FEDERAL COURT OF AUSTRALIA

Wilkshire v Registrar of Trade Marks (No 2) [2009] FCA 1505

PRACTICE AND PROCEDURE – Costs – indemnity costs – such costs not to be awarded as of course following summary dismissal – such costs awarded following application of principles informing the judicial discretion – unrepresented lay applicant not immune to order for indemnity costs – applicant on notice that proceedings had no reasonable chance of success – applicant in breach of prior contractual undertakings in consent orders not to threaten or initiate any form of action in relation to the respondent’s mark – applicant’s history of various unsubstantiated scandalous allegations against the Delegate and the respondent a factor – award of indemnity costs appropriate in the circumstances

Trade Marks Act 1995 (Cth) ss 62A, 88

Federal Court of Australia Act 1976 (Cth) s 31A

Federal Court Rules O 23 r 11

Wilkshire v Registrar of Trade Marks [2009] FCA 1222 considered

Re Wilcox:  Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727 applied

Colgate-Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225 applied

Ogawa v The University of Melbourne (No 2) [2004] FCA 1275 cited

Bhagat v Global Custodians Ltd [2002] FCA 223 cited  

Dal Pont, Law of Costs [16.39] ff (2^nd ed, 2009)

PETER JOHN WILKSHIRE v REGISTRAR OF TRADE MARKS and BOMBALA COUNCIL

ACD 6 of 2009

FINN J

15 DECEMBER 2009

ADELAIDE

THE COURT ORDERS THAT:

1.                  The applicant pay the second respondent’s costs on an indemnity costs basis (including its costs of the motions of 19 June 2009 and of 21 September 2009).

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

REASONS FOR JUDGMENT

1                     In Wilkshire v Registrar of Trade Marks [2009] FCA 1222 I ordered that the application made by Mr Wilkshire under s 88 of the Trade Marks Act 1995 (Cth) be summarily dismissed under s 31A of the Federal Court of Australia Act 1976 (Cth).  The second respondent, the Bombala Council, requested at the time I published my judgment that I vacate my proposed order as to costs as it wished to seek indemnity costs in the matter.

2                     The Council puts its claim for indemnity costs on two bases.  The first relies upon the discretion the Court has to depart from the usual principles informing the judicial discretion to award costs where the circumstances of the case warrant such a departure:  see Re Wilcox:  Ex parte Venture Industries Pty Ltd (1996) 141 ALR 727 at 732-734.  The second relies upon an offer of compromise being made under O 23 r 11 of the Federal Court Rules, it being contended that, the application having been dismissed summarily, Mr Wilkshire obtained a result less favourable than the terms of the offer of compromise dated 4 June 2009 which was made to him.  I can deal with the second of these grounds shortly. 

3                     In my view there is reason for a court to be slow to allow indemnity costs to be obtained under O 23 r 11 in circumstances in which the relevant order obtained (against which the Order 23 r 11 comparison is to be made) is an order for summary dismissal.  I do not consider it to be a policy of O 23 to provide a successful party as of course with the forensic advantage of indemnity costs when involved in proceedings with another whose case is hopeless and doomed to failure.  For my own part I would be reluctant to order indemnity costs pursuant to O 23 r 11 on a motion for summary dismissal unless an award of indemnity costs is itself warranted by the principles informing the judicial discretion to award such costs.  It is unnecessary for present purposes to enlarge upon those principles.  Some number of them were expounded by Sheppard J in Colgate-Palmolive Co v Cussons Pty Ltd (1993) 46 FCR 225 at 232-233;  see also Re Wilcox;  and see generally Dal Pont, Law of Costs [16.39] ff (2^nd ed, 2009). 

4                     The above is the approach I intend taking in this case. 

The Present Case

5                     It is not the case that because a person is a lay litigant he or she is for that reason immune to an order for indemnity costs:  see Ogawa v The University of Melbourne (No 2) [2004] FCA 1275 at [41]-[47];  Bhagat v Global Custodians Ltd [2002] FCA 223 at [55]-[60].  This said, there is an understandable reluctance to make such orders unless clear and compelling reasons for doing so are present notwithstanding the litigant’s lack of legal representation.

