FEDERAL COURT OF AUSTRALIA

Beling v Sixty International S.A. (No 2) [2015] FCA 355

THE COURT ORDERS THAT:

1.    The costs ordered to be paid by the respondent to the applicant, pursuant to the decision of this Court dated 20 March 2015, be a lump sum in the amount of $11,537.

2.    The costs referred to in paragraph 1 are to be paid to the applicant on or before 15 May 2015.

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

REASONS FOR JUDGMENT

1    On 20 March 2015 the Court made orders setting aside the decision of the delegate of the Registrar of Trade Marks made on 16 October 2014 insofar as the delegate declined, at [37] of his decision, to make an award of costs to the applicant. The question of costs was remitted to the Registrar to be determined in accordance with the Court’s reasons and s 221 of the Trade Marks Act 1995 (Cth). The parties were given an opportunity to make written submissions and file evidence in relation to the making of a lump sum order for costs in favour of the applicant. These reasons should be read in conjunction with my reasons given on 20 March 2015: Beling v Sixty International S.A. [2015] FCA 250.

2    The applicant filed submissions and an affidavit. In the affidavit he deposed to having made two offers to settle the Federal Court proceeding, and sought to invoke the principles set out in Calderbank v Calderbank [1975] 3 All ER 333. The applicant’s first offer related to the proceedings in this Court and before the Registrar. The second offer related only to the proceeding in this Court. He also deposed to the making of an offer of settlement by the respondent (relating to both the proceedings in this Court and before the Registrar), and annexed the letter containing that offer.

3    Annexed to his affidavit were two bills of costs drawn by the applicant in relation to this proceeding, on and from 12 January 2015 in accordance with the findings I made on 20 March 2015: Beling v Sixty International S.A. [2015] FCA 250 at [89]. The first bill sets out what the applicant submits are his costs of the proceeding “on an ordinary basis according to the scale” set out in Sch 3 to the Federal Court Rules 2011 (Cth). This bill totals $39,897.80. The second bill sets out what the applicant claims are his costs “on an indemnity basis according to what I would have reasonably and necessarily charged a client had I been acting for a client instead of acting on behalf of myself.” This bill totals $50,348.67. The applicant puts his submissions in relation to lump sum costs in the alternative, based on one or the other of these bills.

4    The respondent filed submissions, but no evidence. Aside from a general assertion that both bills were “excessive”, it engaged in no debate about the contents of either bill of costs. Rather it submitted the Court should defer consideration of the making of any costs orders until after the Registrar had dealt with the question of costs pursuant to s 221 of the Act. Its submissions about this proposed deferral of the Court’s decision then caused it to submit that it would be “premature and a waste of time and cost to engage a costs consultant” to analyse the applicant’s claims as set out in his affidavit and annexures. I take this to mean the respondent considers it would be a waste of its time and cost. It also made a bare assertion that “the costs awarded to the Applicant in the Appeal should be a nominal sum only”, without identifying what that nominal sum should be.

5    I reject the respondent’s submissions that this Court should postpone its decision on costs in this proceeding pending a decision by the Registrar under s 221 of the Act. The exercise of this Court’s discretion under s 43 of the Federal Court of Australia Act 1976 (Cth) is a separate function entirely from the exercise of the Registrar’s discretion under s 221. The two discretions concern the entitlement, if any, to costs in different statutory jurisdictions under different legislative regimes. The applicant is entitled to have his costs of this proceeding assessed in accordance with s 43, and to have that occur in a timely manner. How the Registrar decides to exercise her discretion under s 221, on what evidence, after what processes to afford procedural fairness and in what time period, are matters for the Registrar.

6    I also reject the respondent’s submission that the applicant should be awarded only “nominal” costs. In circumstances where the Court has already determined it is appropriate that there be an order for lump sum costs in favour of the applicant, to take that course would be to ignore the current law about the entitlement of solicitor litigants to their professional costs.

7    There remain two issues to determine. First, the effect of the various offers made by each party to the other. Second, and subject to that issue, the amount of lump sum costs which should be ordered in favour of the applicant.

