicated by the Court's judgment. Should the respondents commence selling further varieties of filled pasta in Australia, their proposed form of orders would not clearly operate in respect of those varieties. In circumstances where I have found that fresh pasta products, unlimited by flavour, infringe the applicants' trade marks, the respondents' proposed limitation is inappropriate. 28 In my view, the declaration should be in the following terms: The respondents have infringed Australian trade mark registration number 1155473 by using, as a trade mark, each of , LA FAMIGLIA RANA and @lafamigliarana (La Famiglia Rana Marks) in relation to fresh filled pasta, fresh gnocchi and fresh lasagne sheets. 29 In relation to the form of injunctive order, the respondents repeat their contention that no finding of infringement was made in respect of gnocchi or lasagne sheets and that the form of the general injunction should be confined to the fresh filled pasta products found to infringe. 30 In Calidad (a patent case) the Full Court provided a survey of the relevant authorities concerning the form injunctions take in intellectual property cases. The Court noted that in the context of providing relief for either patent infringement or trade mark infringement, an injunction expressed in terms of a statutory monopoly may be appropriate, and indeed is conventional: at [25], [44]. That is because the registration of intellectual property rights provides certainty as to the scope of the monopoly conferred on the owner. Where there is a contest between parties as to infringement, the scope of the monopoly right at the conclusion of the proceedings cannot be in doubt and can provide the definition that is required for a prohibitory injunction in a general form: Calidad at [45]. I am satisfied in the present case that a general form injunction is the appropriate course to adopt. 31 As I have noted, it is apparent that the parties understood that the conduct under consideration extended not only to fresh filled pasta, but also to fresh lasagne sheets and gnocchi. Accordingly, a general injunction should be made in the following form: The respondents, whether by themselves, their directors, employees, agents or howsoever otherwise, be restrained from infringing Australian trade mark registration number 1155473, including, in particular, from using any of the La Famiglia Rana Marks on or in relation to fresh filled pasta, fresh lasagne sheets or fresh gnocchi. 32 In this regard the observations of the Full Court in Calidad at [49] are apposite, and demonstrate why neither the narrow form of injunction proposed by the respondents, nor the carve out of "but excluding pesto and pasta sauces" proposed by the applicants is appropriate: ...Where the infringer has already been found to have engaged in wrongful conduct, and is undoubtedly cognisant of the intellectual property rights in question, it is not unjust to expect that the infringer be the party at risk in respect of that person's future conduct and acts, not the party whose known rights have already been infringed and vindicated by the court's judgment. Thus, the imposition of an injunction in general form is not, in and of itself, an undue burden on the infringer. By the same token, the person whose intellectual property rights have been infringed should not be exposed to the risk of having to engage in continuing legal proceedings in order to vindicate, again, that person's established rights against an established infringer. It is not, with respect, a sufficient answer to say that the rights holder might have a claim for additional damages if further infringement be found. Further, if the established infringer is in any doubt about whether that person's future acts might infringe the intellectual property rights that have been established, or is concerned that those acts will be a matter of contention so far as the rights holder is concerned, then it is within the power of that person to seek appropriate declaratory relief. Relevant to the present case, for example, is s 125 of the Patents Act 1990 (Cth) which specifically provides for the granting of non-infringement declarations. In other cases, recourse can be had to the Court's general power to grant declaratory relief under s 21 of the Federal Court of Australia Act 1976 (Cth). 33 In the present case, the Court was not asked to and has not adjudicated upon the question of whether Rana's pasta sauces fall within the scope of the trade mark registration. It is therefore inappropriate for the terms of injunctive relief to refer in terms to such products, and as the above passage from Calidad makes clear it is similarly inappropriate to limit the injunctive relief by listing the specific products which infringe the applicants' trade marks. 34 The applicants contend that the social media injunction is also required. They submit that: the findings at [324] and [325] of the judgment are to the effect that the use of the social media handle @lafamigliarana and the use of "LA FAMIGLIA RANA" as a social media account name constitute trade mark infringement; the respondents will have to cease using such names as a result of the general injunction; and that recent correspondence from the respondents' solicitors indicates that Rana proposes to continue using the infringing marks on social media and the Rana website, without preventing Australian consumers from accessing those pages. 35 The respondents accept (as they must) that use of the impugned marks, whether in the form of the Rana mark or the plain words LA FAMIGLIA RANA, on the Rana website, which is directed to persons ordinarily resident in Australia, will amount to infringement when used in relation to the relevant goods. However they submit that they were not validly put on notice that the applicants sought to impugn their use of the La Famiglia Rana Marks on the Rana Facebook page or the Rana Instagram page, as the applicants did not plead or seek relief concerning those pages. The respondents submit that the pages are directed to persons ordinarily resident in the United Kingdom, and that in these circumstances an Australian court would not purport to injunct such internationally directed activity. They submit that the applicants did not join issue on the question of whether use of a United Kingdom Instagram or Facebook page amounted to use in Australia, citing Ward Group at [43]. 36 There is force in the respondents' submissions. In their written closing submissions the applicants noted that the respondents had, in their written opening submissions, conceded the use of the plain words LA FAMIGLIA RANA as well as use of the Rana mark. The applicants then contended that "to the extent that the use of the plain words LA FAMIGLIA RANA remains in contest, the [Rana Facebook page] and [Rana Instagram page] provides examples of the use of those plain words as a trade mark". That submission was mentioned fleetingly by the applicants in closing oral submissions. These submissions led to an examination in section 7.2.2 of the judgment as to whether the use of the plain words used on the Rana Facebook page and Rana Instagram page, including use of the @lafamigliarana social media handle, amounted to deceptively similar use. That examination, however, was not directed to the nuanced question of whether certain website or social media use was directed towards an Australian or international audience. Nor did the applicants present any argument to that effect. The applicants did not plead that use in foreign social media accounts would amount to infringement and, the issue having not been argued, the judgment did not address it. 37 In the circumstances I do not consider that it is necessary or appropriate to make a specific order restraining the conduct identified in the applicants' proposed social media injunction. The general form of injunction will sufficiently protect the applicants in respect of any infringing use.

