FEDERAL COURT OF AUSTRALIA Laminar Air Flow Pty Ltd v Registrar of Trade Marks (No 2) [2018] FCA 38 File number(s): NSD 1016 of 2017 Judge: ROBERTSON J Date of judgment: 31 January 2018 Catchwords: COSTS – whether costs should be awarded in a lump sum – Registrar to determine quantum Legislation: Federal Court Rules 2011 (Cth), rr 1.37, 40.02(b) Cases cited: ACN 074 971 109 (as trustee for the Argot Unit Trust) and Pegela Pty Ltd v National Mutual Life Association of Australasia Ltd (ACN 004 020 437) [2013] VSC 137 LFDB v SM (No 2) [2017] FCAFC 207 Paciocco v Australia and New Zealand Banking Group Ltd (No 2) [2017] FCAFC 146 Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 4) [2017] FCA 1277 Date of hearing: Determined on the papers Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 9 Counsel for the Applicant: Mr JS Cooke with Mr DB Larish Solicitor for the Applicant: Davies Collison Cave Law Pty Ltd Counsel for the First Respondent: The First Respondent submitted save as to costs Counsel for the Second Respondent: Mr IP Horak with Mr A McRobert Solicitor for the Second Respondent: Wrays Lawyers Pty Ltd ORDERS NSD 1016 of 2017 BETWEEN: LAMINAR AIR FLOW PTY LTD ACN 106 677 329 Applicant AND: REGISTRAR OF TRADE MARKS First Respondent VOKES LTD Second Respondent JUDGE: ROBERTSON J DATE OF ORDER: 31 January 2018 THE COURT ORDERS THAT: 1. The costs referred to in order 3 made on 6 December 2017 be awarded in a lump sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth), instead of any taxed costs, in a sum to be determined by a Registrar. 2. The applicant is to file and serve within 21 days hereof any evidence upon which it intends to rely before the Registrar. 3. The second respondent is to file and serve any evidence upon which it intends to rely within a further 21 days. 4. Direct the Registrar pursuant to r 1.37 of the Federal Court Rules to determine the quantum of the applicant's costs in such manner as he or she deems fit including, if thought appropriate, on the papers. 5. Direct the Registrar at the conclusion of that process to order the second respondent to pay whatever sum has been determined within 28 days. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROBERTSON J: 1 In this matter, I gave judgment in the substantive proceeding on 6 December 2017: Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447. These reasons deal with the question whether there should be a lump sum costs order. If such an order is made, the proceeding is to be referred to a Registrar for determination of the quantum of costs: see order 2 made on 22 December 2017. 2 It is apparent that the parties have not been able to agree on the amount of any lump sum costs order. 3 The applicant, Laminar Air, by its outline of submissions dated 22 December 2017, seeks an order that its costs of the principal proceedings be paid in a lump sum. Those submissions refer to Paciocco v Australia and New Zealand Banking Group Ltd (No 2) [2017] FCAFC 146; LFDB v SM (No 2) [2017] FCAFC 207; and Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 4) [2017] FCA 1277 and to the Court's Costs Practice Note (GPN-COSTS) dated 25 October 2016. 4 Vokes Limited, the second respondent, against whom a costs order has been made by order 3 made on 6 December 2017, by its outline of submissions dated 19 January 2018, opposes the making of a lump sum costs order. Its submissions are largely directed to what it says is the excessive amount of the lump sum costs order for which the applicant contends. However as I have indicated, the question of quantum is to be referred to a Registrar. 5 Vokes Limited submits that a lump sum costs order is not appropriate and does so with reference to ACN 074 971 109 (as trustee for the Argot Unit Trust) and Pegela Pty Ltd v National Mutual Life Association of Australasia Ltd (ACN 004 020 437) [2013] VSC 137. 6 I turn to the five reasons given by Vokes Limited for opposing the making of a lump sum costs order. The first two reasons go substantially to the question of quantification and are not of present relevance. The third reason takes issue with the contention on behalf of the applicant that the application before the Registrar of Trade Marks was instituted over three years ago. I place no weight on that contention although I refer below to the time-consuming nature of a taxation. The fourth reason is that it is not clear that the litigation was so complex that a bill of costs could not be produced quickly and efficiently. This seems to me, if anything, to be a reason in favour of a lump sum costs order rather than a taxation. The fifth reason is that a lump sum costs order "is not the only way to quickly and efficiently determine costs and it has not (sic) shown to be appropriate in this case." In my opinion, a lump sum costs order is generally more economical, efficient and less time-consuming and the Court's Practice Note proceeds on that basis. 7 In my opinion, this is an appropriate case for the making of a lump sum costs order. The procedural history of the matter is straightforward and the preparation for, and conduct of, the trial was relatively uncomplicated. I do not see any substantial difficulties that would arise at a practical level in the process of assessment of the quantum in a lump sum exercise. That exercise would be substantially more economical, more efficient and less time-consuming than a taxation. The cases refer to the avoidance of expense, delay and aggravation involved in a protracted litigation arising out of taxation. The criticisms that Vokes Limited makes in its outline of submissions, for example, that the Court cannot be confident that the approach taken on a lump sum costs order will be logical, fair and reasonable, seem to me to be largely inapposite where the question of quantum is to be determined by a Registrar. I am satisfied that a lump sum award will be able to be fairly determined on the materials that will be available to a Registrar. 8 I also observe that in the exercise of the Court's discretion in dealing with costs, how that discretion has been exercised in other cases can only help at the level of principle and not at the level of result. 9 For these reasons I make the following orders: (1) The costs referred to in order 3 made on 6 December 2017 be awarded in a lump sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth), instead of any taxed costs, in a sum to be determined by a Registrar. (2) The applicant is to file and serve within 21 days hereof any evidence upon which it intends to rely before the Registrar. (3) The second respondent is to file and serve any evidence upon which it intends to rely within a further 21 days. (4) Direct the Registrar pursuant to r 1.37 of the Federal Court Rules to determine the quantum of the applicant's costs in such manner as he or she deems fit including, if thought appropriate, on the papers. (5) Direct the Registrar at the conclusion of that process to order the second respondent to pay whatever sum has been determined within 28 days. I certify that the preceding nine (9) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate: Dated: 31 January 2018