The various offers made

8    This proceeding was commenced on 23 October 2014. On 9 November 2014 the applicant wrote to Mr Morcom, the patent and trade marks attorney for the respondent. Mr Morcom was the representative with whom the applicant had consistently dealt in relation to the trade mark proceedings. In my reasons of 20 March 2015, I made some findings about Mr Morcom’s role, or what I thought was the lack of it, in relation to this proceeding. In light of the evidence now adduced by the applicant, and not contradicted by the respondent, I do not consider this Court was given a completely accurate description by Mr Morcom of the role he played in this proceeding on behalf of the respondent. When he told the Court at the directions hearing on 21 November 2014 that he had “no instructions” from the respondent and could not represent it, he apparently did continue to receive instructions from the respondent and to represent it, certainly insofar as he dealt with Mr Beling on its behalf, and in the context of this very proceeding.

9    It now appears, as I set out below, that in his dealings with the applicant, Mr Morcom purported to represent the respondent in this proceeding, and to have instructions from the respondent in relation to the conduct of this proceeding.

10    The 9 November 2014 offer was sent at a time when Mr Morcom was still named as a respondent to the proceeding, and so the letter appears to be addressed to Mr Morcom in a dual capacity. The letter states:

I refer to the above matter.

1.    I offer to settle the above matter if you or your client or you and your client pay me the sum of $25,000 (twenty-five thousand dollars) which sum is calculated as a proportion of my full professional costs as a solicitor acting on my own behalf in proceedings before IP Australia and the Federal Court of Australia to date in full and final satisfaction of my claim as to costs.

2.    As part of agreeing to term (1), I agree to forgo interest (compound), calculated at 10 percent or another sum determined by the Court to be paid on the total of the judgment sum, from 10am on Monday 15th December 2014 to the date of judgment by either the Federal Court of Australia or, if necessary, the High Court of Australia.

3.    Further, as part of agreeing to term (1), I agree to forgo my costs incurred in litigating the Federal Court of Australia hearing and, if necessary, the High Court of Australia hearing.

4.    If you or your client do not accept this offer, I advise I will be seeking interest (compound), calculated at 10 percent or another reasonable sum determined by Court to be paid on the total of the judgment sum, from 10 am on Monday 15th December 2014 to the date of judgment by either the Federal Court of Australia or, if necessary, the High Court of Australia.

The reasons for this offer are that I was successful on the merits against your client and, as a solicitor litigant, I am entitled to my full professional costs pursuant to the High Court’s ruling in Guss v Veenhuizen (No 2) (1976) 136 CLR 47 and Cachia v Hanes [1994] HCA 14; (1994) 179 403 [sic]. Further, you and your client unreasonably commenced and prosecuted proceedings against me for the reasons particularized in my Notice of Appeal in the present proceeding.

I advise I will be relying on this offer at the above hearing and, if I am not awarded my full professional costs as a solicitor acting on my own behalf before the Court including my costs incurred up to the hearing, in an appeal to the Full Court of the Federal Court of Australia and to the High Court of Australia.

This offer is made pursuant to the principles of, and which may be extrapolated from, Calderbank v Calderbank and is open to acceptance up to and until 10:00 am on Monday 15th December 2014.

I thank you for your attention and await your response.

11    There are parts of this letter which are somewhat contradictory, and parts which are wrong, such as the claim for interest. The first paragraph, however, is clear. It purports to cover the settlement not only of this proceeding but of what the applicant saw (correctly as it turned out) as the still outstanding costs dispute before the Registrar.

12    Neither Mr Morcom nor the respondent replied to this letter or to the offer. However on 14 November 2014 the applicant had a telephone conversation with Mr Morcom for approximately an hour. The applicant deposes to the content of the conversation:

On 14 November 2014 I had a telephone conversation with Mr. Morcom of approximately one hour in an effort to resolve my dispute with the respondent. I explained to Mr. Morcom the legal principles underpinning my appeal and stated that the relevant law was clear with respect to a self-represented solicitor-litigant’s right to his or her professional costs when successful on the merits. I mentioned the cases of Guss v Veenhuizen [No. 2] (1976) 136 CLR 47, Cachia v Hanes (1994) 179 CLR 403, and Freehills, in the matter of New Tel Limited (in liq) ACN 009 068 955 (No 4) [2008] FCA 1085. Mr. Morcom wrote down the citation to Freehills’ case, which I dictated to him. I explained to Mr. Morcom the unreasonable conduct of the respondent during the proceedings before the Registrar of Trade Marks, including the fact that he advised me the respondent’s mark was “Energy Men” and that the respondent, in my opinion, failed to file adequate evidence in support and failed to file any evidence in reply despite seeking at least two extensions of time to file such evidence. Without making admissions to the respondent’s conduct, Mr. Morcom asked me essentially how much it would take for me to “go away.” I advised Mr. Morcom that I just sought my reasonable and necessary costs above the scale in Schedule 8 of the Trade Mark Regulations in view of the Respondent’s unreasonable conduct in commencing and prosecuting the opposition. Mr. Morcom advised me that he believed that a great deal of the work I had undertaken was unnecessary and could not be claimed. I replied that I wanted the calculation of my costs to be fair and reasonable and that I was happy for the Law Institute of Victoria’s costing service to assess the costs which I had reasonably and necessarily incurred. Mr. Morcom stated that he would consider the offer.

