Skyy Spirits LLC v Lodestar Anstalt (No 2) [2015] FCA 575

Skyy Spirits LLC v Lodestar Anstalt (No 2) [2015] FCA 575

Because the applicant made an offer of compromise to which r 25.14(3) applied, the offer was not accepted, and the applicant obtained a more favourable judgment, the applicant was presumptively entitled to indemnity costs after the relevant time; the respondent did not establish exceptional circumstances warranting...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
12 June 2015
Procedural Posture
Appeal From Decision of Delegate of the Registrar Concerning Applications to Remove Trade Marks for Non Use / Costs and Consequential Orders After Appeal Allowed
Outcome
Appeal allowed; delegate's decision set aside; removal applications refused; applicant awarded costs including indemnity costs from 11.00 am on 29 May 2014; certificate of good faith use granted; security for costs to be released subject to a stay of that release pending any diligently pursued appeal.
Legal Topics
['indemnity Costs After Offer of Compromise' 'certificate of Good Faith Use of Trade Marks' 'stay Pending Appeal' 'release of Security for Costs' 'removal of Trade Marks for Non Use']
['costs' 'trade Marks' 'practice and Procedure'] ['indemnity Costs After Offer of Compromise' 'certificate of Good Faith Use of Trade Marks' 'stay Pending Appeal' 'release of Security for Costs' 'removal of Trade Marks for Non Use']

Source-derived case record

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Procedural Posture

Appeal From Decision of Delegate of the Registrar Concerning Applications to Remove Trade Marks for Non Use / Costs and Consequential Orders After Appeal Allowed

Legal Issues

  1. 1 ["Whether the respondent should pay the applicant's costs on an indemnity basis from 11.00 am on 29 May 2014 under r 25.14 of the Federal Court Rules 2011 (Cth)." 'Whether exceptional circumstances justified an order inconsistent with the costs consequences under r 25.14(3).' 'Whether the Court should certify under s 105 of the Trade Marks Act 1995 (Cth) that Australian Registered Trade Marks 1066646 WILD GEESE WINES and 1066650 WILD GEESE were used in good faith in Australia during the non-use period.' 'Whether the Court should stay some or all orders pending appeal.' 'Whether security for costs should be released to the applicant and whether that release should be stayed pending any appellate proceedings.']

Ratio Decidendi

Because the applicant made an offer of compromise to which r 25.14(3) applied, the offer was not accepted, and the applicant obtained a more favourable judgment, the applicant was presumptively entitled to indemnity costs after the relevant time; the respondent did not establish exceptional circumstances warranting any different order. The prior findings established good faith use of the marks during the non-use period, so s 105 required the requested certificate. A general stay was unnecessary to preserve the status quo, but release of security for costs should be stayed while any appellate remedies were diligently pursued because return of the security before appeal could cause...

Court Disposition

Appeal allowed; delegate's decision set aside; removal applications refused; applicant awarded costs including indemnity costs from 11.00 am on 29 May 2014; certificate of good faith use granted; security for costs to be released subject to a stay of that release pending any diligently pursued appeal.

Orders

  • ["Set aside the decision of the delegate of the Registrar made on 25 October 2013 in proceeding [2013] ATMO 85 and in lieu thereof order that the applicant's applications to remove Trade Marks Nos. 1066646 and 1066650 be refused." "The applicant pay the respondent's costs of the proceeding before the Registrar to be...