Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd (No 2) [2020] FCA 351

Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd (No 2) [2020] FCA 351

Declaratory relief as to invalidity of the trade mark was refused as it would have no practical effect beyond the order for rectification, costs are awarded to the wholly successful party (La Sirène) on a lump sum basis (quantum to be assessed by a Registrar), and no stay of the costs order is granted as Urban Alley did not show a sufficient risk of non-recovery.

Jurisdiction
Australia
Judgment Date
17 March 2020
Procedural Posture
Intellectual Property Trade Mark Dispute / Post Trial Judgment on Orders and Costs
Outcome
Application by Urban Alley Brewery Pty Ltd dismissed; rectification of Register to cancel Urban Ale mark; cross-claim otherwise dismissed; no declaration as to invalidity; costs awarded to La Sirène on a lump sum basis to be assessed by Registrar; order 2 (rectification) stayed pending appeal; stay of costs order...
Legal Topics
['trade Marks' 'rectification of Register' 'declaratory Relief' 'costs' 'offers of Compromise' 'stay of Orders']
['intellectual Property Law'] ['trade Marks' 'rectification of Register' 'declaratory Relief' 'costs' 'offers of Compromise' 'stay of Orders']

Case Brief

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Procedural Posture

Intellectual Property Trade Mark Dispute / Post Trial Judgment on Orders and Costs

Legal Issues

  1. 1 ['Whether declaratory relief as to invalidity of a trade mark should be granted in addition to rectification of the Register' 'Proper order as to costs and whether indemnity costs should be awarded following offers of compromise' 'Whether costs should be awarded on a lump sum basis and/or stayed pending appeal']

Ratio Decidendi

Declaratory relief as to invalidity of the trade mark was refused as it would have no practical effect beyond the order for rectification, costs are awarded to the wholly successful party (La Sirène) on a lump sum basis (quantum to be assessed by a Registrar), and no stay of the costs order is granted as Urban Alley did not show a sufficient risk of non-recovery.

Court Disposition

Application by Urban Alley Brewery Pty Ltd dismissed; rectification of Register to cancel Urban Ale mark; cross-claim otherwise dismissed; no declaration as to invalidity; costs awarded to La Sirène on a lump sum basis to be assessed by Registrar; order 2 (rectification) stayed pending appeal; stay of costs order...

Orders

  • ['The application be dismissed.' 'Pursuant to section 88(1)(a) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks be rectified by cancelling Australian Registered Trade Mark No. 1775261.' 'The cross-claim be otherwise dismissed.' 'Order 2 be stayed: (a) for 28 days; (b) if an appeal is lodged, until its...