3.1 The issues 38 The applicants contend that within 30 days of the making of orders the respondents should be required to deliver up "all pasta products and other materials in relation to pasta products, which bear or incorporate the LA FAMIGLIA RANA marks" (delivery up order). 39 The respondents oppose the delivery up order and instead propose that an order be made to the following effect: Notwithstanding [the general injunction], the respondents whether by themselves, their directors, employees, agents or howsoever otherwise be permitted to import into Australia, offer for sale or sell any [listed varieties of filled pasta products] which use the La Famiglia Rana Marks which products are either: (a) located in Australia as at the date of these orders; (b) in transit to Australia as at the date of these orders. (sell-through order). 40 The respondents submit that immediately upon receipt of the judgment on 17 December 2020 Rana took steps to change the packaging of their filled pasta products, and since 13 January 2021 all of Rana's filled pasta products intended for sale in Australia have been produced in Italy in revised (non-infringing) packaging. The first shipment of such products was dispatched from Italy on 25 January 2021 and was due to arrive in Melbourne on about 2 March 2021. Amongst that shipment is about 8,800kg of product in packaging bearing the Rana mark, because as at the date of judgment the product had been ordered, made and packaged for shipping to Australia in the ordinary course of business. Details of the quantities of existing stock bearing the Rana mark and estimates of the time required to sell that stock are included in confidential schedules to the affidavits of Ms Zelger and Mr Thompson. The respondents undertake to keep records of all sales of products bearing the Rana mark, and submit that those records can be used at a separate hearing that will be conducted to assess damages or an account of profits. They submit that the evidence indicates that if the respondents cannot fulfil their existing contracts and orders there is a real risk of short-term and long-term damage to them for which they can never be compensated if the respondents succeed in a foreshadowed appeal, particularly in the form of exposure to potential breach of contract claims with retailers such as Coles and Woolworths, and the risk of having their products removed from the range sold in those supermarkets. Furthermore, they submit that the applicants do not sell equivalent products and so there can be no damage arising from the diversion of sales to the respondents, and that in any event the filled pasta products are fast-moving perishable products that will quickly cycle through the market place and be replaced by stock that does not use the Rana mark. 41 The applicants submit that the sell-through order is in effect a stay pending appeal and ought not to be granted unless the circumstances warrant the Court's intervention, citing Wooldridge v Australian Securities and Investments Commission [2015] FCA 349 at [11] (Middleton J). They submit that since the delivery of the judgment the respondents have continued to engage in infringing conduct and have already enjoyed a de facto three month stay of orders. The respondents now seek a much longer indulgence (the precise period is said to be confidential) to which they are not entitled. In this respect the applicants submit that the duration of the proposed sell-through, the quantity of products proposed to be sold and the value of those products is excessive and not warranted. They contend that the respondents are largely responsible for their position because they took no steps to reduce their exposure prior to judgment. They submit that questions pertaining to pecuniary relief are likely to be complex, and relief for ongoing infringement will not easily be compensated. Furthermore, they submit that it is by no means clear that the making of delivery up orders will lead to third party retailers bringing claims for breach of contract, and that it is contrary to the interests of such third party retailers for them to be supplied with products which the Court has found to be infringing. They submit that this is a case where no stay is necessary to preserve the subject matter of the appeal, and that in any event in the three months since the delivery of judgment the respondents have had sufficient time to make and ship non-infringing products to Australia to meet May 2021 supply deadlines imposed by retailers including Coles and another (confidential) retailer.