6                     I have set out at length in my reasons in the principal proceeding, the long history of the dispute between Mr Wilkshire and the Council.  They have near identical trade marks differentiated in appearance for practical purposes by the language on them.  They do relate to different classes of use.  For whatever reason, Mr Wilkshire is of the view that the Council’s registration of its mark was wrongly obtained.  When the Council applied for registration of its mark in 2003 he opposed that application unsuccessfully.  He then appealed to the Federal Court alleging, as he had before to the delegate, that those who had given evidence for the Council had colluded and fabricated evidence for the purposes of the application.  Mr Wilkshire had legal advice in making his application to the Federal Court.  His counsel provided advice that his appeal was unlikely to succeed.  Subsequently consent orders were made which, amongst other things, noted a contractual arrangement between Mr Wilkshire and the Council which was designed to end their dispute over the Council’s mark then and thereafter.  He in effect agreed not to initiate any form of action against the Council in relation to the use of the respondent’s mark. 

7                     Shortly before the consent orders, Mr Wilkshire filed five new trade mark applications all similar in character to his original marks.  The Council became aware of this and opposed their registration.  Before the opposition hearing Mr Wilkshire commenced the present proceeding.  The delegate, in refusing to register Mr Wilkshire’s five applications accepted that for s 62A of the Trade Marks Act the application was made in bad faith.

8                     As I have indicated, Mr Wilkshire’s application to this Court for cancellation of the mark under s 88 of the Act asserted that registration had been obtained as a result of fraud, false suggestion and misrepresentation by the Council and the delegate of the Registrar.  In ordering summary dismissal I did so on a variety of grounds.  The first was that he was not “a person aggrieved” for s 88 purposes.  The second was that in any event his application did not on its face enliven a ground upon which an order could be made under s 88.  The third was that in any event his contractual undertakings with the Council as part of the consent orders was a complete answer to his application. 

9                     In my reasons I observed that (at [41]) that:

Mr Wilkshire’s affidavits are replete with speculations about, and assertions and allegations of, impropriety, be it of the Delegate, the Council’s witnesses, or both parties’ lawyers.  While accepting he may be able to point to inconsistencies in evidence relating to events long prior to the preparation of the declarations of witnesses for the Council, or to the non-production of documents created over a decade earlier, he has provided no plausible justification at all for the regularly made and, at first flush, seemingly preposterous consequential allegations of impropriety.  I note in passing the standard of proof s 140 of the Evidence Act 1995 (Cth) provides for such allegations:  see Qantas Airways Ltd v Gama [2008] FCAFC 69 at [123]-[139]. 

10                  There clearly is evidence before me of a refusal by Mr Wilkshire to accept the Council’s entitlement to have and to use its mark.  There equally is evidence that notwithstanding he was an unrepresented litigant, save in his appeal to the Federal Court, he has received advice or information from a variety of sources which would have communicated to a reasonable person that the present proceeding had no reasonable chance of success.  I refer both to the decisions of the two delegates in the opposition hearings, albeit these were proceedings of a quasi summary nature, to his counsel’s advice before the Federal Court appeal and, as well, to the terms of the offer of compromise made to him by the Council to the extent that it attempted to explain why his cancellation application was bound to fail.  Importantly, that letter drew attention to the contractual undertakings to which I have referred.  It also indicated that his allegations of deliberate dishonesty by the Council’s witnesses required strong evidence for their proof and that his evidence fell well short of that. 

11                  Mr Wilkshire’s intent to prosecute his proceeding, such advice notwithstanding is manifest in his attempt to disavow his contractual undertaking not to initiate legal proceedings against the Council. 

12                  When one turns to ask the question whether there are unusual circumstances in this matter which would justify an award of indemnity costs in relation to the motion for summary dismissal, I am satisfied such is the case.  Notwithstanding the considerable latitude to be given to a lay litigant, I consider Mr Wilkshire has transgressed the borders of indulgence.  He has without restraint over quite some period of time made allegations of impropriety against all who appear to support the Council or whose actions or advice stand in the way of his securing his ends.  Further, as I indicated in the passage quoted above, he has provided no plausible justification at all for seemingly preposterous allegations of impropriety.  He has been unprepared to honour the undertaking he gave to the Council not to initiate litigation in respect of its use of its registered mark. 

13                  It is difficult to resist the conclusion that he will continue to vex the Council unless the Court’s disapproval of his conduct of litigation such as the present is brought home to him.  In the circumstances I consider that an award of indemnity costs is appropriate accordingly.

14                  Having dismissed Mr Wilkshire’s application, I will order that the he pay the second respondent’s costs on an indemnity costs basis (including its costs of the motions of 19 June 2009 and of 21 September 2009). 

Associate:        

Dated:         15 December 2009