Federal Court of Australia

Comino v Watson Webb Pty Ltd (Costs) [2026] FCAFC 88

ORDERS

THE COURT NOTES:

The first appellant’s undertaking to the Court to consent to any request by the second respondent to license to any third party either of the designs the subject of the registered Australian designs numbered 201811005 and 201811810 following the re-registration of each design in the joint names of the first appellant and the second respondent pursuant to section 55 of the Designs Act 2003 (Cth).

THE COURT ORDERS THAT:

1.    The respondents have leave to rely upon the amended Notice of Contention annexed to their Outline of Submissions in Answer dated 24 February 2026.

2.    Declarations 4(a) and 5 made on 27 August 2025 in NSD1337/2021 be set aside.

3.    Orders 4 and 5 made on 27 August 2025 in NSD1337/2021 be set aside.

4.    Declaration 6 made on 27 August 2025 in NSD1337/2021 be varied to read:

The Second Applicant (Cimberio) and the First Respondent (Mr Comino) are jointly entitled to file an application (or applications) with the Designs Office in respect of the designs depicted in Australian Design No. 201811810 (810 Design) and Australian Design No. 201811005 (005 Design) pursuant to s 55 of the Designs Act 2003 (Cth), such applications having the same priority dates as the 810 Design and the 005 Design.

5.    The appeal otherwise be dismissed.

6.    The appellants pay 50% the respondents’ costs of the appeal to be paid in an amount as agreed or, failing agreement, as determined in accordance with the lump-sum costs procedure in the Court’s practice note GPN-COSTS.

7.    If the parties have not agreed upon an amount as contemplated by Order 6 within 4 weeks, the matter be referred to a Registrar for determination of those costs, including for further directions.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

THE COURT DECLARES THAT:

1.    Pursuant to section 77(1)(a) of the Designs Act 2003 (Cth), the threats made in the Foundry IP letter dated 28 February 2020 were unjustified.

THE COURT ORDERS THAT:

1.    The respondents have leave to rely upon the Notice of Contention dated 24 February 2026.

2.    The appeal be allowed.

3.    Order 5 made on 1 October 2025 in NSD1337/2021 (insofar as such order relates to the dismissal of paragraphs 14, 16 and 17 of the Originating Application dated 20 December 2021) be set aside.

4.    The issue of the appellants’ entitlement to damages and additional damages pursuant to section 77(1)(c) and section 77(1A) of the Designs Act 2003 (Cth) (including the quantum of any such damages) be remitted to the primary judge.

5.    The respondents pay the appellants’ costs of the appeal to be paid in an amount as agreed or, failing agreement, as determined in accordance with the lump-sum costs procedure in the Court’s practice note GPN-COSTS.

6.    If the parties have not agreed upon an amount as contemplated by Order 5 within 4 weeks, the matter be referred to a Registrar for determination of those costs, including for further directions.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ORDERS

THE COURT ORDERS THAT:

1.    The applicant pay the respondent’s costs of the application for leave to appeal to be paid in an amount as agreed or, failing agreement, as determined in accordance with the lump-sum costs procedure in the Court’s practice note GPN-COSTS.

2.    If the parties have not agreed upon an amount as contemplated by Order 1 within 4 weeks, the matter be referred to a Registrar for determination of those costs, including for further directions.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

1    We delivered the decision of Comino v Watson Webb Pty Ltd [2026] FCAFC 66 on 21 May 2026 (FCJ).

2    The parties agreed forms of order in relation to the substantive orders to be made, but disagreed as to the issues of costs including whether the costs order made by the primary judge should be set aside or otherwise be the subject of a lump-sum costs procedure.

3    The defined terms in our judgment will be adopted in these reasons.

4    Contrary to the submissions by AVI and Cimberio, we are not persuaded that a consolidated costs order in relation to the main appeal, the unjustified threats appeal and the application for leave to appeal from the costs judgment is appropriate. We consider it preferable to make separate orders for each proceeding because the costs orders for the unjustified threats appeal and the application for leave to appeal are straightforward, namely that costs follow the event. Accordingly, we will make orders that AVI and Cimberio have their costs of the unjustified threats appeal and of the application for leave to appeal. Further, these costs should be assessed on a lump-sum basis in accordance with usual practice.

5    As to the costs order in the main appeal, we will order that Mr Comino and Strongcast pay 50% of the costs of AVI and Cimberio. That is for the following reasons.

6    The Court has a broad discretion as to costs. This can even extend, in an appropriate case, to an order that a successful party pay the costs of the unsuccessful party. In the present case, the success and failure of each party was mixed. On the one hand, AVI and Cimberio were successful on a majority of issues. In particular, they were successful in respect of the breach of confidence issue (grounds 4-6), the additional damages issue (ground 3), and the ACL issue (in terms of impact on the orders below: FCJ [174]) (grounds 9 and 10). They also succeeded in respect of grounds of appeal that were not pressed. On the other hand, Mr Comino and Strongcast were successful in relation to the constructive trust issue (ground 8 and grounds 1-3 of the draft Amended Notice of Contention). We note also that Mr Comino and Strongcast’s success on the constructive trust issue was due in part to the undertaking which was offered during the appeal hearing.

7    Having regard to the outcomes on the issues (as outlined above) and the relative significance and inferentially the work attributable to each issue, and adopting a broad-brush approach, we consider it appropriate to make an order that Mr Comino and Strongcast pay 50% of AVI and Cimberio’s costs of the main appeal. These costs should be determined on a lump-sum basis.

8    As to the costs order made by the primary judge in NSD1337/2021 on 9 September 2025 (1337 costs order), we decline to set it aside and remit the issue of costs for further determination by the primary judge as sought by Mr Comino and Strongcast. The 1337 costs order was that Mr Comino and Strongcast pay AVI and Cimberio 75% of their costs on a party/party basis. Based on the result of the parties in the main appeal and the unjustified threats appeal, the overall outcome has not changed materially. In substance, the only variation is that (a) AVI and Cimberio have achieved success in respect of an additional cause of action, being unjustified threats of design infringement, and (b) Mr Comino has achieved limited success in respect of the form of relief in respect of breach of confidence.

9    As to the application that we vary the costs orders made by the primary judge so as to provide for the costs to be determined on a lump-sum basis, we consider this to be something that is capable of being raised with the primary judge, and we consider it preferable for it to be dealt with by his Honour.

Associate:

Dated:    23 June 2026