3.2 Consideration 42 The respondents' evidence and submissions address matters relevant to repackaging of fresh filled pasta products only, which is explained by reference to [321] of the judgment and the fact that the conclusions expressed in section 7 of the judgment concern filled pasta products only. Had the applicants more clearly communicated their case, then the judgment delivered on 17 December 2020 would have expressed the conclusion set out in section 2.3 above, namely that the other products in issue (being fresh lasagne sheets and gnocchi) also infringed. It is appropriate that injunctive relief be crafted to ensure that there is some accommodation to allow the respondents time to repackage the fresh gnocchi and lasagne sheet products and such other products as fall within the scope of the general injunction. 43 Furthermore, the respondents seek, in effect, a stay of any injunctive orders pending appeal to permit the sale of infringing products. FCR 36.08 provides as follows: (1) An appeal does not: (a) operate as a stay of execution or a stay of any proceedings under the judgment subject to the appeal; or (b) invalidate any proceedings already taken. (2) However, an appellant or interested person may apply to the Court for an order to stay the execution of the proceeding until the appeal is heard and determined. (3) An application may be made under subrule (2) even though the court from which the appeal is brought has previously refused an application of a similar kind. 44 In Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited t/as Sydneywide Bottlers Australia [2001] FCA 1750 at [5]-[11] and [18] Hely J conveniently summarised the principles applicable to the grant of a stay pending appeal. In short, the Court has a broad discretion in the matter. It is sufficient that the applicant for the stay demonstrates a reason or an appropriate case to warrant the exercise of a discretion in its favour. Prima facie, a successful party is entitled to the benefit of the judgment obtained and to commence with the presumption that the judgment was correct. Consequently, the applicant for the stay bears the burden of establishing that a stay is appropriate. A stay should not be granted unless the proposed appeal is at least arguable, although the existence of an arguable case does not itself justify the grant of a stay. In the exercise of discretion the Court will weigh up competing factors including the prejudice likely to be suffered by the applicant for the stay, such as whether the subject matter of the appeal will be extinguished without one, and any loss likely to be suffered on the assumption that the appeal succeeds but a stay is not granted. In this context one factor may be whether or not the applicant for the stay offers an undertaking as to damages in the event the appeal fails, and whether the party opposing the stay gives an undertaking as to damages in the event that the appeal is successful (although in the present case neither party has done so). There may also be a public interest dimension where, as here, issues of consumer protection are involved when one mark is found to be deceptively similar to another. See also In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2) [2020] FCA 772 at [71] (Katzmann J). 45 The evidence of Ms Zelger and Mr Thompson primarily addresses the sell-through issue, although it is confined to evidence in relation to fresh filled pasta and does not address other products including fresh lasagne sheets or gnocchi. In the summary below I generalise some matters to preserve the confidentiality claimed by the respondents with respect to some of the information. 46 Ms Zelger indicates that by 7 January 2021 Rana had arranged for revised product packaging artwork to be applied either by overprinting existing unused packaging or by producing the packaging afresh. Since 13 January 2021 all filled pasta products produced for sale in Australia have used the revised packaging and the first shipment with the revised packaging was sent from Italy on 25 January 2021. The usual shipping time is 36 days from dispatch, although COVID-19 related disruptions have led to delays. Those delays have occasioned the need for advanced planning, one consequence of which is that some tonnes of filled pasta product in the old packaging had already been produced, packaged and made ready for shipping to Australia as at 17 December 2020. In total a larger tonnage of filled pasta product with the infringing packaging is presently in transit to Australia. 47 Mr Thompson gives evidence that as at 16 February 2021 Conga had in its possession a significant tonnage of Rana's fresh filled pasta bearing the infringing marks, though this tonnage excludes the products shipped by Rana on 25 January 2021. Mr Thompson gives evidence that both the tonnage already in Conga's possession, as well as the tonnage shipped on 25 January 2021, was ordered by Conga in the ordinary course of business prior to the delivery of the judgment. He gives evidence that he has been informed by Ms Zelger that any order placed by Conga after 17 December 2020 will be filled using the revised Rana packaging. 