N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited

Consideration 6 The key question is whether the respondent's case in relation to substantial injustice was abandoned at the hearing before me. 7 In my view the applicant in its submissions appears to be confusing two separate issues raised at trial in relation to principles of substantial injustice. 8 The applicant clearly submitted that substantial injustice would result to it in accordance with the principles explained in Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-399 should leave to appeal be refused, supposing his Honour's decision was wrong. The primary submission by the applicant at the hearing was that substantial injustice would result because - in summary - refusal of leave would result in the extinguishment of the applicant's registered trademark (TS 12 October 2011 p 22 ll 38-47, p 23 ll 1-11). 9 However while the respondent conceded the merit of the applicant's arguments in respect of the potential substantial injustice the applicant would suffer should his Honour have been wrong (TS 12 October 2011 p 39 l 35), the respondent nonetheless submitted that the applicant's position was balanced by the potential substantial injustice the respondent would suffer if leave to appeal were granted, in particular by reference to: the fact that the applicant was a foreign corporation; the applicant had already been unsuccessful twice in respect of the relevant trademarks; and the respondent had been put to great expense which it was unlikely to be able to recover. 10 Accordingly, the respondent submitted that the potential injustice to the respondent should leave to appeal be granted was a discretionary factor the Court could take into account in deciding whether or not to grant leave (in particular, TS 12 October 2011 p 39 ll 35-47, p 40 ll 1-2, 30-33, 41-47, p 41 ll 1-3). 11 The respondent filed affidavits sworn by Ms Chrystal Dare and Mr Roland Matters in support of this proposition. Ms Chrystal Dare was a lawyer instructed by the respondent in these proceedings. Her affidavit of sworn 10 October 2011 goes, in summary, to the costs incurred by the respondent, and research she caused undertaken which indicated that the applicant had no assets in Australia to which the respondent could have recourse in respect of costs should the respondent be successful in the proceedings. Mr Roland Matters was a legal costs consultant retained by the solicitors for the respondent, who deposed in his affidavit sworn 10 October 2011 (inter alia) as to his expert opinion in respect of the proportion of actual costs recovered by successful litigants. 12 It is clear that the respondent never abandoned its case that the Court could take into consideration the potential injustice the respondent would suffer in respect of costs should leave to appeal be granted. In my judgment refusing leave to appeal I did not advert to this issue, because it was clearly unnecessary for me to do so. 13 While costs always remains a matter of discretion, the usual practice is that costs follow the event, and a successful litigant receives costs in the absence of special circumstances justifying some other order: ACCC v Australian Safeway Stores Pty Ltd (No 2) [2003] FCAFC 163 at [6]. The applicant accepts this practice, although in this case the applicant contends that circumstances warrant a departure from that approach. I am not persuaded by the submissions advanced by the applicant that there should be a departure from this rule, or that any discount in respect of costs incurred by the respondent is warranted. 14 The appropriate order is that the respondent should be awarded its costs of and incidental to the proceeding, to be taxed if not otherwise agreed. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier.