Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 892

Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 892

Host and Mr Sullivan were the successful parties overall because the Bohemia marks were ordered to be revoked and BCP's other claims were dismissed. BCP's success on infringement was limited, assumed validity of marks that were revoked, and involved relatively trivial evidence and trial time, so no separate issue-based costs order was appropriate. Although the offers would have produced outcomes more favourable to BCP than the litigation result and BCP's engagement with them was criticised, Host and Mr Sullivan did not establish that rejection of either offer was unreasonable at the time, so indemnity costs were refused.

Jurisdiction
Australia
Judgment Date
13 June 2018
Procedural Posture
Costs in Trade Mark Infringement and Revocation Proceeding / Judgment on Costs and Final Orders After Primary Judgment
Outcome
The applicant was ordered to pay the respondents' costs of the application and cross-claim; indemnity costs were not ordered; the cross-claim was otherwise dismissed and the application was dismissed.
Legal Topics
['trade Mark Infringement' 'removal of Trade Marks From the Trade Marks Register' 'calderbank Offers' 'indemnity Costs' 'issue Based Costs' 'misleading or Deceptive Conduct']
['intellectual Property' 'trade Marks' 'costs'] ['trade Mark Infringement' 'removal of Trade Marks From the Trade Marks Register' 'calderbank Offers' 'indemnity Costs' 'issue Based Costs' 'misleading or Deceptive Conduct']

Case Brief

Summary, issues, holding and outcome

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Procedural Posture

Costs in Trade Mark Infringement and Revocation Proceeding / Judgment on Costs and Final Orders After Primary Judgment

Legal Issues

  1. 1 ['Whether Bohemia Crystal Pty Ltd should receive costs for limited success on trade mark infringement issues despite the Bohemia marks being ordered to be removed from the Trade Marks Register.' 'Whether Host Corporation Pty Ltd and Gavan Michael Sullivan were the successful parties and should receive costs of the application and cross-claim.' 'Whether Bohemia Crystal Pty Ltd unreasonably rejected the 31 March 2016 and 3 November 2016 offers so as to justify indemnity costs.']

Ratio Decidendi

Host and Mr Sullivan were the successful parties overall because the Bohemia marks were ordered to be revoked and BCP's other claims were dismissed. BCP's success on infringement was limited, assumed validity of marks that were revoked, and involved relatively trivial evidence and trial time, so no separate issue-based costs order was appropriate. Although the offers would have produced outcomes more favourable to BCP than the litigation result and BCP's engagement with them was criticised, Host and Mr Sullivan did not establish that rejection of either offer was unreasonable at the time, so indemnity costs were refused.

Court Disposition

The applicant was ordered to pay the respondents' costs of the application and cross-claim; indemnity costs were not ordered; the cross-claim was otherwise dismissed and the application was dismissed.

Orders

  • ['The applicant pay the respondents costs in relation to the application and the cross-claim.' 'The cross-claim be otherwise dismissed.' 'The application be dismissed.']