Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 6) [2016] FCA 1492

Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 6) [2016] FCA 1492

It was imprudent and unreasonable for Roy Weston Nominees Pty Ltd to refuse both the First and Second Settlement Offers from Harcourts WA, which represented genuine compromises; admissibility of the offers was established under s 131(2)(h) of the Evidence Act. Although Harcourts WA was delayed in filing evidence and thus partially responsible for protracting the proceedings, there was no misconduct. Consequently, Harcourts WA is entitled to costs on an indemnity basis from 1 July 2014 (after the Second Settlement Offer expired), but not earlier; costs prior to that date are to be on a party-party basis.

Parties
Applicant/cross Respondent: Harcourts WA Pty Ltd; Respondent/cross Claimant; Applicant (in WAD 167 of 2013): Roy Weston Nominees Pty Ltd
Jurisdiction
Australia
Judgment Date
09 December 2016
Procedural Posture
Applications for Trade Mark Infringement and Removal, With Cross Applications / Post Trial; Determination of Costs Following Substantive Judgment
Outcome
Costs awarded as to success, on mixed basis: party-party up to 30 June 2014; indemnity thereafter (subject to partial discounting in WAD 167 of 2013).
Legal Topics
Indemnity Costs, Offers of Compromise, Trade Mark Infringement, Evidence of Settlement Offers, Costs Discretion
Intellectual Property Law Civil Procedure Indemnity Costs Offers of Compromise Trade Mark Infringement Evidence of Settlement Offers Costs Discretion

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Parties

Harcourts WA Pty Ltd

Applicant/cross Respondent

Roy Weston Nominees Pty Ltd

Respondent/cross Claimant; Applicant (in WAD 167 of 2013)

Procedural Posture

Applications for Trade Mark Infringement and Removal, With Cross Applications / Post Trial; Determination of Costs Following Substantive Judgment

Legal Issues

  1. 1 Whether indemnity costs should be awarded following settlement offers under Federal Court Rules 2011 and Calderbank v Calderbank
  2. 2 Admissibility of settlement offers for the purposes of costs under Evidence Act 1995 (Cth) s 131(2)(h)
  3. 3 Whether there was an imprudent refusal of settlement offers by Roy Weston Nominees Pty Ltd

Ratio Decidendi

It was imprudent and unreasonable for Roy Weston Nominees Pty Ltd to refuse both the First and Second Settlement Offers from Harcourts WA, which represented genuine compromises; admissibility of the offers was established under s 131(2)(h) of the Evidence Act. Although Harcourts WA was delayed in filing evidence and thus partially responsible for protracting the proceedings, there was no misconduct. Consequently, Harcourts WA is entitled to costs on an indemnity basis from 1 July 2014 (after the Second Settlement Offer expired), but not earlier; costs prior to that date are to be on a party-party basis.

Court Disposition

Costs awarded as to success, on mixed basis: party-party up to 30 June 2014; indemnity thereafter (subject to partial discounting in WAD 167 of 2013).

Orders

  • In SAD 224 of 2012: Respondent/Cross-Claimant to pay Applicant/Cross-Respondent’s costs up to 30 June 2014 on a party-party basis, and from 1 July 2014 on an indemnity basis, not including unreasonable or unreasonably incurred costs.
  • In WAD 167 of 2013: Applicant to pay Respondent’s costs up to 30 June 2014 on a party-party basis, and from 1 July 2014, 90% of Respondent’s costs on an indemnity basis, not including unreasonable or unreasonably incurred costs.