Derma Pen LLC v Biosoft (Australia) Pty Ltd (Security for Costs) [2022] FCA 885

Derma Pen LLC v Biosoft (Australia) Pty Ltd (Security for Costs) [2022] FCA 885

Security for costs will be ordered in respect of the costs of enforcing a costs judgment in Utah, USA, where the Applicants’ assets are located, as there are no sufficient countervailing circumstances to refuse security in favour of the First Respondent against either Applicant or in favour of the Third Respondent against the Second Applicant (Holdings), but not the First Applicant (LLC) due to existing set-off rights. The amount of security is to be limited to USD20,000 per order, given evidence about costs of enforcement in Utah and the Applicants’ deed poll undertaking not to contest enforcement.

Parties
First Applicant: Derma Pen LLC; Second Applicant: Derma Pen IP Holdings LLC; First Respondent: Biosoft (Australia) Pty Ltd (ACN 608 514 021); Second Respondent: Biosoft (Aust) Pty Ltd (In Liq); Third Respondent: Stene Marshall
Jurisdiction
Australia
Judgment Date
29 July 2022
Procedural Posture
Security for Costs Application / Interlocutory
Outcome
Security for costs ordered in part; orders for minutes to be brought in; some applications for security dismissed.
Legal Topics
Security for Costs, Foreign Judgment Enforcement, Trade Marks
Practice and Procedure Intellectual Property Security for Costs Foreign Judgment Enforcement Trade Marks

Case Brief

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Parties

Derma Pen LLC

First Applicant

Derma Pen IP Holdings LLC

Second Applicant

Biosoft (Australia) Pty Ltd (ACN 608 514 021)

First Respondent

Biosoft (Aust) Pty Ltd (In Liq)

Second Respondent

Stene Marshall

Third Respondent

Procedural Posture

Security for Costs Application / Interlocutory

Legal Issues

  1. 1 Should the Court order the Applicants to provide security for costs?
  2. 2 Are there countervailing circumstances that would justify refusal of security for costs?
  3. 3 Should the amount of security be limited to the costs of enforcement in a foreign jurisdiction?

Ratio Decidendi

Security for costs will be ordered in respect of the costs of enforcing a costs judgment in Utah, USA, where the Applicants’ assets are located, as there are no sufficient countervailing circumstances to refuse security in favour of the First Respondent against either Applicant or in favour of the Third Respondent against the Second Applicant (Holdings), but not the First Applicant (LLC) due to existing set-off rights. The amount of security is to be limited to USD20,000 per order, given evidence about costs of enforcement in Utah and the Applicants’ deed poll undertaking not to contest enforcement.

Court Disposition

Security for costs ordered in part; orders for minutes to be brought in; some applications for security dismissed.

Orders

  • Holdings (Second Applicant) to provide security in the amount of USD20,000 for the Third Respondent (Mr Marshall).
  • Holdings and LLC (First and Second Applicants) to each provide USD20,000 as security to the First Respondent (Biosoft (Australia) Pty Ltd) in the form of a bank guarantee or other agreed security.