13    On 20 November 2014, Mr Morcom wrote to the applicant, on the letterhead of Morcom Pernat, Patent and Trade Mark Attorneys. The letter stated:

I refer to our telephone conversation on Friday 14 November 2014 and in particular to the aspect of that conversation concerning the quantum of any costs that could have been awarded by the Registrar’s delegate in the decision dated 16 October 2014.

I will leave aside at this time any consideration of the merit or otherwise of the refusal of the Registrar’s delegate to make an award of costs in favour of the applicant. However I wish to ensure you understand the quantum of such costs is not a matter for determination by some official of a Law Institute as you proposed during the abovementioned phone conversation.

The quantum and its means of determination are instead set by Federal Statute and in particular Schedule 8 of the Commonwealth Trade Mark Regulations 1995 and its associated subregulation 21.13(3). Enclosed for your reference are a copy of the Schedule 8 and Regulation 21.13 plus Section 105 of the Trade Marks Act referred to in Reg. 21.13.

By my calculation, according to Schedule 8 the costs that would have been taxed, had the delegate awarded costs in your favour, would have been as follows:

Item 4:         Notice of intention to defend             $400

Item 6:         Receiving and perusing a notice of opposition     $130

Item 8:         Receiving and perusing evidence in support     $300

Item 9:         Evidence in Answer                 $700

Item 13:     Preparation of case for hearing             $525

Total $2,055

With the aim of putting paid to the proceedings, we are accordingly prepared to offer a one-off payment of three thousand dollars ($3,000) if you agree for your Appeal to the Federal Court of Australia to be dismissed with no order as to costs.

14    It appears from the applicant’s affidavit that Mr Morcom informed the applicant he had obtained advice from senior counsel in relation to the applicant’s claim for costs. I infer from that evidence (which the respondent did not contradict), together with the content of the letter, that counsel’s advice had been sought by Mr Morcom on behalf of the respondent, and in relation to this proceeding.

15    In making this offer, Mr Morcom is clearly purporting to act on behalf of the respondent, not only in relation to the proceeding before the Registrar, but also in relation to the proceeding in this Court. The letter is headed “Re: VID626 of 2014, Federal Court of Australia, Beling v Sixty International S.A. and Another”, and expressly states the offer is put “[w]ith the aim of putting paid to the proceedings, we are accordingly prepared to offer …”.

16    The applicant did not accept this offer. Instead, on 24 November 2014 he wrote again to Mr Morcom. His letter bore a heading referring to the proceeding in this Court. In the first sentence, he also referred to “the Court’s decision dated 21 November 2014”, which I take to be a reference to my decision to remove Mr Morcom as a party to the proceeding and to give directions preparing the matter for trial.

17    Mr Beling stated:

1.    Leaving aside the merits of my claim for costs in the proceedings before the Registrar of Trade Marks, I offer to settle the above matter if your client agrees to pay me the sum of $3,000 (three thousand dollars) which sum is calculated as a proportion of my full professional costs as a solicitor acting on my own behalf in proceedings before the Federal Court of Australia to date in full and final satisfaction of my claim for costs before the Federal Court of Australia only (excluding my claim for costs in the proceeding before the Registrar of Trade Marks) if and only if your client consents to the Court making a declaration to the effect that the Registrar of Trade Marks must hear and determine the issue of costs in the opposition proceeding relating to Trade Mark No. 1441489 on the merits.

2.    As part of agreeing to term (1), I agree to forgo interest (compound), calculated at 10 percent or another sum determined by the Court to be paid on the total of the judgment sum, from 10am on Monday 29th December 2014 to the date of judgment by either the Federal Court of Australia or, if necessary, the High Court of Australia.

3.    Further, as part of agreeing to term (1), I agree to forgo the remainder of my costs incurred in litigating the above Federal Court of Australia hearing and, if necessary, the High Court of Australia hearing.