48 Mr Thompson also gives evidence, by reference to copies of confidential contractual documents, that if Conga cannot supply fresh filled pasta stock to fulfil orders placed with Woolworths and Coles, those supermarkets will not place any further orders for that stock and will delete the products from its range. He gives evidence that in February 2021 Coles expanded the range of Rana fresh filled pasta it would make available on its shelves to include not only 325g packages, but also 565g packages. He is concerned that without using the infringing packaging Conga will be unable to fulfil Coles' orders, which will result in the deletion of the product from the range. 49 Mr Thompson also gives evidence that if orders are made restraining the sale of infringing fresh filled pasta products and Conga is unable to supply the demand from any of its retail customers then that will cause it to be in breach of agreements that it has reached with those retailers and expose it to suit for breach, reputational damage and loss of customers, none of which is compensable. 50 Ms Zelger says that if Rana is not permitted to sell through existing stocks of fresh filled pasta products in the infringing packaging, Rana will suffer "significant and irreparable" loss because: (1) it will not be able to supply customers with the volume of stock required; (2) it will be unable to fulfil customer contracts with major retailers such as Coles and Woolworths, with the likelihood that its products will be de-ranged from supermarket shelves; and (3) it will suffer loss of goodwill if it cannot supply customers, and competitors will fill the void. 51 Mr Thompson gives evidence that if existing stock cannot be sold-through, it will need to be recalled and destroyed by sending it to landfill at a cost of about $200,000. Ms Kahn's evidence, which was filed by the applicants in response, is that OzHarvest, which rescues excess food that would otherwise be discarded and distributes it to Australian charities to support people in need, may be able to receive any perishable food donations, and the applicants have confirmed they would not object to infringing products being provided to OzHarvest. 52 I was not addressed on the question of the strength of the appeal and I have not been provided with any draft notice of appeal. Perhaps unsurprisingly I do not instinctively reach the conclusion that the judgment involved error. Nonetheless, Ms Still deposes in her affidavit to having instructions to appeal from the judgment, presumably on the basis that she considers an appeal to have reasonable prospects of success. The case was complex and involved a great number of interlocking decisions. Although leave to appeal is required pursuant to s 24(1A) of the Federal Court of Australia Act 1976 (Cth) (FCA Act) because the determination of issues of quantum and liability were separated, the parties agree that leave should be granted. In the circumstances, I will treat the appeal as arguable. 53 There is no question that the appeal would be nugatory if a stay is not granted. Rather, the respondents put their case as one which relies on the relative commercial harm that they would suffer in the event that they are not permitted to sell-through their product and on the basis that any financial or reputational harm they suffer will not be recompensed in the event that the proposed appeal is successful. 54 The proceedings have been on foot since March 2018. Judgment was delivered on 17 December 2020. There can be no doubt that the respondents were aware for a significant period of time of the risk that they would be subject to an injunction preventing sale of products bearing the infringing marks. 55 Since delivery of the judgment, Rana has been in a position to take steps to transition to new packaging for filled pasta products. The evidence shows that it did so with relative alacrity. However, at the time of judgment Conga held, in the normal course of trade, large amounts of stock to meet anticipated or actual demand, and based on the evidence of Ms Zelger and Mr Thompson I consider it likely that it has now received, or will shortly receive, further infringing stock in respect of orders placed before the date of judgment from the shipment which was sent from Italy on 25 January 2021. 56 There is no suggestion that the respondents cannot now supply non-infringing stock in the volumes required to meet demand by shipping it from Italy. Ms Zelger explains that while Rana's Smoked Ham and Cheese filled pasta is made in the United States, the balance of its filled pasta range is made and packaged in Italy. The shipping time is about 36 days and the lead time for manufacturing (which is said to be confidential) is not significant. Even allowing for time to design and repackage, there is no evidence to suggest that all orders for filled pasta from Australian retailers could not have been filled by goods in non-infringing packaging from mid-March 2021. 57 The problem that the respondents raise, however, is that the infringing stock currently held by Conga or which was in transit to Australia on the 25 January 2021 shipment is significant and valuable. It would appear that the respondents have made a decision that, notwithstanding the judgment, they will continue to sell that stock and seek the imprimatur of the Court to do so, pending appeal. Whilst Mr Thompson gives evidence that if Conga is not permitted to sell the infringing product it will have to go to landfill, at the form of orders hearing I was informed by senior counsel for the respondents that the use-by date for the infringing product would extend beyond January 2022, and that it could be stored pending appeal. There is no suggestion that products in infringing packaging could not be exported for sale abroad, although no doubt at some expense. 