Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd

MOSHINSKY J: 1 On 21 July 2016, I gave judgment in relation to liability (but not quantum) in this matter: Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820 (the Reasons). These reasons should be read together with the Reasons. I adopt the abbreviations used in the Reasons. 2 As noted in the Reasons at [244], Elixir sought the opportunity to make submissions as to the form of orders to be made in relation to the cross-claim following the publication of reasons. I therefore ordered, in relation to the cross-claim, that the parties submit agreed minutes of proposed orders and that, if they could not agree, each party provide its minutes of proposed orders, together with a short outline of submissions. The parties were in agreement as to some, but not all, of the orders to be made. They have each filed minutes of proposed orders and a short outline of submissions. The parties were content for me to deal with the matter on the papers. 3 The parties were in agreement as to the form of declaration to be made to give effect to the Reasons, namely a declaration to the effect that, by letters from their solicitors dated 26 February 2015 and 15 April 2015, Stone & Wood made groundless threats against Elixir to bring an action for infringement of Australian Trade Mark No. 1395188 within the meaning of s 129 of the Trade Marks Act. A declaration to this effect reflects the Reasons. Further, s 129(2) provides that a purpose of the action is to obtain a declaration to this effect. I will therefore make such a declaration. 4 In relation to costs, Elixir seeks an order that Stone & Wood pay Elixir's costs of the cross-claim up until and including 21 July 2016 (the day on which judgment on the cross-claim was pronounced in favour of Elixir). Stone & Wood seeks to qualify the costs order (which was order 4 in the minutes of proposed orders) by making it subject to two further orders as follows: 5. If, following the determination of all remaining issues in relation to the Cross-Claim, Elixir is awarded a sum of less than $100,000 in damages, Stone & Wood may file an application pursuant to Rule 40.08 of the Federal Court Rules that any costs and disbursements payable to Elixir pursuant to Order 4 be reduced by an amount to be specified by the Court. 6. Order 4 be stayed: (a) initially until the determination of all remaining issues in relation to the Cross-Claim; and (b) if, following the determination of all remaining issues in relation to the Cross-Claim, Elixir is awarded a sum of less than $100,000 in damages, until determination of any application filed by Stone & Wood pursuant to Order 5. 5 In support of these proposed orders, Stone & Wood submits that if there is to be a taxation of costs on the cross-claim, it should be on all relevant issues; it would be inefficient, and an inappropriate use of the resources of the parties and the Court, to have multiple taxations of costs in the proceeding; the outcome of the quantum phase of the proceeding may impact significantly on the amount of costs that should be awarded to Elixir - for example, those costs might properly be reduced (either under the Court's general discretion as to costs or pursuant to r 40.08 of the Federal Court Rules) if the damages awarded are nominal or low; accordingly, it is undesirable to tax Elixir's costs of the cross-claim until quantum has been determined and the cross-respondents have had the opportunity to pursue any application as to the reduction of costs that they consider appropriate. 6 In my view, there should be a costs order in favour of Elixir in relation to the cross-claim up until and including 21 July 2016. Elixir was successful in its cross-claim. I do not think reason is shown to depart from the normal rule that costs follow the event. Elixir has established an entitlement to a declaration, which is one of the forms of relief specifically referred to in s 129(2) of the Trade Marks Act. It has, therefore, succeeded in the cross-claim. Elixir's claim for damages is a separate stage of the proceeding and the costs of this stage will need to be addressed separately in due course. This may include an application under r 40.08 in respect of those costs. Further, I do not think reason is shown to stay the costs order in relation to the cross-claim. No stay has been sought or ordered in relation to the costs of the principal claim. 7 For these reasons, I will make a costs order in favour of Elixir in relation to the cross-claim up until and including 21 July 2016 and I will not make this order subject to the two additional orders sought by Stone & Wood. The parties were in agreement that the costs after 21 July 2016 in relation to the cross-claim be reserved. I will also make this order. 8 The parties also sought, by consent, orders for mediation of the remaining issues in the cross-claim. I will make those consent orders. I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moshinsky.