4.    If your client does not accept this offer, I advise I will be seeking interest (compound), calculated at 10 percent or another reasonable sum determined by Court to be paid on the total of the judgment sum, from 10am on Monday 29th December 2014 to the date of judgment by either the Federal Court of Australia or, if necessary, the High Court of Australia.

The reason for this offer is that Her Honour Justice Mortimer has already provided a preliminary view in open Court on 21 November 2014 that the Registrar of Trade Marks in his decision on the written record dated 16 October 2014 failed to sufficiently deal with the issue of costs and that the Court would likely issue a declaration requiring the Registrar of Trade Marks to deal with the question of costs. I also refer you to the Registrar’s of Trade Marks’ [sic] decision on the written record dated 16 October 2014 which does not provide sufficient reasons for its decision on the question of costs. I also note that despite proper service of the Notice of Appeal (which was conceded by you in open Court), your client failed to appear, by itself or through legal representatives, at the Directions Hearing on 21 November 2014, which caused me to incur unnecessary expenses.

I advise I will be relying on this offer at the above Federal Court of Australia hearing and, if I am not awarded my full professional costs as a solicitor acting on my own behalf before the Court including my costs incurred up to the hearing, in an appeal to the Full Court of the Federal Court of Australia and to the High Court of Australia.

This offer is made pursuant to the principles of, and which may be extrapolated from, Calderbank v Calderbank and is open to acceptance up to and until 10:00 am on Monday 29th December 2014.

I thank you for your attention and await your response.

(Emphasis in original.)

18    Mr Beling misstates, perhaps through a misunderstanding, my remarks made in the directions hearing on 21 November 2014. I expressed no “preliminary view” of the kind attributed to me. Rather, on that occasion, I expressed only a strong preliminary view that, if the application were to succeed, the matter should be remitted for the question of costs to be determined by the Registrar.

19    Notwithstanding the misstatement in the applicant’s letter, there is a critical difference between this offer and the first offer made by the applicant. As the applicant deposes, he had listened to and considered my observations made during the directions hearing on 21 November, to the effect that even if he were successful, the most likely order would be an order remitting the costs issue for determination by the Registrar, rather than this Court entering into the question of whether costs should be ordered under s 221 of the Act and, if so, in what amount.

20    As a consequence of listening to those remarks, as he deposes in paragraph 9 of his affidavit, he made this second offer on quite different terms. The sum of $3,000 is referable only to his costs in this proceeding.

21    Neither the respondent nor Mr Morcom replied to this offer, although it was, as I find below, a reasonable one.

22    The conduct of the respondent and Mr Morcom in this proceeding has been unsatisfactory. Despite having had Mr Morcom acting for it in this proceeding by way of making offers to settle the proceeding to the applicant, the respondent refused to take any of the steps required by the Federal Court Rules to appear and participate in the proceeding until the day before the final hearing. Yet now, having ignored the Court’s Rules and procedures, the respondent seeks to rely on what it and its representative Mr Morcom did by way of communication with the applicant in order to advance its own interests in not paying professional costs to Mr Beling, although he has been successful.

The relevance of the offers to the ASSESSMENT of costs

23    Where an offer to settle a proceeding is made, and the party to whom it is made refuses the offer and then obtains a less favourable outcome at trial, the principles in Calderbank entitle, but do not require, the Court to order that party to pay the offeror’s costs on an indemnity basis from the date the offer expires or was refused: Black v Lipovac (1998) 217 ALR 386; [1998] FCA 699 at [217]-[218] per Miles, Heerey and Madgwick JJ.

24    A key factor is whether the moving party can prove that the refusal of the offer was unreasonable in the circumstances: MGICA (1992) Pty Ltd v Kenny & Good Pty Ltd (No 2) (1996) 70 FCR 236 at 239 per Lindgren J. The “circumstances” which must be examined are those existing at the time of the rejection of or failure to accept the offer: Kiefel v State of Victoria [2014] FCA 411 at [38] per Tracey J.