58 In the context of these matters, it would appear that much of the potential harm about which the respondents express concern would be self-inflicted. Even now, Rana could manufacture and supply non-infringing products by May 2021 and avoid the worst of the harm to which it refers. 59 On the other hand, there is no question that were the respondents provided a short accommodation, they would be in a financial position to meet any damages claim in respect of the sale of additional infringing product. Although the applicants contend that the calculation of pecuniary loss will be terribly difficult, nevertheless it is relief that is available to them. The applicants did not elect to seek interlocutory relief, and the infringing conduct has been going on for some years. It is doubtful that a short additional period of selling the infringing stock will go unrecompensed, in the event that the appeal fails. 60 I also take into account the fact that there is also a public interest in ensuring that deceptively similar trade marks do not appear side-by-side in retail outlets. 61 These matters lead me to the view that, on balance, it is appropriate to stay the general injunction order by permitting a sell-through period, although one considerably shorter than that sought by the respondents, and provided that the respondents provide an undertaking to the Court (which they have offered) to maintain proper records of all infringing products sold or otherwise disposed of. For the fresh filled pasta products it will be for two months from the date of the orders, provided that an application for leave to appeal is filed within 14 days. For other fresh pasta products it will also be for two months, to provide time to effect repackaging of the products other than fresh filled pasta. In determining these periods, I have taken into account that delays may be expected to shipments as a result of the COVID-19 pandemic. The form of the undertaking and order will be: UPON THE RESPONDENTS UNDERTAKING TO THE COURT TO MAINTAIN ACCURATE RECORDS OF SALES VOLUMES AND ACCOUNTS OF PRODUCTS SOLD IN AUSTRALIA BEARING THE RANA MARK, THE COURT ORDERS THAT: Notwithstanding [the general injunction], the respondents whether by themselves, their directors, employees, agents or howsoever otherwise be permitted to import into Australia, offer for sale, sell or otherwise dispose of any: (a) fresh filled pasta products which use the La Famiglia Rana Marks, until 31 May 2021; and (b) fresh pasta products, including lasagne sheets and gnocchi which use the La Famiglia Rana Marks, until 31 May 2021, which products are either (i) located in Australia as at the date of these orders; or (ii) were in transit to Australia as at 25 January 2021, provided that, in the case of (a) above, the respondents file an application for leave to appeal [within 14 days]. 62 I turn now to consider whether infringing products which remain in, or in transit to, Australia after the expiry of the sell-through period should be delivered up to the applicants. The applicants submit that they should not be deprived of the fruits of their victory, citing Wooldridge at [11], a decision that does not relate to delivery up but rather to the grant of a stay. The respondents make no submissions directly in relation to delivery up, but rely instead on their submissions in relation to the sell-through issue. They do not seek a stay of delivery up orders if such orders are made. 63 In Solahart Industries Pty Ltd v Solar Shop Pty Ltd (No 2) [2011] FCA 780; 282 ALR 43 at [14] Perram J accepted that the power to order delivery up is to be seen as an aid to injunctive relief insofar as it removes from the defendant "a source of temptation". In that case his Honour was not persuaded that delivery up should be ordered, as the infringing products were leftover materials from a brand that no longer existed and the "temptation" was thus non-existent. His Honour also suggested that delivery up may not be appropriate where the infringing marks may be removed from the articles to which they are affixed, citing Colbeam Palmer Ltd v Stock Affiliates Pty Ltd [1968] HCA 50; 122 CLR 25 at 39 (Windeyer J). 64 In their submissions the respondents confirmed that packaging which has already been filled with pasta cannot be overprinted to remove the infringing La Famiglia Rana Marks. This is therefore not a case like Colbeam. However, the applicants made no submission and there is no evidence before me to suggest that the respondents would succumb to any temptation to act in breach of Court orders. The respondents should be free to dispose of infringing products in any non-infringing manner that they see fit. 65 I should note with some approval that the applicants have proposed that any remaining stock be supplied to OzHarvest to avoid any wasteful destruction of food. However, to the extent that there is to be any further dealing in the goods bearing the infringing marks, that must be done by consent. The respondents remain the owners of the goods and the control available to the applicants rises only insofar as the conduct of the respondents amounts to an infringing use of the marks within ss 17 and 120 of the Trade Marks Act.

