Yperion Technology SAS v Luminex Pty Ltd

REASONS FOR JUDGMENT 1 The appellant commenced proceedings in Paris to recover monies owing for goods sold to the first respondent. The appellant also commenced proceedings against the respondents in Australia for infringement of trademark, breach of copyright, misleading and deceptive conduct and breach of agreement. These claims arose from an allegation that the respondents sold counterfeit smart cards used to operate the laser hair removal machines supplied by the appellant to the first respondent. 2 In cl 24.2 of the distribution agreement made between the appellant and the first respondent the parties agreed "to submit to the Commercial Court of Paris, all disputes arising out of or in connection with the validity, interpretation or performance of this agreement and its exhibits." 3 The primary judge ordered a stay of the Australian proceedings in reliance on this clause. 4 Following the hearing of an application for leave to appeal from those orders the parties settled the matter save as to costs. The Court made orders by consent as follows: In this order: Australian Proceedings means proceedings NSD2352 of 2011 in the Federal Court of Australia. French Proceedings means the pending proceedings in the Tribunal de Commerce de Paris (the Commercial Court of Paris or the Business Court of Paris) between the Applicant, the First and Sixth Respondents and Karpati Licencing Pty Limited filed on or around 20 September 2011. UPON the undertaking to the Respondents and the Court, of the Applicant by its counsel to: (a) discontinue or dismiss forthwith the French Proceedings; (b) not bring any claims presently made in the French Proceedings ("French Claims") in any court, otherwise than as part of the Australian Proceedings; and (c) treat the costs of the French Proceedings as abiding the outcome of costs in the Australian Proceedings (whether by order, settlement or otherwise), and if there is any dispute as to their quantum that they be assessed in accordance with Australian principles of costs assessment / taxation; AND UPON the undertaking to the Applicant and the Court, of the Respondents by their counsel that they will: (a) consent to the French Claims, and the claims currently made in the Australian Proceedings, being brought as part of the Australian Proceedings; (b) not seek to invoke clause 24.2 of the Exclusive Distribution Agreement dated 8 July 2003 between the Applicant and the First Respondent in answer to or as a barrier to the French Claims, or the claims currently made in the Australian Proceedings, being brought as part of the Australian Proceedings; and (c) treat the costs of the French Proceedings as abiding the outcome of costs in the Australian Proceedings (whether by order, settlement or otherwise), and if there is any dispute as to their quantum that they be assessed in accordance with Australian principles of costs assessment / taxation; THE COURT, BY CONSENT, ORDERS AS FOLLOWS: 1. Leave to appeal be granted. 2. The appeal be allowed. 3. Orders 1 and 2 of the orders of Emmett J made on 22 May 2012 be set aside. 4. If no consent order as to costs is filed in the meantime, within 7 days of the date of this order, the Applicant file any written submissions in chief as to the costs before Emmett J, and the costs of the application for leave to appeal and the appeal (collectively, "Costs"). 5. Within 14 days of the date of this order, the Respondents file any written submissions in answer as to Costs. 6. Within 21 days of the date of this order, the Applicant file any written submission in reply as to Costs. 5 In accordance with those orders on 20 February 2013 the appellant filed a written submission on the question of costs. On 27 February 2013 the respondents filed a written submission in response, and on 1 March 2013 the appellant filed a written submission in reply.