25    In determining whether it was unreasonable for the offeree to refuse the offer, Warren CJ, Maxwell P and Harper AJA in Hazeldene’s Chicken Farm Pty Ltd v Victorian Workcover Authority (No 2) (2005) 13 VR 435; [2005] VSCA 298 at [25] set out a number of factors which ordinarily would be relevant to consider:

(a)     the stage of the proceeding at which the offer was received;

(b)     the time allowed to the offeree to consider the offer;

(c)     the extent of the compromise offered;

(d)     the offeree’s prospects of success, assessed as at the date of the offer;

(e)     the clarity with which the terms of the offer were expressed; and

(f)     whether the offer foreshadowed an application for an indemnity costs in the event of the offeree’s rejecting it.

26    I consider it was not unreasonable for the applicant to reject the respondent’s offer made on 20 November 2014. At that time, the respondent had not even deigned to provide the Court, or serve on the applicant, a notice of address for service as required by r 5.02. It had given no formal indication that it intended to participate in the proceeding against it.

27    The offer did not contain any admission that the decision of the Registrar was affected by an error of law. Instead, it required the applicant to consent to his application being dismissed. It was quite reasonable, in my opinion, for the applicant to hold the belief to which he deposes in paragraph 7 of his affidavit, namely:

I rejected Mr Morcom’s Calderbank offer dated 20 November 2014 because the law in respect of the issues in dispute in the current proceeding was clearly established and I believed the respondent had no reasonable prospects of success in resisting the appeal.

28    It was also reasonable for the applicant to hold the belief that he should have an opportunity to make submissions before the Registrar on the question of costs, including whether there were circumstances justifying an order for costs on a basis above scale. Whether or not he would have been (or, will be) successful in those submissions is not to the point. On 20 November 2014, it was reasonable for him to consider he was entitled in accordance with the law to that opportunity. In substance, I found at [73] of my reasons for judgment that he is so entitled.

29    Further, and in contrast to my view of the applicant’s position, in my opinion it was unreasonable for the respondent to refuse the applicant’s offer made on 24 November 2014, in particular given the respondent’s eventual concession that the solicitor litigant exception did apply to the Registrar’s costs power under s 221 of the Act. The respondent chose not to assume any role in the proceeding until the day before the final hearing. In a timing sense, and somewhat ironically, its concession was made almost immediately upon the respondent taking an active part in the proceeding. The respondent has not obtained a more favourable outcome than the one offered in the applicant’s correspondence.

30    Unfortunately for the applicant however, I do not see how he can recover on what is usually described as an “indemnity” basis. That basis applies for the purpose of ensuring, as much as is reasonably possible, that a party is not out of pocket at all in relation to the legal costs the party has contracted to pay the party’s legal representatives. The contractual obligation is the reason for the use of the term “indemnity”: see, for example, Shaw v Yarranova [2011] VSCA 55 at [8], [19] and [20]. In Stobbart v Mocnaj [1999] WASC 252, Parker J said (at [8]):

An order for costs to be taxed on an indemnity basis, whether under the inherent disciplinary jurisdiction or in respect of party and party costs, is in my view necessarily an order that the paying party should indemnify the other party to the extent of that other party’s legal liability to pay costs. Should that party, in fact, have no legal liability to pay costs to the solicitor who acted on the party’s behalf or, if there is for example some statutory limitation on the amount of the liability of that party for costs to its solicitor, this is material to the extent of the indemnity contemplated by the order. If there is no legal liability at all, there is nothing to indemnify. If there is a statutory limit to the liability, that is the extent of the indemnity. It is sufficient to refer to the decision of Poole ACJ in Backhouse v Judd [1925] SASR 395 at 396-398, which decision was affirmed by the Full Court, its decision being reported in the same report at 400-404. See also the decision in Brown v Julius, ex parte Julius (No 2) (1959) QWN 37 which relied upon the decision in Gundry v Sainsbury [1910] 1 KB 645. Hence, in my view, if a party has not incurred costs, in the normal sense of incurred a binding legal liability to pay costs, there would be nothing to indemnify. Gratuitous payments could not sensibly be made the subject of an obligation to indemnify in this context.

31    Here, there is no contractual arrangement, and therefore no liability for professional fees. Mr Beling represented himself. What the solicitor litigant exception allows for is that he be recompensed for his own time based on ordinary costs principles concerning what is reasonable and appropriate for the proper conduct of the proceeding. There is no question of there being any shortfall between what the applicant recovers from another party and what he has contracted to pay to a legal representative.

32    The solicitor litigant exception is justified, as I explained in my 20 March 2015 reasons for judgment at [67]-[68], by the existence of a scale of costs representing an objective measure to be applied to the expenditure of time and skill by the solicitor litigant. In my opinion Mr Beling should be able to recover in this Court what he is entitled to in accordance with the applicable scale under the Federal Court Rules, applied according to the principles I set out at [34]-[43] below.