WITHDRAWAL OF APPLICATION TO REGISTER THE RANA MARK 66 The applicants propose an order requiring Rana to withdraw its application to register the Rana mark, but also propose that such an order be stayed pending the resolution of any appeal. The respondents submit that the Court has no power under the Trade Marks Act to order the withdrawal of a trade mark application, and further submit that they should not be ordered to withdraw their application because the class 30 goods specified in it extend beyond filled pasta. 67 Whilst I consider that the Court does have the power to make orders in personam directing Rana to withdraw its trade mark application (s 23 of the FCA Act; see also Thai Gypsum Products Company Ltd v Waring & Gillow Pty Ltd [1994] FCA 556; 29 IPR 99 (Spender J)), in the present case it is not appropriate to do so. The Trade Marks Act provides its own mechanisms for considering the validity of trade mark applications initially at the stage of acceptance by the Registrar by the application of s 33 of the Trade Marks Act by reference to the grounds set out in Division 2 of Part 4. Then, after acceptance, by the process of opposition by third parties provided in Part 5 of the Trade Marks Act. These mechanisms provide the Registrar with the opportunity to consider an application in the light of the circumstances prevailing at the time of filing and in light of the grounds available. 68 It will be recalled that Rana seeks registration of the Rana mark in respect of the following class 30 goods: Precooked, fresh, or frozen meals consisting primarily of pasta or rice; pizza; pasta; pasta with fillings, including tortellini, tortelloni, ravioli, cappelletti, flour-based gnocchi; condiments; sauces (designated Rana goods). 69 I respectfully agree with the observations made by Lehane J in Philips Electronics NV v Remington Products Australia Pty Ltd [1997] FCA 1048; 150 ALR 355 at 359, where his Honour declined to strike out proceedings seeking a declaration that a trade mark application was not registrable, on the discretionary basis that it was appropriate for that question to be determined by the procedures available under the Trade Marks Act. 70 In the present case the issues before me are not wholly commensurate with those likely to be under consideration before the Registrar. For instance, the designated Rana goods extend beyond fresh pasta to products that were not considered in the judgment and I am not in a position to assess whether the applicants would succeed in opposing registration of all of the designated Rana goods. Furthermore, the scope of the application may be amended during its course. Furthermore, the effect of such an order would be to deprive Rana the opportunity to rely on the priority date of its application, which may have unforeseeable consequences in relation to its rights in respect of, inter alia, third parties. 71 In these circumstances, I do not consider it appropriate to order the withdrawal of the application to register the Rana mark.

