Unilever Australia Ltd v RFC Nominees Pty Ltd [2000] FCA 1021

Unilever Australia Ltd v RFC Nominees Pty Ltd [2000] FCA 1021

The Court refused to order security for costs against Mr Karounos because Unilever was the real applicant, having chosen to bring proceedings to expunge the mark from the Register, and because ordering security against a defendant would risk frustrating the defence. Although RFC Nominees Pty Limited was a cross-claimant and security could in principle be ordered in respect of a cross-claim, the issues in the cross-claim were intimately related to Unilever's rectification proceeding, particularly validity, distinctiveness and use of the word "Real", so the discretion would not be exercised to require security. The position of RFC Nominees Pty Limited was stood over because its corporate...

Jurisdiction
Australia
Judgment Date
26 July 2000
Procedural Posture
Trade Marks Proceeding Involving Rectification and Alleged Infringement; Interlocutory Motion for Security for Costs, Discovery and Extension of Time / Interlocutory Motion Before Trial
Outcome
Security for costs refused against Mr Karounos; motion stood over as to RFC Nominees Pty Limited; discovery and extension of time orders made; no order as to costs on the motion.
Legal Topics
['security for Costs' 'cross Claims' 'rectification of the Register of Trade Marks' 'trade Mark Infringement' 'distinctiveness of Trade Marks' 'deregistration and Restoration of Company' 'discovery' 'extension of Time']
['trade Marks' 'civil Procedure' 'corporations' 'bankruptcy'] ['security for Costs' 'cross Claims' 'rectification of the Register of Trade Marks' 'trade Mark Infringement' 'distinctiveness of Trade Marks' 'deregistration and Restoration of Company' 'discovery' 'extension of Time']

Case Brief

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Procedural Posture

Trade Marks Proceeding Involving Rectification and Alleged Infringement; Interlocutory Motion for Security for Costs, Discovery and Extension of Time / Interlocutory Motion Before Trial

Legal Issues

  1. 1 ['Whether the respondents should provide security for costs in the amount of $40,000.' 'Whether the Court should treat Unilever as the real respondent and RFC Nominees Pty Limited and Mr Karounos as the real applicants despite the formal designation of the parties.' 'Whether security should be ordered in respect of the cross-claim by RFC Nominees Pty Limited.' 'Whether the status of RFC Nominees Pty Limited, having apparently been struck off the Register, should affect the disposition of the motion.' 'Whether orders should be made for discovery and extension of time for serving defences.']

Ratio Decidendi

The Court refused to order security for costs against Mr Karounos because Unilever was the real applicant, having chosen to bring proceedings to expunge the mark from the Register, and because ordering security against a defendant would risk frustrating the defence. Although RFC Nominees Pty Limited was a cross-claimant and security could in principle be ordered in respect of a cross-claim, the issues in the cross-claim were intimately related to Unilever's rectification proceeding, particularly validity, distinctiveness and use of the word "Real", so the discretion would not be exercised to require security. The position of RFC Nominees Pty Limited was stood over because its corporate...

Court Disposition

Security for costs refused against Mr Karounos; motion stood over as to RFC Nominees Pty Limited; discovery and extension of time orders made; no order as to costs on the motion.

Orders

  • ['The motion seeking security for costs was dismissed so far as it sought security against Mr Karounos.' 'The motion was stood over in respect of RFC Nominees Pty Limited until 6 September.' 'Orders were made concerning discovery as sought in paragraph 4 of the motion.' 'Orders were made concerning extension of time...