33    I turn then to the question of the amount which should be ordered by way of a lump sum.

Principles concerning lump sum costs orders

34    There are few reported cases about the principles to be applied in calculating costs orders on a lump sum basis. The purpose of making a lump sum costs order is to “avoid the expense, delay and aggravation involved in protracted litigation arising out of taxation”: Beach Petroleum NL v Johnson (No 2) (1995) 57 FCR 119 at 120 per von Doussa J, citing Leary v Leary [1987] 1 All ER 261 at 265.

35    In exercising the discretion to fix a lump sum, Mansfield J in Charlick Trading Pty Ltd v Australian National Railways Commission [2001] FCA 629 at [6], citing Auspine Ltd v Australian Newsprint Mills Ltd (1999) 93 FCR 1; [1999] FCA 673 at [12], considered the approach required for a taxation of costs as set out in the former O 62 r 19 of the Federal Court Rules 1979 (Cth).

36    The equivalent of this rule is now r 40.30, which provides:

40.30    Costs not to be allowed on taxation

A taxing officer is not to allow:

(a)     barrister’s fees on a hearing if the barrister:

(i)     was not present at the hearing for a substantial amount of the relevant period; or

(ii)     did not give substantial assistance in the conduct of the proceeding; and

(b)     costs that in the opinion of the taxing officer have been incurred or increased:

(i)     through impropriety, unreasonableness or negligence; or

(ii)     through overcaution; or

(iii)     by agreeing:

(A)     special fees to counsel; or

(B)     special charges or expenses to witnesses or other persons; or

(iv)     by other unnecessary expense.

37    There is no equivalent in the current Rules of the part of O 62 r 19 on which Mansfield J placed greatest reliance in Charlick: namely, the part which positively required a taxing officer to allow such costs and expenses as appear “necessary or proper for the attainment of justice or for maintaining or defending the rights of a party”.

38    Nevertheless, the restraint to be shown on taxation is well established across all jurisdictions, without especial reliance on the form of words in a given rule of court. The approach was articulated by Barwick CJ in Stanley v Phillips (1966) 115 CLR 470 at 478, where his Honour said:

The emphasis throughout is upon obtaining an adequate presentation to enable justice to be done: it is not upon the propriety of the steps taken by a litigant to ensure the maximum of success in his own cause. That of course he may do but not, in my opinion, at his opponent’s expense.

39    Another way to express the outer limits is that those who indulge in the “luxuries of litigation”, rather than the necessities, should pay for those luxuries: Donohoe v Britz (No 2) (1904) 1 CLR 662 at 666 per Barton J. Reasonable minds may differ as to what constitutes a “luxury”. A pertinent example might be the amount of time a solicitor litigant spends in preparation for hearing. The solicitor litigant may devote as much time to preparation as she or he chooses. If the time exceeds what is, in context, reasonable and appropriate, that will be time spent at the solicitor litigant’s own expense.

40    Section 37M(3) requires that the costs discretion, like other powers and functions in the Federal Court Act, must also now be exercised taking into account the overarching purpose of the civil practice and procedure provisions, which is (as set out at s 37M(1)):

to facilitate the just resolution of disputes:

(a)    according to law; and

(b)    as quickly, inexpensively and efficiently as possible.

41    I consider that, in principle, what might once have been seen as a “reasonable” cost might now not so readily be seen as such, when the terms of s 37M are applied. The refinements which s 37M may have brought about, however, do not affect my approach to the costs claimed by Mr Beling.

42    Overall, in my opinion it is a sound guide to consider what was required to be done in order to ensure, in the context of this case, that the applicant’s evidence and arguments in the proceeding were properly presented, and that the proceeding was conducted effectively and efficiently to advance the claim he sought to make.

43    It has been held that in the case of a solicitor litigant, the person can claim to be remunerated for her or his professional services so far as they are not rendered unnecessary or impossible, as for instance, in regard to consultations with herself or himself: Buckland v Watts [1970] 1 QB 27 at 35 per Danckwerts LJ. There his Lordship described as “well settled” the principle that “a solicitor who acts in person for himself can claim to be remunerated for his professional services in so far as they are not rendered unnecessary or impossible—as, for instance, with regard to consultations with himself and that kind of thing …”. A similar point about the limits of what can be recovered was made in Cachia v Hanes (1999) 179 CLR 403 at 411-413 per Mason CJ, Brennan, Deane, Dawson and McHugh JJ, considering London Scottish Benefit Society v Chorley (1884) 13 QBD 872.

