FEDERAL COURT OF AUSTRALIA

UCP Gen Pharma AG v Mesoblast, Inc (No 2 ) [2012] FCA 500

THE COURT ORDERS THAT:

1.    The applicant’s application for costs with respect to the proceeding before the delegate of the Registrar of Trade Marks be dismissed.

2.    The moneys paid into court by the applicant in compliance with the orders made in this proceeding on 1 September 2011, together with any accrued interest, be released to the applicant.

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

REASONS FOR JUDGMENT

1    In the orders which I made in this proceeding on 15 March 2012, I gave the parties liberty to apply on the matter of costs: [2012] FCA 210. The successful applicant has now applied for its costs in the proceeding before the delegate of the Registrar of Trade Marks. In his decision made on 1 July 2010, the delegate awarded costs in favour of the respondent which, it will be recalled, was successful at that stage.

2    While the applicant has sought its costs of the proceeding before the delegate, the respondent has withheld its consent to the making of such an order. Neither has it assisted me with any submissions with respect to that application. Instead, in a short written submission filed on 17 April 2012, it has indicated that it “does not oppose” the variation of the delegate’s costs award sought by the applicant. The position adopted by the respondent has made it necessary for me to deal with the applicant’s costs application by adjudication.

3    The applicant has submitted that the court has a broad jurisdiction with respect to costs under s 43 of the Federal Court of Australia 1976 (Cth). That is true so far as it goes, but it does not assist the applicant in the present proceeding. Section 43 relates only to costs of a proceeding in the court, and the application before the delegate was not of such a character. I accept, however, that the court does have the power to vary the delegate’s costs award. That power arises under s 197 of the Trade Marks Act 1995 (Cth). In the exercise of that power, the question must be whether, in the light of the judgment which the court gave on 15 March 2012, it can now be said that the applicant ought to have succeeded before the delegate, such that it would have been awarded its costs – and the respondent would not have been awarded its costs – on the conventional basis.

4    The applicant referred me to many judgments in this court by way of successful appeals from the Registrar, in which the orders made included an order that the party successful in the court should also have its costs of the proceeding before the Registrar. However, in none of those cases was the nature of the power thus exercised, or the considerations which would be relevant to the exercise of the power, the subject of any specific treatment, or discussion, by the court. Rather, the judgments referred to were simply examples of orders which had been made in what appeared to be the normal course. That very circumstance provides support for the applicant’s submission that the awarding of costs in relation to a proceeding before the Registrar would normally be adjusted so as to follow the outcome of a successful appeal in the court. However, the present case has a particular feature which sets it apart from all of the judgments to which I have been referred.

5    That feature is that the proceeding in the court was decided substantially by reference to events which post-dated the evidence led before the delegate, even if they did not all post-date his decision. The delegate heard the parties’ cases on 15 April 2010, and the most recent event to which he referred in his reasons was the liquidation of Polartechnics Ltd. None of the facts to which I referred in my reasons of 15 March 2012 after the second sentence in paragraph 21 thereof was mentioned by the delegate; or, I would infer, was relied on by the applicant before the delegate.

6    Had the evidence remained the same before the court as it was before the delegate I would not have exercised my discretion in favour of the applicant. I did not hold, and I do not take the view, that the delegate was wrong to have disposed of the matter as he did, on the evidence which was before him. It was the more recent evidence called on behalf of the applicant that tipped the discretionary balance in its favour in this court.

7    For the above reasons, I am not disposed to interfere with the delegate’s costs award.

8    To the extent that the respondent incurred any costs in relation to the present application, because of its generally unhelpful approach to the subject I am not prepared to make a costs order in its favour.

9    The applicant also seeks an order that moneys paid into court in compliance with an order of 1 September 2011 that it provide security for the respondent’s costs of the proceeding, together with any accrued interest, be released to the applicant. There is no opposition to the making of such an order, and it is clearly appropriate in the circumstances. I shall include it in the orders made in disposition of the applicant’s application for costs before the delegate.

Associate:

Dated:    16 May 2012