Jimik Investments Pty Ltd v Registrar of Trade Marks [2003] FCA 765

FEDERAL COURT OF AUSTRALIA

Jimik Investments Pty Ltd v Registrar of Trade Marks [2003] FCA 765 JIMIK INVESTMENTS PTY LTD v REGISTRAR OF TRADE MARKS, GERD THÖNE, OLIVER THÖNE N 1439 of 1999 WILCOX J 25 JULY 2003 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N1439 of 1999

BETWEEN: JIMIK INVESTMENTS PTY LTD

APPLICANT

AND: REGISTRAR OF TRADE MARKS

FIRST RESPONDENT

GERD THÖNE

SECOND RESPONDENT

OLIVER THÖNE

THIRD RESPONDENT

JUDGE: WILCOX J

DATE OF ORDER: 25 JULY 2003

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The third respondent, Oliver Thöne, pay to the applicant, Jimik Investments Pty Ltd, the costs incurred by the said applicant in respect of the proceeding up to and including the hearing on 21 December 1999. 2. There be no order in respect of any other costs incurred by any party. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY N1439 of 1999

BETWEEN: JIMIK INVESTMENTS PTY LTD

APPLICANT

AND: REGISTRAR OF TRADE MARKS

FIRST RESPONDENT

GERD THÖNE

SECOND RESPONDENT

OLIVER THÖNE

THIRD RESPONDENT

JUDGE: WILCOX J

DATE: 25 JULY 2003

PLACE: SYDNEY

REASONS FOR JUDGMENT ON COSTS WILCOX J: 1 On 16 August 2001, I made orders disposing of this matter. However, those orders included a reservation of liberty to apply upon seven days notice. The applicant, Jimik Investments Pty Ltd, took advantage of that liberty by making an application that the Court order the second and third respondents, Gerd Thöne and Oliver Thöne, to pay its costs of the proceeding. 2 I directed that the parties provide written submissions in regard to costs. I have received and considered these submissions. 3 The proceeding was initiated on 15 December 1999, by the filing of a notice of motion seeking leave to file a notice of appeal against a decision of the Registrar of Trade Marks, the first respondent. Katz J granted leave and a notice of appeal was filed that same day. The nature of the appeal was identified in this way in para 1 of the notice of appeal: "… the Applicant appeals from the decision of the Registrar of Trade Marks given by his delegate on 3 December 1999 at Canberra whereby it was decided that the hearing of the opposition to Application for Australian Trade Mark Number 746400 should proceed without deferment and in particular that the hearing should be set down for 19 January 2000." 4 The applicant for the trade mark was Jimik Investments. The opponent was Oliver Thöne, the third respondent. He was apparently then in Australia. 5 The matter came before me, on an interlocutory basis, on 21 December 1999. It appeared the applicant, Jimik Investments, had unsuccessfully submitted to the delegate that determination of the notice of opposition to the grant of the trade mark should await resolution of a commercial dispute between Jimik Investments and the second respondent, the father of the third respondent. 6 On 21 December, counsel for the applicant argued I should make an interlocutory order restraining the delegate from proceeding to a hearing of the opposition until after resolution of the commercial dispute. Counsel for the third respondent contended to the contrary. The second respondent, who was apparently resident in Germany, did not appear and was not represented. 7 After consideration of counsel's submissions, I made interlocutory orders on 21 December which included the following order: "The applicant, by its counsel, having given to the Court the usual undertaking as to damages, order that the first respondent, Registrar of Trade Marks, postpone the Opposition Hearing fixed for 19 January 2000 in respect of Australian Trade Mark Number 746400 until a date to be fixed by, or pursuant to, an order of the Court or after final hearing." 8 I gave leave for the amended application and affidavits to be filed on the second respondent outside Australia, in Germany. 9 In making the order, I emphasised I was dealing with the matter on an interlocutory basis. The application was based upon s 15 of the Administrative Decisions (Judicial Review) Act 1977 ("ADJR Act"). I expressly reserved my opinion as to the application of the ADJR Act to this case, but I thought it was arguable that the Act did apply and also that, in the circumstances, the delegate fell into error of law in considering the application for adjournment. I emphasised these were not final conclusions. 10 There was considerable delay in resolution of the commercial dispute. The applicant found it necessary to resort to the International Court of Arbitration in Paris, where it was successful. Prior to the decision of that Court, I had made the orders of 16 August 2001 disposing of the matter. 11 The basis upon which the applicant seeks costs is that it has been successful in the proceeding, as it was before the International Court of Arbitration. However, I am not concerned with the outcome before that court. The only question for me is the proper order, having regard to the course of proceedings in this Court. As to that matter, I observe that I have never reached a final conclusion about the availability of relief to the applicant under the ADJR Act, nor about whether the delegate fell into error in refusing the application for adjournment that was made on 3 December 1999. It would be wrong to grant general costs of the action on the basis of costs following the event. 12 On the other hand, the applicant was successful in obtaining interlocutory relief on 21 December 1999, and this over the opposition of the third respondent. On 21 December 1999, I reserved the costs of the application for interlocutory relief, expecting they would be dealt with in the final orders. That having not happened, it is appropriate for me now to consider whether the applicant is entitled to its costs of the application for interlocutory relief. 13 Having reviewed the matter and reconsidered the position as it was on 21 December 1999, I am of the opinion that it is appropriate to make an order that the third respondent pay to the applicant the costs incurred by it in respect of the proceedings up to and including the hearing on 21 December 1999. The decision given on that day was a vindication of the act of the applicant in coming to court to obtain an order for postponement of the hearing, then envisaged for 19 January 2000. 14 The second respondent was not involved in the hearing on 21 December 1999. Accordingly, it would be inappropriate to make an order for costs in respect of that hearing against the second respondent. 15 I do not think there is any basis for my making an order in favour of the applicant in respect of costs incurred after 21 December 1999. Such costs as were incurred were in respect of various mentions, at each of which the case was stood over further because of delays in obtaining a hearing before the International Court of Arbitration. The second and third respondents may not have been free from fault in relation to those delays, but they were not faults that arose in the proceeding before me.