The bills of costs

44    Each bill of costs submitted by Mr Beling begins on 13 January 2015, and ends on 30 March 2015, on the day before Mr Beling filed his submissions and affidavit on costs. That time period is in accordance with the Court’s orders and I am satisfied the bills both cover the correct time period.

45    When examined, it is apparent that the differences between the two bills of costs submitted by Mr Beling lie largely in the hourly rate, or the sum applied, to each item, rather than there being a difference between the actual items itemised in the bill. This applies to both large and small items. I note no disbursements are claimed in either bill.

46    To give some examples:

1.    On 27 January 2015 there is an entry for “[r]eading correspondence from Court to Mr. Morcom”. On the first bill, this item is costed at $16.00. On the second bill it is costed at $21.60.

2.    On 20 March 2015 there is an entry for “[l]egal research for written submissions on costs (2 hrs, 10 mins)”. On the first bill this is costed at $1,256.67. On the second bill this is costed at $1,695.50.

3.    On 4 February 2015, there is an entry for “[p]reparation of case for hearing, including reading case law and statutes; reading file in current appeal; reading file in IP Australia opposition in respect of Trade Mark no. 1441489; reading of documents and cases relating to admission to practice law [sic] in the state of Victoria and before the Federal Court of Australia (5 hrs 35 mins)”. On the first bill this is costed at $3,238.33. On the second bill it is costed at $4,375.75.

47    In both the second and third examples, which I use because they specified the time spent on the task, the hourly rate on the first bill is $580 (consistent with the maximum allowable rate prescribed in item 1.1 of Sch 3 to the Rules), whereas the hourly rate in the second bill is $783. This is consistent with Mr Beling’s statement, in his affidavit, that in preparing the second bill he has added 35% to the relevant scale costs in Sch 3.

48    In his affidavit, Mr Beling states he has claimed the maximum rate per 6 minute unit under Sch 3 to the Rules for three reasons:

a.     the novel question of law involved in the proceeding (whether a self-represented solicitor-litigant is entitled to his professional costs or indemnity costs in proceedings before the Registrar of Trade Marks under the Trade Marks Act 1995 and the Trade Marks Regulations 1995);

b.     the complexity of the issues involved (conflicting authorities on the issue of     costs at both state and federal level, and on the basis of statutory law and     common law); and

c.     my skill and experience- I am a principal of my own law firm who has     practised law for approximately 13 years. In addition, I possess the following     academic qualifications: a Bachelor of Arts with Honours in psychology, a     Masters of Arts by Research, and a Doctor of Philosophy.

49    As at January to March 2015, the maximum rate per 6 minute unit specified in item 1.1 of Sch 3 is $58 where the skill of a lawyer is required, $22 where the task can be performed by a law graduate (item 1.2) and $11 where it can be performed by a paralegal (item 1.3).

50    It appears that Mr Beling has generally calculated professional costs for his time spent on research, preparation of submissions and preparation for hearing at the maximum lawyer’s rate (on the first bill) or well above it (on the second bill).

51    I am not satisfied any of the work performed by Mr Beling should be costed at rates in excess of those specified in item 1.1 of Sch 3. Mr Beling gives no evidence as to the usual hourly rate he in fact charges his clients when acting as lawyer. In the absence of evidence to prove the fact, I am not satisfied it would be as high as $580 (being the maximum rate under item 1.1 and the rate generally applied in the first bill), and certainly not as high as $783 (being the rate generally applied in the second bill).

52    In terms of the work required to be done by a lawyer, I am satisfied that an hourly rate of $400 is reasonable in the context of this proceeding, which is $40 per 6 minute unit.

53    Items listed as reading correspondence, or preparing correspondence, appear to have been costed in accordance with Sch 3 and seem neither excessive nor unreasonable.

54    Given that the function to be performed in fixing a lump sum for costs is a “broader brush” approach than taxation, the approach I have taken is as follows.

55    First, I have grouped together the items which I consider have broadly been costed in accordance with Sch 3, and allow all of those as set out in Mr Beling’s first bill. These relate mostly to sending and reading of correspondence.

