mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 36
Outcome: considered
passage refers to what appears to be the competitor's get-up. It was referred to with approval by a Full Court of this Court in Vieright Pty Ltd v Myer Stores Ltd (1995) 31 IPR 361 at 371 per Beaumont, Branson and Lindgren JJ. However, I do not think that too much should be read into that for three reasons. First , it is apparent that in Reckitt Lord Oliver was only restating a test he had formulated two pages before at 17 IPR 7. That more detailed formulation of the test makes plain that the question is whether the defendant has made a representation to the public, not whether it has a get-up. Secondly , the Full Court in Vieright referred to both passages with approval: 31 IPR 361 at 369, 371. Thirdly , several other Full Courts have referred with approval to Lord Oliver's first formulation of the test which lacks the reference to the respondent's get-up: TGI Friday's Australia Pty Ltd v TGI Friday's Inc (1999) 45 IPR 43 at 50 [25] per Wilcox, Kiefel and Emmett JJ; Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302 at 327 per Lockhart J, 355 per Gummow J and 361 per French J. In those circumstances, neither authority nor common sense require the identification of the Malt Balls get-up which, so it seems to me, is a sterile exercise the resolution of which will confer no benefit on anyone. The first passing off claim representations about source and origin
Case: Australian Forest Managers Ltd (In Liq) v Bramley (1996) 65 FCR 13
Outcome: applied
Court's power to order costs in these proceedings is created by s 1335(2) of the Corporations Act . That provides: "(2) The costs of any proceeding before a court under this Act are to be borne by such party to the proceeding as the court, in its discretion, directs." Thus, the parties accepted in argument that s 1335(2) displaces the broader power to order costs conferred on this Court under s 43(2) of the Federal Court of Australia Act 1976 (Cth). That result had been reached in decisions under the predecessor of s 1335(2) of the Corporations Law . These had held that the terms of the earlier s 1335(2) were mandatory in proceedings like the present that are "under this Act" and the section had displaced the broader powers under s 43(2) of the Federal Court of Australia Act : Australian Forest Managers Ltd (In Liq) v Bramley (1996) 65 FCR 13 at 20F-G, 22C-F, 23D-E per Lindgren J; see too Re Wridgemont Display Homes Pty Ltd [1992] FCA 604 ; (1992) 39 FCR 193 at 196-197 per Jenkinson J.
Case: Cachia v Hanes [1994] HCA 14 ; (1994) 179 CLR 403
Outcome: cited
where defendants or respondents in the same interest all participate in the proceedings and fail, as a practical result (but not because of any rule of law or practice) they will be liable jointly and severally to an order that they pay the plaintiffs' costs: cf Probiotec Ltd v University of Melbourne [2008] FCAFC 5 ; (2008) 166 FCR 30 at 44-46 [53] - [61] per myself, Finn and Besanko JJ agreeing. In general, the purpose of an order for costs is to indemnify, at least partially, a successful party: Probiotec 166 FCR at 44 [51] and Cachia v Hanes [1994] HCA 14 ; (1994) 179 CLR 403 at 410-411 per Mason CJ, Brennan, Deane, Dawson and McHugh JJ.
Case: Charlick Trading Pty Ltd v Australian National Railways Commission (1997) 149 ALR 647
Outcome: cited
Charlick Trading Pty Ltd v Australian National Railways Commission (1997) 149 ALR 647 at 649-651 Mansfield J examined the scope of the discretion to make an order for payment of a third party's reasonable costs and expenses in complying with a subpoena under the predecessor of FCR O 27 r 11. The present rule also provides the Court with a similarly wide discretion to order a party that causes a subpoena for production to be issued to pay the subpoenaed person's reasonable costs and expenses of compliance. The subsequent joinder of that person as a party, however, may be relevant to the exercise of that power: Simpson v Monteith [2009] NSWSC 156 at [54] - [58] per Hoeben J. He noted that the obligation of the person subpoenaed to discover the same documents after becoming a party would normally make the costs of production of so much of the documents as were discoverable, the new party's costs in the proceedings. And, like here, in Simpson [2009] NSWSC 156 at [57] , the documents had not been required to be produced before the joinder.
Case: City of Swan v Lehman Brothers Australia Ltd (No 2) [2009] FCA 1160
Outcome: cited
plaintiff Councils seek their costs of the proceedings against each of the corporate defendants, Lehman Australia, Lehman Asia and Lehman Bros. Lehman Australia accepted that any costs it should be ordered to pay be payable as costs of its winding up, ordered by me on 2 October 2009: City of Swan v Lehman Brothers Australia Ltd (No 2) [2009] FCA 1160. Lehman Australia argued that the order should apportion the liability for costs severally so that each corporate defendant would be ordered to pay one-third of the Councils' costs. Lehman Asia also asserted that since the Councils had not joined it as a defendant initially and it had applied to be joined, it was an intervenor, and that it should not be ordered to pay any costs at all or any significant costs. Lehman Bros argued that under r 2.13 of the Federal Court (Corporations) Rules 2000 , its liability was limited to any additional costs that were incurred by the Councils, until it was joined as a defendant at its own request on 16 July 2009. In addition, Lehman Bros seeks an order for its reasonable expenses in respect of a subpoena served on it by the Councils on 23 June 2009. The Councils argued that the subpoena sought documents that would have been discoverable had Lehman Bros been a party at the time of service. They argued that the expenses in respect of the subpoena should be characterised as an incident of Lehman Bros' later involvement as a defendant. The Councils commenced these proceedings urgently and ex parte on 5 June 2009 when Stone J gave them leave to serve the originating process returnable before me on 12 June 2009. That process was directed to challenging the validity and implementation of the resolution of Lehman Australia's creditors, made on 28 May 2009, that it execute a deed of company arrangement.
Case: City of Swan v Lehman Brothers Australia Ltd [2009] FCA 784
Outcome: cited
in any action to set aside the deed Lehman Asia, as a party to it, had to be a defendant. It was a proper and necessary party, as its offer to be joined on 12 June 2009 recognised. Lehman Asia was also the principal proponent of the deed during the earlier administration: City of Swan v Lehman Brothers Australia Ltd [2009] FCA 784 at [1] . It filed a defence and cross-claim. It sought relief by having the Court remove or vary the terms of the impugned clauses or order amendments so as to give effect to the intention of those creditors who had voted in favour of the resolution. In addition, it sought an order for rectification of the deed: City of Swan [2009] FCA 784 at [11] - [12] . Lehman Asia had not sought to be added as an intervenor on 12 June 2009. Nor was it content to rely on merely being heard under r 2.13(1) without being made a party. Neither position would have been appropriate. Lehman Asia was a party to the deed. And, Lehman Asia was an active, proper and necessary party to the proceedings that sought that the deed be terminated or declared void. It exercised its rights of participation in the proceedings as a party, including bringing a cross-claim. It had a significant interest in seeking to uphold the validity of the deed of company arrangement, or obtaining relief to similar effect, or to enforce the balance of the deed excluding any clauses found to be invalid. It should be liable for costs as a party.
Case: City of Swan v Lehman Brothers Australia Ltd [2009] FCAFC 130
Outcome: cited
argument is without substance. On 5 June, when the proceedings began, they were properly constituted as a vehicle to challenge the creditors' resolution that Lehman Australia execute a deed of company arrangement containing provisions to the effect of those held by the Full Court to be beyond the statutory powers of the creditors to include in such a deed: City of Swan v Lehman Brothers Australia Ltd [2009] FCAFC 130. Importantly, on 12 June 2009, the Councils obtained new causes of action in respect of the deed that had been executed on that day. Lehman Asia was an actual party to that deed as were, conformably with s 444B(2) and (5), Lehman Australia and its administrators.
Case: Re Wridgemont Display Homes Pty Ltd [1992] FCA 604 ; (1992) 39 FCR 193
Outcome: cited
Court's power to order costs in these proceedings is created by s 1335(2) of the Corporations Act . That provides: "(2) The costs of any proceeding before a court under this Act are to be borne by such party to the proceeding as the court, in its discretion, directs." Thus, the parties accepted in argument that s 1335(2) displaces the broader power to order costs conferred on this Court under s 43(2) of the Federal Court of Australia Act 1976 (Cth). That result had been reached in decisions under the predecessor of s 1335(2) of the Corporations Law . These had held that the terms of the earlier s 1335(2) were mandatory in proceedings like the present that are "under this Act" and the section had displaced the broader powers under s 43(2) of the Federal Court of Australia Act : Australian Forest Managers Ltd (In Liq) v Bramley (1996) 65 FCR 13 at 20F-G, 22C-F, 23D-E per Lindgren J; see too Re Wridgemont Display Homes Pty Ltd [1992] FCA 604 ; (1992) 39 FCR 193 at 196-197 per Jenkinson J.
Case: Simpson v Monteith [2009] NSWSC 156
Outcome: followed
Charlick Trading Pty Ltd v Australian National Railways Commission (1997) 149 ALR 647 at 649-651 Mansfield J examined the scope of the discretion to make an order for payment of a third party's reasonable costs and expenses in complying with a subpoena under the predecessor of FCR O 27 r 11. The present rule also provides the Court with a similarly wide discretion to order a party that causes a subpoena for production to be issued to pay the subpoenaed person's reasonable costs and expenses of compliance. The subsequent joinder of that person as a party, however, may be relevant to the exercise of that power: Simpson v Monteith [2009] NSWSC 156 at [54] - [58] per Hoeben J. He noted that the obligation of the person subpoenaed to discover the same documents after becoming a party would normally make the costs of production of so much of the documents as were discoverable, the new party's costs in the proceedings. And, like here, in Simpson [2009] NSWSC 156 at [57] , the documents had not been required to be produced before the joinder.
Case: Colgate Palmolive v Cussons (1993) 118 ALR 248
Outcome: referred to
The ordinary rule is that costs are awarded on a party and party basis. From time to time, the Court has made an award of costs on a different basis. The authorities have identified various circumstances in which it may be appropriate to exercise the discretion to award costs on a different basis from a party and party basis. One such category is where there is evidence of particular misconduct by a party that causes loss of time to the Court and to the other parties. However, the authorities also make it clear that the categories of circumstances in which the Court may exercise its discretion to award costs on, for example, an indemnity basis are not closed. I refer to Colgate Palmolive v Cussons (1993) 118 ALR 248 at 254-257; Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (French J, unreported, 3 May 1991), Re Wilcox Ex Parte Venture Industries Pty Ltd (1996) 141 ALR 727 (" Re Wilcox "). The gap between party and party costs and indemnity costs may be increasing. However, while that may be a reason to review the scale rates, it is not in itself a reason to broaden the established criteria for awarding indemnity costs. As I understand it, that is a point made by Cooper and Merkel JJ in Re Wilcox (at 734).
Case: Fisher v RAFCORP (WA) (1995) 57 FCR 1
Outcome: referred to
The respondents asked me to make a self-executing order in relation to the first order I made on 22 May 2007. In other words, they asked me to make an order that if the applicant does not comply with the first order then the proceedings do stand dismissed as to the whole of the relief claimed by the applicant. There is no doubt that I have the power to make such an order: O 35A, r 3(1)(c). I decline to do so. In Fisher v RAFCORP (WA) (1995) 57 FCR 1 at 19, the Full Court of this Court described such orders as unusual. I respectfully agree and I think that such orders should only be made in extreme cases. There may be many circumstances which arise subsequent to the making of such an order, which plainly call for a relaxation of a time limit fixed in the order and it would be unwise to place an obstacle in the way of a favourable exercise of the discretion. In my opinion, such an order should only be made when, in effect, all other efforts to ensure compliance have failed. The present is not such a case. 29 The respondents applied for the costs they incurred between 10 May and 22 May 2007, of the notice of motion dated 3 May 2007, of the hearings on 9 May 2007 and 22 May 2007 and of the adjournment of the trial on an indemnity basis. 30 In my opinion, the respondents are entitled to the costs of their notice of motion dated 3 May 2007. The applicant did not comply with the December orders as amended on 9 May 2007. They are also entitled to the costs of the hearings on 9 May and 22 May 2007 respectively because those hearings were primarily concerned with the variation of the December orders and the respondents' notice of motion. The respondents are also entitled to any costs occasioned by the adjournment of the trial. An adjournment of the trial was necessary because of the applicant's failure to comply with the orders of the Court and, in particular, the order as to the delivery of reports by expert witnesses. Finally, the respondents are entitled to any costs occasioned by the late delivery of statements. Clearly, those costs should be restricted to costs which have been wasted.
Case: Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (unreported, French J, 3 May 1991)
Outcome: referred to
The ordinary rule is that costs are awarded on a party and party basis. From time to time, the Court has made an award of costs on a different basis. The authorities have identified various circumstances in which it may be appropriate to exercise the discretion to award costs on a different basis from a party and party basis. One such category is where there is evidence of particular misconduct by a party that causes loss of time to the Court and to the other parties. However, the authorities also make it clear that the categories of circumstances in which the Court may exercise its discretion to award costs on, for example, an indemnity basis are not closed. I refer to Colgate Palmolive v Cussons (1993) 118 ALR 248 at 254-257; Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (French J, unreported, 3 May 1991), Re Wilcox Ex Parte Venture Industries Pty Ltd (1996) 141 ALR 727 (" Re Wilcox "). The gap between party and party costs and indemnity costs may be increasing. However, while that may be a reason to review the scale rates, it is not in itself a reason to broaden the established criteria for awarding indemnity costs. As I understand it, that is a point made by Cooper and Merkel JJ in Re Wilcox (at 734).
Case: Wilcox, Re; Ex Parte Venture Industries Pty Ltd (1996) 141 ALR 727
Outcome: referred to
The ordinary rule is that costs are awarded on a party and party basis. From time to time, the Court has made an award of costs on a different basis. The authorities have identified various circumstances in which it may be appropriate to exercise the discretion to award costs on a different basis from a party and party basis. One such category is where there is evidence of particular misconduct by a party that causes loss of time to the Court and to the other parties. However, the authorities also make it clear that the categories of circumstances in which the Court may exercise its discretion to award costs on, for example, an indemnity basis are not closed. I refer to Colgate Palmolive v Cussons (1993) 118 ALR 248 at 254-257; Tetijo Holdings Pty Ltd v Keeprite Australia Pty Ltd (French J, unreported, 3 May 1991), Re Wilcox Ex Parte Venture Industries Pty Ltd (1996) 141 ALR 727 (" Re Wilcox "). The gap between party and party costs and indemnity costs may be increasing. However, while that may be a reason to review the scale rates, it is not in itself a reason to broaden the established criteria for awarding indemnity costs. As I understand it, that is a point made by Cooper and Merkel JJ in Re Wilcox (at 734).
Case: Buckley v Bennell Design and Constructions Pty Ltd (1974) 1 ACLR 301
Outcome: applied
word 'applicant' used in s 56 of the Act has for many years in various statutory analogues and under the Federal Court Act been accepted as referring to the party against whom security for costs is sought, whether in legal form a plaintiff or initially moving party in the proceedings or a defendant or respondent who brings a cross-action or cross-claim: see eg Buckley v Bennell Design and Constructions Pty Ltd (1974) 1 ACLR 301 at 306 per Street CJ. In my opinion, the authorities establish that where a foreign defendant counterclaims or cross-claims, it will be ordered to provide security for costs if, in substance, what it puts forward is not simply a defence to the claim, but a distinct claim in itself, provided that on an overall assessment by the Court it is just and fair that such an order be made. In Neck v Taylor [1893] 1 QB 560 at 562 Lord Esher MR identified the applicable principles (see also at 563 per Lindley LJ and per Lopes LJ). Those principles were applied by Street CJ in Buckley 1 ACLR at 307; see too Bev Wizz Group Pty Ltd v Transport Solutions Pty Ltd [2008] NSWSC 1399 at [12] - [18] where Brereton J summarised a number of the authorities. Lord Esher MR said ( Neck [1893] 1 QB at 562): "Where the counterclaim is put forward in respect of a matter wholly distinct from the claim, and the person putting it forward is a foreigner resident out of the jurisdiction, the case may be treated as if that person were a plaintiff, and only a plaintiff, and an order for security for costs may be made accordingly in the absence of anything to the contrary. Where, however, the counterclaim is not in respect of a wholly distinct matter, but arises in respect of the same matter or transaction upon which the claim is founded, the Court will not, merely because the party counterclaiming is resident out of the jurisdiction, order security for costs; it will in that case consider whether the counterclaim is not in substance put forward as a defence to the claim, whatever form in point of strict law and pleading it may take, and, if so, what under all the circumstances will be just and fair as between the parties and will act accordingly."
Case: Neck v Taylor [1893] 1 QB 560
Outcome: followed
my opinion, the authorities establish that where a foreign defendant counterclaims or cross-claims, it will be ordered to provide security for costs if, in substance, what it puts forward is not simply a defence to the claim, but a distinct claim in itself, provided that on an overall assessment by the Court it is just and fair that such an order be made. In Neck v Taylor [1893] 1 QB 560 at 562 Lord Esher MR identified the applicable principles (see also at 563 per Lindley LJ and per Lopes LJ). Those principles were applied by Street CJ in Buckley 1 ACLR at 307; see too Bev Wizz Group Pty Ltd v Transport Solutions Pty Ltd [2008] NSWSC 1399 at [12] - [18] where Brereton J summarised a number of the authorities. Lord Esher MR said ( Neck [1893] 1 QB at 562): "Where the counterclaim is put forward in respect of a matter wholly distinct from the claim, and the person putting it forward is a foreigner resident out of the jurisdiction, the case may be treated as if that person were a plaintiff, and only a plaintiff, and an order for security for costs may be made accordingly in the absence of anything to the contrary. Where, however, the counterclaim is not in respect of a wholly distinct matter, but arises in respect of the same matter or transaction upon which the claim is founded, the Court will not, merely because the party counterclaiming is resident out of the jurisdiction, order security for costs; it will in that case consider whether the counterclaim is not in substance put forward as a defence to the claim, whatever form in point of strict law and pleading it may take, and, if so, what under all the circumstances will be just and fair as between the parties and will act accordingly."
Case: Willey v Synan [1935] HCA 76 ; (1935) 54 CLR 175
Outcome: applied
Willey v Synan [1935] HCA 76 ; (1935) 54 CLR 175 at 184, Dixon J, with whom Rich J expressly agreed, identified the principle as follows: "... a party to judicial proceedings, who resides beyond the jurisdiction,should not be required to give security for costs unless, however the parties were arranged upon the record, he is the person invoking or resorting to the jurisdiction for the purposes of establishing rights or obtaining relief. If he does avail himself of the remedies the jurisdiction provides in order to obtain affirmative relief or redress, he may be ordered to give security, although he becomes a defendant in the action." There, Dixon J analysed the substantive positions of the parties. He held that the foreign plaintiff had assumed the position of a defending party principally because he was compelled to do so by the provisions of the legislation under which his goods would otherwise be condemned. He characterised that position as being one in which the foreign plaintiff had assumed the burden of commencing the proceedings in order to defeat the true moving party's claim, being that of the Collector of Customs to be entitled to condemn and forfeit the plaintiff's goods. As a matter of impression, in substance the real issue in the present proceedings involves Elbow River establishing positively that the terms of the letter of credit dealing with the nitrogen blanket, which were vital to its right to be paid in a commercially efficient way, reflected no part of the contract and National Biofuels' reliance on them as terms either was wrong or the terms were inessential. Next, Elbow River is seeking to establish its entitlement to a very substantial claim for damages. While National Biofuels also has a claim for damages and does seek some relief, in substance its position is defensive. It seeks to resist what, at the time the proceedings were brought and subsequently has eventuated, was anticipated to be Elbow River's substantive claim for damages for breach of contract. I am of opinion that the pleadings reveal that in reality the substance of the case and the substantial claim is that brought by Elbow River to recover damages for the breach of the version of the contract on which it relies. Moreover, it seems to me that the evidentiary burden, albeit in a formal sense, borne by each of the parties equally to establish the respective contracts on which they rely, is really created by Elbow River's positive denial that the terms of the letter of credit, requiring production of documentary proof to the bank that there was a nitrogen blanket, form part of any contract between the parties. In my opinion, that will be a heavy burden to discharge, having regard to the commercial arrangement the parties evidently have accepted on the pleadings. The substance of that arrangement arose out of dealings and conduct in negotiations between businessmen for the payment of a very large sum of money under a c.i.f. contract using a letter of credit.