Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd (No 2) [2020] FCA 730

Dr August Wolff GmbH & Co. KG Arzneimittel v Combe International Ltd (No 2) [2020] FCA 730

The successful party is entitled to its costs on a party and party basis with no reduction for issues lost, unless issues took up significant time or were unreasonably contested. Where there is agreement on a lump-sum order, a fair proportion reflecting party and party costs and an additional discount for the summary process is appropriate. Out-of-pocket expenses for a represented party's attendance as instructing officer are not recoverable. The application of discounts at 25% to solicitor costs and 10% overall to costs and disbursements achieves a reasonable estimate in the circumstances.

Parties
Appellant/cross Respondent: Dr August Wolff GmbH & Co. KG Arzneimittel; Respondent/cross Appellant: Combe International Ltd
Jurisdiction
Australia
Judgment Date
29 May 2020
Procedural Posture
Appeal and Cross Appeal From Decision of Registrar of Trade Marks Delegate / Post Trial—costs Determination
Outcome
Orders made as to costs: respondent must pay appellant's costs (variously quantified) for distinct stages of the proceeding.
Legal Topics
Trade Marks, Costs, Lump Sum Costs Orders
Intellectual Property Trade Marks Costs Lump Sum Costs Orders

Case Brief

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Parties

Dr August Wolff GmbH & Co. KG Arzneimittel

Appellant/cross Respondent

Combe International Ltd

Respondent/cross Appellant

Procedural Posture

Appeal and Cross Appeal From Decision of Registrar of Trade Marks Delegate / Post Trial—costs Determination

Legal Issues

  1. 1 Whether costs should be reduced for issues lost by successful party
  2. 2 Appropriate method to determine lump-sum costs
  3. 3 Entitlement to costs associated with out-of-pocket expenses of represented party

Ratio Decidendi

The successful party is entitled to its costs on a party and party basis with no reduction for issues lost, unless issues took up significant time or were unreasonably contested. Where there is agreement on a lump-sum order, a fair proportion reflecting party and party costs and an additional discount for the summary process is appropriate. Out-of-pocket expenses for a represented party's attendance as instructing officer are not recoverable. The application of discounts at 25% to solicitor costs and 10% overall to costs and disbursements achieves a reasonable estimate in the circumstances.

Court Disposition

Orders made as to costs: respondent must pay appellant's costs (variously quantified) for distinct stages of the proceeding.

Orders

  • The respondent pay the appellant's costs of the proceeding before the delegate of the Registrar of Trade Marks, fixed in the amount of $3,485.00.
  • The respondent pay the appellant's costs of the principal proceeding on a party and party basis, fixed as a lump-sum pursuant to r 40.02(b) of the Federal Court Rules 2011 (Cth) in the amount of $315,000.