56    That figure totals $772.

57    Next, there are items where I consider the amount claimed is excessive. In some cases this is because the work performed was not in my opinion required to prepare the proceeding and advance relevant arguments. An example is the multiple charges for reading the files held by IP Australia. Those files are not and have never been relevant to the issues on this appeal, and certainly not so as to justify fees to read them on multiple occasions. In other cases this is because there are multiple fees charged on multiple occasions for the same work and which, even when examined at a global level, seem excessive. Examples are the multiple entries described as “preparation of case for hearing”, which begin on 25 January 2015 and continue through to 4 February 2015, and total well over $14,000. This is an excessive amount for preparation in the context of this proceeding. A lawyer with Mr Beling’s experience should not have spent much more than a day preparing for hearing, especially given the respondent had not filed and served any written submissions and so there were, in that sense, no arguments against which to prepare. Even at the maximum hourly rate of $580 and assuming an eight-hour day, that totals $4,640. Using what I consider a more reasonable hourly rate of $400, that allows for just over 11½ hours of preparation. In my opinion, $4,640 is a sufficient amount to award for preparation for hearing.

58    Mr Beling has costed the day of hearing on 5 February 2015 at $4,833.33. I consider that excessive on the basis that Mr Beling could have retained capable junior counsel for a much lower daily fee. I do not see why Mr Beling as a solicitor litigant should be entitled to a fee greater than capable junior counsel. The costs argument was a straightforward, if slightly novel, point of statutory construction. The underlying law in relation to solicitor litigants is clear on current authority, as the respondent’s concession demonstrates. I consider $3,000 is a reasonable fee for the hearing.

59    Mr Beling has charged $290 for taking judgment. This is reasonable. He has charged $435 for reading the Court’s decision. This is reasonable, and necessary given there were submissions to make on costs.

60    There is then a series of items relating to the preparation of written submissions on costs, and the affidavit on costs. Written submissions were limited by order to two pages. Mr Beling has sought a total of $7,105 for research, preparation of written submissions and the affidavit. I consider this excessive. The affidavit is short – four pages and 19 paragraphs. It is general in nature and Mr Beling is well familiar with the events and matters it recounts. His written submissions do refer to a number of authorities and I accept that was appropriate. I do not consider that a lawyer of Mr Beling’s experience needed to spend more than six hours on an affidavit and short submissions on costs. Legal principles around costs, and Calderbank offers, are familiar issues for solicitors. I propose to include the sum of $2,400 (six hours at $400 per hour) for the work performed by Mr Beling on costs submissions and the affidavit.

61    There are then items for which no explanation is given in the evidence, or on the bill of costs, and which appear inexplicable. Examples are items which refer to communications to or from the NSW Registry of the Federal Court. I have not allowed those. Mr Beling has been given a chance to explain by way of evidence, and in the manner in which he has drawn his bill of costs, for what purpose work was performed. Where there is no or no sufficient explanation, I have not included those items.

62    After the final hearing, Mr Beling has itemised a number of tasks including “online reading” of the Trade Marks Act and correspondence with counsel, who does not appear to have been retained and who does not appear to have charged Mr Beling. There is no explanation given by Mr Beling in evidence, or in the bills themselves, about these tasks after the hearing and I do not propose to include them in the lump sum figure. Mr Beling has included in other fees time for reading relevant legislation.

63    There are two more categories of costs which I do not propose to include in the lump sum order. First, Mr Beling has sought costs for several items entitled “reading Applicant’s outline of submissions”. He should not recover any costs from the respondent for reading his own submissions. Second, Mr Beling has included an item for “skill care and responsibility” and seeks $3,000. In circumstances where he is acting for himself, this is inappropriate – see Buckland v Watts, Cachia v Hanes, and Chorley, as discussed at [43] above.

64    In respect of all costs claimed, Mr Beling has applied a further 10 per cent GST at the end of the bill of costs. A claim for GST is inappropriate and will be excluded from my consideration of a lump sum figure.

65    Finally, I note Mr Beling sought costs to be paid directly by counsel for the respondent. There was no basis at all for that submission and it should not have been made.

66    The total I consider the respondent should be ordered to pay the applicant by way of lump sum costs is $11,537.

67    Whether considered by way of its component parts, in the manner I have set out above, or as a whole sum to represent recompense for time required to prepare and advance Mr Beling’s case for the period of three months to which he is entitled to costs in this Court, I consider it to be a fair and appropriate sum.

Associate:

Dated:    17 April 2015