Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (Costs) [2025] FCA 38

Federal Court of Australia Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd (Costs) [2025] FCA 38 File number:

Judgment of: WHEELAHAN J

Date of judgment: 31 January 2025

Catchwords: COSTS — where the applicants brought a claim of trade mark infringement against the respondent – where the respondent brought a cross-claim seeking the cancellation of the first applicant's registered trade mark – where both the applicants' claim and the respondent's cross-claim failed – where the cross-claim was only ever defensive – whether the respondent should have its costs of the unsuccessful cross-claim – held: the applicants should pay the respondent's costs of the claim and the cross-claim on a party and party basis having regard to the fact that the whole proceeding was properly viewed as one event – the costs incurred by the respondent in pursuing its cross-claim were incurred as part of a proportional, reasonable, and integrated response to the applicants' unsuccessful claim. COSTS — Calderbank offer – where the respondent made a Calderbank offer before trial – where the offer invited the applicants to discontinue the proceeding and pay 60% of the respondent's actually incurred costs, in exchange for the respondent discontinuing the cross-claim – held: it was not unreasonable for the applicants not to accept the Calderbank offer – the Calderbank offer hardly constituted a compromise, having regard to its terms, and the defensive nature of the cross-claim – application for indemnity costs refused.

Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 2) [2018] FCAFC 112 Damorgold Pty Ltd v Blindware Pty Ltd (No 2) [2018] FCA 364 Davies v Lazer Safe Pty Ltd (No 2) [2019] FCAFC 118 DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 268 GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd (No 2) [2018] FCAFC 100 Global Brand Marketing Inc v YD Pty Ltd [2008] FCA 605; 76 IPR 161 H Lundbeck A/S v Alphapharm Pty Ltd (No 2) [2009] FCAFC 118 Hansen Beverage Co v Bickfords (Australia) Pty Ltd (No 2) [2008] FCA 601 Cases cited: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (No 2) [2007] FCAFC 6 Koninklijke Douwe Egberts BV v Cantarella Bros Pty Ltd [2024] FCA 1277 New South Wales Dairy Corp v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 Northern Territory v Sangare [2019] HCA 25; 265 CLR 164 PAC Mining Pty Ltd v Esco Corp (No 2) [2009] FCAFC 52 Plaintiff M76/2013 v Minister for Immigration, Multicultural Affairs and Citizenship [2013] HCA 53; 251 CLR 322 Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 3) [2021] FCA 729 Tramanco Pty Ltd v BPW Transpec Pty Ltd (No 2) [2014] FCAFC 58 Calderbank v Calderbank [1976] Fam 93