Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (No 2) [2016] FCA 896

Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (No 2) [2016] FCA 896

Because Elixir had succeeded on the cross-claim by establishing an entitlement to a declaration expressly contemplated by s 129(2) of the Trade Marks Act 1995 (Cth), there was no reason to depart from the normal rule that costs follow the event. Elixir's damages claim was a separate remaining stage, so costs of that stage could be addressed later, and no reason was shown to stay or qualify the costs order for the liability stage.

Jurisdiction
Australia
Judgment Date
05 August 2016
Procedural Posture
Trade Mark Groundless Threats Cross Claim / Determination on the Papers of Form of Orders, Costs and Mediation Following Liability Judgment, With Quantum Remaining
Outcome
Declaration made for Elixir on the cross-claim; Stone & Wood ordered to pay Elixir's costs of the cross-claim up to and including 21 July 2016; later cross-claim costs reserved; remaining cross-claim issues referred to mediation by consent, with that mediation order stayed for the specified period and on appeal...
Legal Topics
['groundless Threats of Trade Mark Infringement Proceedings' 'declaration Under S 129 of the Trade Marks Act 1995 (cth)' 'costs Following the Event' 'stay or Reduction of Costs' 'mediation of Remaining Issues']
['intellectual Property' 'trade Marks' 'civil Procedure'] ['groundless Threats of Trade Mark Infringement Proceedings' 'declaration Under S 129 of the Trade Marks Act 1995 (cth)' 'costs Following the Event' 'stay or Reduction of Costs' 'mediation of Remaining Issues']

Case Brief

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Procedural Posture

Trade Mark Groundless Threats Cross Claim / Determination on the Papers of Form of Orders, Costs and Mediation Following Liability Judgment, With Quantum Remaining

Legal Issues

  1. 1 ['Whether a declaration should be made that Stone & Wood made groundless threats against Elixir to bring an action for infringement of Australian Trade Mark No. 1395188 within the meaning of s 129 of the Trade Marks Act 1995 (Cth).' "Whether Stone & Wood should pay Elixir's costs of the cross-claim up until and including 21 July 2016." 'Whether the costs order should be qualified or stayed pending determination of quantum and any application under r 40.08 of the Federal Court Rules.' 'Whether the remaining issues in the cross-claim should be referred to mediation.']

Ratio Decidendi

Because Elixir had succeeded on the cross-claim by establishing an entitlement to a declaration expressly contemplated by s 129(2) of the Trade Marks Act 1995 (Cth), there was no reason to depart from the normal rule that costs follow the event. Elixir's damages claim was a separate remaining stage, so costs of that stage could be addressed later, and no reason was shown to stay or qualify the costs order for the liability stage.

Court Disposition

Declaration made for Elixir on the cross-claim; Stone & Wood ordered to pay Elixir's costs of the cross-claim up to and including 21 July 2016; later cross-claim costs reserved; remaining cross-claim issues referred to mediation by consent, with that mediation order stayed for the specified period and on appeal...

Orders

  • ['By letters from their solicitors dated 26 February 2015 and 15 April 2015, the first and second cross-respondents (Stone & Wood) made groundless threats against the cross-claimant (Elixir) to bring an action for infringement of Australian Trade Mark No. 1395188 within the meaning of section 129 of the Trade Marks...