NON-USE ORDERS 72 The respondents propose that orders be made to regularise the abandonment by the applicants of the 727 composite mark and 187 word mark and to rectify the Register insofar as it concerns the surviving goods in respect of which the remaining Goodman marks are registered. The applicants submit that they have already taken steps to have their marks removed from or amended on the Register, and that accordingly no such orders are necessary. The respondents submit that although the Register has been amended since the delivery of judgment, it is nevertheless appropriate to make their proposed orders to reflect the findings of the Court so that there is consistency of the judgment and final orders. I accept the respondents' submission, and will make the proposed orders.

6.1 The issues 73 The applicants propose that the respondents pay the applicants' costs of the proceedings (including the cross claim), and that the costs be paid in a lump sum pursuant to FCR 40.02(b). The respondents oppose the award of lump sum costs in relation to the infringement claim and propose instead that the applicants be paid their costs of the infringement claim to be taxed if not agreed. The respondents contend that the appropriate order for the cross claim is that the applicants pay 70% of the respondents' costs. They also propose that any costs order be stayed pending appeal, which the applicants oppose. 74 Initially the applicants submitted that there should be no adjustment for any success on the part of the respondents in the proceedings, and sought payment of 100% of their costs. Such a figure was clearly unrealistic, especially having regard to the patently too broad scope of the registration of the applicants' trade marks, two of which they abandoned during the course of closing submissions at the hearing, and two of which they sought but failed to amend to include the ready made meal category. At the form of orders hearing senior counsel for the applicants proposed that an appropriate overall lump sum calculation would be to award the applicants 80% of their costs. In support of this contention the appellants submit that they enjoyed significant success on the cross claim, in which the respondents failed entirely on the s 41 ground and on the ss 59 and 92 grounds in their attempt to remove bread products, pizza bases and pizza dough from the registrations. 75 The respondents oppose the award of lump sum costs in relation to the infringement claim and propose instead that the costs be taxed because whilst they accept that the applicants should have their costs of the infringement claim, a process of taxation will enable apportionment of costs in respect of the quantity of the applicants' evidence that was not admitted during the course of the hearing. In this regard, the respondents particularly emphasise the ruling made in Goodman Fielder Pty Ltd v Conga Foods Pty Ltd [2019] FCA 2053 where certain Quantium data was rejected as inadmissible. They submit that the costs of the rejected evidence must be excised from any award and that this is best done via a process of taxation. 76 The respondents contend that the appropriate order for the cross claim is that the applicants pay 70% of the respondents' costs. They submit that the applicants abandoned the 727 composite mark and 187 word mark in closing submissions, in circumstances where the applicants were always in a position to appreciate their prospects of defending the non-use applications and they nevertheless put the respondents to the expense of filing extensive evidence on the subject. Furthermore, the applicants could have voluntarily amended the scope of their registrations for the balance of the Goodman marks to exclude those goods in respect of which the marks were not used, but instead fought vigorously for the broader scope. In relation to the evidence filed by the applicants, the respondents submit that three affidavits, including in excess of 1000 pages of exhibits, were not read, and of the 13 affidavits that were read, in excess of 1200 pages of exhibits were rejected. Of the balance, only three of the applicants' affidavits dealt exclusively with infringement, and one of those included evidence not related to goods in respect of which infringement was alleged. In the respondents' submission only one affidavit appeared to have addressed the s 41 cross claim.

6.2 Consideration 77 Under s 43 of the FCA Act the award of costs is in the discretion of the Court. The discretion is broad but is to be exercised judicially. The fundamental purpose of the discretion is to compensate the successful party, not to punish the unsuccessful party: Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (No 2) [2018] FCAFC 7 at [3] (Nicholas, Beach and Burley JJ). The Court's preference, where appropriate, is to make a lump sum costs order so as to finalise costs as inexpensively and efficiently as possible (Federal Court of Australia, Costs Practice Note (GPN-COSTS), 25 October 2016 at [4.1]) and to avoid potentially expensive and lengthy taxation hearings by making, where possible, use of procedures including lump-sum costs orders (GPN-COSTS at [3.3]). 78 In Idenix the Full Court said at [3]: The power of the Court in relation to costs is well established. Section 43 of the Federal Court of Australia Act 1976 (Cth) gives the Court a wide discretion in awarding costs. The exercise of the Court's discretion is not without principles or practices; it must be exercised judicially (Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61 at [305] per Bennett, Besanko and Beach JJ). The ordinary rule is that costs follow the event, although a successful party may be awarded less than its costs, or costs may be apportioned, based upon success on the issues (Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) (2015) 327 ALR 192; [2015] HCA 53 at [6] per French CJ, Kiefel, Nettle and Gordon JJ; Les Laboratoires Servier at [297] to [298] and [303]). 79 It is not uncommon in intellectual property cases for costs to be awarded on an issue by issue basis, although in each case it is necessary for the Court to consider whether, in the particular case before it, such an approach is to be taken: cf. Firebird Global Master Fund II Ltd v Republic of Nauru (No 2) [2015] HCA 53; 327 ALR 192 at [6] (French CJ, Kiefel, Nettle and Gordon JJ). 80 In my view it is appropriate to address costs by reference to the infringement claim and the cross claim separately. There is no doubt that the applicants should have their costs of the infringement claim. In my view it should be assessed as a lump sum. The assessment should exclude the costs of the applicants' evidence not read and the costs of and associated with the rejected Quantium evidence. 81 The costs of the cross claim involve assessing, in the broad brush way encouraged in the authorities, the relative success of the parties on the issues. In this respect each party had a degree of success. The cross claim involved challenges to the validity of six trade marks. The applicants succeeded on the s 41 ground, but failed in relation to significant aspects of the non-use grounds considered in section 4 of the judgment. The applicants relied on voluminous evidence in support of their contentions, many of which failed. As I have noted, it was only in closing submissions that they abandoned two of their trade marks entirely and elected to reduce the range of goods covered by the registrations of the remaining four Goodman marks. Plainly, the applicants were content for the respondents to be put to the task of addressing the entirety of the scope of those registrations, notwithstanding that the applicants had within their own knowledge the extent of their use. 82 The respondents contended in their non-use claim that the Register ought to be amended to be confined to "bread and bread products only". In this respect they were substantially successful, the surviving designated goods broadly falling within that description. In my view the success of the respondents is demonstrated by the fact that the effect of the cross claim was substantially to limit the scope of the Goodman marks. In that sense, the cross claim has enhanced the purity of the Register by securing the removal of dead wood that ought not to have remained on it. That was not for altruistic purposes, and it may be noted that it is to be balanced against the fact that the respondents failed to secure the removal of sufficient goods to avoid a finding of infringement. Furthermore the respondents also filed voluminous evidence in their attempt to show that the Goodman marks lacked distinctiveness within s 41 of the Act, a ground upon which they failed. 83 Having regard to the evidence in the proceedings, the submissions made and the result as set out in the judgment, in my view it is appropriate to view the result of the cross claim as a success for the respondents, and to order that the applicants pay 50% of the respondents' costs of the cross claim. This should be assessed as a lump sum. 84 I will order that the parties seek to agree as to the lump sums to be paid, and in the event that they are unable to agree the question will be referred to a Registrar of the Court for determination. 85 Although the respondents sought an order that costs be stayed pending appeal, they made no submissions on this topic but rather focused on seeking an order staying the determination of quantum pending appeal. I see no reason why the costs orders should be stayed, but I will order that the determination of quantum be stayed pending the outcome of any application for leave to appeal provided that the respondents undertake to prosecute such an application and any appeal expeditiously. The applicants do not oppose such an order, and significant time and expense will be required to prepare for a hearing on quantum.

OTHER MATTERS 86 The respondents seek an order for the filing of an application for leave to appeal. No order is required to facilitate that step, it being provided for in the FCR, but I will nevertheless make it. 87 Otherwise, the respondents seek an order that certain aspects of the evidence of Ms Zelger and Mr Thompson be maintained as confidential pursuant to s 37AF of the FCA Act. I am satisfied that it is appropriate to make those orders. I certify that the preceding eighty-seven (87) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley.

SCHEDULE OF PARTIES NSD 328 of 2018 Cross-Claimants Second Cross-Claimant: PASTIFICIO RANA S.P.A. Cross-Respondents Second Cross-Respondent LA FAMIGLIA FINE FOODS PTY LTD

mpany Ltd v Waring & Gillow Pty Ltd [1994] FCA 556; 29 IPR 99 Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; 143 FCR 479 Wooldridge v Australian Securities and Investments Commission [2015] FCA 349

At a glance

Court

Decision date

Before

Source

Judgment (15 paragraphs)

Parties

Legislation Cited (4)

Cases Cited (18)

Cited By (2)