PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (No 2) [2021] FCAFC 147

PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (No 2) [2021] FCAFC 147

Grasshopper had very substantial success in the appeal, succeeding in resisting the trade mark infringement, ACL and passing off claims, and the appeal was dismissed in its entirety except for a minor adjustment to the goods for which one Grasshopper trade mark was to remain registered. A 10% allowance suitably recognised PDP's minor success, the failure of an aspect of the cross-appeal, and contingent arguments that did not need to be determined; it was not appropriate to conduct an inquiry into the likely success or failure of those grounds in a costs argument. The Court therefore dismissed PDP's application to vary the 90% costs order and directed lump sum assessment by a Registrar.

Jurisdiction
Australia
Judgment Date
19 August 2021
Procedural Posture
Costs in Intellectual Property Trade Marks Appeal and Cross Appeal / Post Appeal Costs Determination on the Papers
Outcome
The application to vary Order 5 made on 29 July 2021 was dismissed, and the costs under that order were directed to be assessed on a lump sum basis by a Registrar of the Court.
Legal Topics
['appeal Costs' 'cross Appeal Costs' 'lump Sum Costs Assessment' 'trade Mark Infringement' 'non Use Application' 'australian Consumer Law' 'passing Off']
['costs' 'intellectual Property' 'trade Marks'] ['appeal Costs' 'cross Appeal Costs' 'lump Sum Costs Assessment' 'trade Mark Infringement' 'non Use Application' 'australian Consumer Law' 'passing Off']

Case Brief

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Procedural Posture

Costs in Intellectual Property Trade Marks Appeal and Cross Appeal / Post Appeal Costs Determination on the Papers

Legal Issues

  1. 1 ["Whether the appellants/cross-respondents' application to vary Order 5 made on 29 July 2021 should be dismissed or whether their costs liability should be reduced from 90% to 75% of the respondent/cross-appellant's costs." 'Whether the costs payable under Order 5 made on 29 July 2021 should be assessed on a lump sum basis by a Registrar of the Court.']

Ratio Decidendi

Grasshopper had very substantial success in the appeal, succeeding in resisting the trade mark infringement, ACL and passing off claims, and the appeal was dismissed in its entirety except for a minor adjustment to the goods for which one Grasshopper trade mark was to remain registered. A 10% allowance suitably recognised PDP's minor success, the failure of an aspect of the cross-appeal, and contingent arguments that did not need to be determined; it was not appropriate to conduct an inquiry into the likely success or failure of those grounds in a costs argument. The Court therefore dismissed PDP's application to vary the 90% costs order and directed lump sum assessment by a Registrar.

Court Disposition

The application to vary Order 5 made on 29 July 2021 was dismissed, and the costs under that order were directed to be assessed on a lump sum basis by a Registrar of the Court.

Orders

  • ['The application by the appellants/cross-respondents to vary Order 5 made on 29 July 2021 be dismissed.' 'The costs in Order 5 made on 29 July 2021 be assessed on a lump sum basis in an amount to be determined by a Registrar of the Court.' 'The Registrar be directed pursuant to r 1.37 of the Federal Court Rules...