Lodestar Anstalt v Campari America LLC

1. The application by the appellant to vary the orders made by this Court on 28 June 2016 be dismissed.
2. The appellant pay the respondent's costs of the application referred to in paragraph 1. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

THE COURT: 1 On 9 June 2015, Lodestar Anstalt ("Lodestar") made an application under s 195(2) of the Trade Marks Act 1995 (Cth) for leave to appeal from orders made by a judge of this Court. An order was subsequently made that the applicant's amended application for leave to appeal be heard concurrently with the appeal, should leave be granted. On 28 June 2016, this Court made the following orders: 1. The application for leave to appeal be granted. 2. The appeal be allowed. 3. The respondent pay the appellant's costs of the appeal. 4. Paragraph 1 of the orders made by the primary judge on 26 May 2015 and paragraphs 1, 2, 3 and 4 of the orders made by the primary judge on 12 June 2015 be set aside. 5. In lieu of the orders identified in paragraph 4, the appeal to this Court from the decision of the delegate of the Registrar of Trade Marks be dismissed with costs. (Lodestar Anstalt v Campari America LLC [2016] FCAFC 92). It will be seen that the orders in paragraph 3 and 5 deal with costs. The reasons which follow deal with an application by Lodestar to vary those orders so as to provide for indemnity costs. The reasons should be read with the principal reasons of the Court. As with the principal reasons it is not necessary for us to detail the different respondents at relevant times. We will refer to the respondent as Campari America. 2 Lodestar has applied for a variation of the orders made by this Court in relation to the application for leave to appeal and appeal to this Court (paragraph 3) and the costs of the appeal to a judge of this Court from the decision of the delegate of the Registrar of Trade Marks (paragraph 5). We will refer to the latter as the primary appeal. 3 In lieu of paragraph 3, Lodestar seeks the following order: The Respondent pay the Appellant's costs of the appeal on the following bases:- (a) before 11.00am on 27 July 2015 - on the party and party basis; and (b) from 11.00am on 27 July 2015 - on the indemnity basis. 4 In lieu of paragraph 5, Lodestar seeks the following order: (a) The appeal to this Court in the action NSD 2340/2013 from the decision of the Delegate of the Registrar of Trade Marks be dismissed; and (b) The Respondent pay the Appellant's costs of action NSD 2340/2013 assessed on the following bases:- (i) before 11.00am on 13 June 2014 - on the party and party basis; and (ii) from 11.00am on 13 June 2014 - on the indemnity basis. 5 Lodestar filed an affidavit of its solicitor (Mr Kenneth Philp) in support of its application. The affidavit and other evidence before this Court establishes the following matters which we set out in chronological order. 6 First, the delegate of the Registrar of Trade Marks made his decision on 25 October 2013. He held that the applications for the removal of the relevant trade marks under s 92(4)(b) of the Trade Marks Act 1995 (Cth) had been successful. On 15 November 2013, the registered owner of the trade marks (then Skyy Spirits LLC) filed an appeal with this Court against the decision. 7 Secondly, on 10 June 2014, Lodestar, then the respondent to the appeal, served on the appellant a Notice of offer to compromise pursuant to Part 25 of the Federal Court Rules 2011 (Cth). The offer was to the effect that the parties consent to orders that the appeal be dismissed and that there be no order as to costs. The offer involved a proposal that each party would bear their costs of and incidental to the appeal. The offer of compromise was expressed to be open to be accepted for 14 days after service of the offer. It is this offer which forms the basis of Lodestar's application for a variation of the order in paragraph 5. 8 Thirdly, the primary judge heard the appeal by the registered owner of the relevant trade marks on 1 and 2 December 2014 and handed down his judgment on 26 May 2015. His Honour made orders on 26 May 2015 and on 12 June 2015. His Honour allowed the appeal and made the other orders summarised in the principal reasons (at [23]). 9 Fourthly, as we have said, on 9 June 2016 Lodestar applied for leave to appeal from the orders made by the primary judge. 10 Fifthly, on 22 July 2015, Lodestar served a Notice of offer to compromise in the application for leave to appeal proceeding. The offer was to the effect that the respondent consent to orders that the application for leave to appeal to this Court be granted, that the appeal be allowed, and that an order be substituted that the appeal to this Court from the decision of the delegate of the Registrar of Trade Marks be dismissed. The offer in relation to costs was as follows. The respondent would pay the applicant's costs of the proceedings before the delegate and 80% of the applicant's party and party costs in the primary appeal. There would be no order as to the costs of the applicant's application for leave to appeal and, if granted, appeal. As an additional, but non-essential part of the offer, the applicant offered to allow the respondent to use the name "Wild Geese" on certain terms and conditions. It is not necessary for us to set out the details of the terms and conditions. It is this offer which forms the basis of Lodestar's application for a variation of the order in paragraph 3. 11 Finally, as we have said, this Court handed down its decision and made orders on 28 June 2016. 12 Lodestar, through Mr Philp, has put forward evidence of the costs which would have been saved by Campari America had it accepted the offer made on 10 June 2014 and had it accepted the offer made on 22 July 2015.