Selth v Australasian Barrister Chambers Pty Ltd

1. The first respondent pay the costs of the applicant of and incidental to the proceeding to be taxed or otherwise agreed.
2. The second respondent pay the costs of the applicant of and incidental to the proceeding to be taxed or otherwise agreed up to and including 15 December 2015.
3. Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published from Chambers. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

GREENWOOD J: 1 These proceedings are concerned with the disposition of the costs of and incidental to the proceedings commenced by Selth as representative for the members of the Australian Bar Association and ABA Australian Bar Association Limited (NSD 975 of 2014) and the proceedings commenced by the New South Wales Bar Association (NSD 1019 of 2014). The proceedings are respectively called the "ABA proceedings" and the "NSWBA proceedings". 2 These reasons are to be read in conjunction with the reasons in the principal proceeding: Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649 (the "principal judgment"). 3 Plainly enough, the Court's power to award costs derives from the broad discretion conferred by s 43 of the Federal Court of Australia Act 1976 (Cth). The principles which govern the exercise of the discretion as to costs are well known. It is not necessary to set out those principles in any detail in these reasons although the following matters ought to be noted. 4 First, "the award of costs is discretionary but generally that discretion is exercised in favour of the successful party": Foots v Southern Cross Mine Management Pty Ltd (2007) 234 CLR 52 ("Foots") at [25] per Gleeson CJ, Gummow, Hayne and Crennan JJ. 5 Second, in Oshlack v Richmond River Council (1998) 193 CLR 72 ("Oshlack"), the High Court emphasised the breadth of the power exercised in making costs orders. Gaudron and Gummow JJ in Oshlack at [40] - [41] observe that there is no absolute rule with respect to the exercise of the power conferred by a statutory costs discretion that, in the absence of disentitling conduct, a successful party is to be compensated by the unsuccessful party. Their Honours observe that careful attention has to be given to the circumstances presenting themselves in relation to the institution and conduct of litigation and to the varied nature of litigation. 6 Third, nevertheless, the Court should keep in mind the observation quoted from the plurality in Foots that, as a general unifying proposition, although the award of costs involves the exercise of a discretionary power the discretion is generally exercised in favour of the successful party. 7 Fourth, the principles in relation to the exercise of the discretion are set out in Kazar v Kargarian (2011) 197 FCR 113 at [1] - [9]. 8 Fifth, an award of costs is designed to be compensatory or alternatively restitutionary. Costs orders are not made to punish an unsuccessful party. 9 Sixth, sometimes a costs order is made other than on a "party and party" basis and the principle invoked when that question is alive was put this way in Oshlack at [44] by Gaudron and Gummow JJ: … However, in the particular circumstance of a case involving some relevant delinquency on the part of the unsuccessful party, an order is made not for party and party costs but for costs on a "solicitor and client" basis or on an indemnity basis. The result is more fully or adequately to compensate the successful party to the disadvantage of what otherwise would have been the position of the unsuccessful party in the absence of such delinquency on its part. 10 In light of the principal judgment published on 8 June 2017 in support of the orders made that day, the parties were ordered to put on submissions in relation to costs. None of the applicants seek an order for costs on a solicitor and client basis or on an indemnity basis. The applicant in each proceeding seeks an order for the payment of its costs on a party and party basis. 11 So far as the costs of the NSWBA proceeding are concerned, the applicant was entirely successful in the proceeding. It was put to cost and expense in making good its case. It did not engage in any conduct which would disentitle it to any aspect of its costs. It ought to have the benefit of an order for costs on the usual basis that provides it with a degree of compensation or restitution for the costs it was required to incur in conducting the proceedings and seeking the final relief it obtained. 12 It ought not to have been put to that expense. 13 As to the ABA proceeding, the applicants were substantially successful in the proceeding. Moreover, much time was spent and cost unnecessarily incurred by the applicants in responding to and addressing many issues and contentions raised against the applicants by the respondents, which had no merit. The applicants were unsuccessful in their contentions of trade mark infringement and related contraventions in relation to one particular matter. That matter concerned the use of the name "Australasian Barrister Chambers" and the related issue of the use of the scales of justice logo or device in association with that name. On all of the many other matters raised against the applicants, the applicants were successful. 14 As to the matter of the contentions concerning the use of the name "Australasian Barrister Chambers" and the use of the logo or device in the form of the scales of justice, I am not satisfied that the failure of the applicants to make good their contentions on that matter, in the context of the issues overall in the proceeding, warrants, as a matter going to the exercise of the discretion, a departure from the usual general rule that the applicants ought to have their costs of the proceeding. That follows for these reasons. 15 First, the applicants correctly say that the matter of the use of the particular name and device was very much bound up with the issues on which the applicants succeeded. It therefore becomes very difficult to isolate costs truly confined to the "issue" of the use of the name in combination or otherwise with the logo or device. Thus, the "issue" is not truly discrete and severable. 16 Second, I also accept that in the context of the field of issues alive in the ABA proceeding, the question of the use of the name "Australasian Barrister Chambers" with or without the use of the logo or device was a relatively minor matter. 17 Third, I also accept that raising the question of whether the use of the name, either alone or in conjunction with the logo or device, properly engaged a question of whether the rights of the applicants had been contravened notwithstanding that the applicants were unsuccessful on that aspect of the matter. I do not accept that the failure of the applicants to make good that contention derogates from an exercise of the discretion that focuses upon the overall merits of the proceeding. The true justice of the position between the parties is to be determined having regard to the overall outcome in the total proceedings. 18 Because the applicants were substantially successful in the proceeding (and taking into account the matters I have already mentioned), I am satisfied that the applicants ought to have their costs of and incidental to the proceeding on the usual basis. 19 One further question remains. 20 The liquidator of Australasian Barrister Chambers Pty Ltd ("Chambers") opposes the making of any order for costs against Chambers for costs incurred by the applicants in the ABA proceeding and the applicant in the NSWBA proceeding after 16 December 2015. The significance of that date is that on 16 December 2015 the liquidator filed a notice submitting to any order the Court might make. I am satisfied that there ought to be no order for costs on and after 16 December 2015. Until that date, Chambers resisted all of the relief sought by the applicants in the ABA proceeding and the applicant in the NSWBA proceeding. I am satisfied that an order for costs ought to be made against Chambers for the costs of and incidental to the proceedings to be taxed or otherwise agreed up to and including 15 December 2015. I certify that the preceding twenty (20) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.