FEDERAL COURT OF AUSTRALIA

Crescent Capital Partners Management Pty Limited v Crescent Wealth Investments Australasia Pty Ltd [2025] FCA 133

ORDERS

THE COURT ORDERS THAT:

1.    The applicant’s further amended interlocutory application filed on 5 February 2025 be dismissed.

2.    The applicant pay the respondents’ costs of that application.

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

REASONS FOR JUDGMENT

GOODMAN J:

A.    INTRODUCTION

1    On 5 February 2025 the applicant filed, with the leave of the Court and the consent of the respondents, a notice of discontinuance by which it discontinued its further amended originating application filed on 26 April 2024.

2    By a further amended interlocutory application also filed on that day, the applicant seeks an order that the respondents pay the applicant’s costs of this proceeding (excluding any costs which relate solely to the cross-claim filed by some of the respondents against the applicant).

3    For the reasons set out below, that application is to be dismissed.

B.    BACKGROUND

4    The applicant relies upon affidavits of its solicitor, Mr Michael Williams, sworn 17 June 2024, 23 August 2024, 28 November 2024, 29 November 2024 and 10 February 2025; and an affidavit of one of its directors, Mr Peter Lyon-Mercado, sworn on 26 August 2024. The respondents – comprising 19 corporations and Mr Talal Yassine, AM, who is the eighteenth respondent and a director of each of the other respondents with the exception of the twentieth respondent – rely upon affidavits of their solicitor, Ms Odette Gourley sworn on 16 December 2024 and 6 February 2025; and affidavits of Mr Yassine affirmed on 2 August 2024 and 13 November 2024. From those affidavits, and the documents filed with the Court, the salient background facts are as follows.

5    On 16 November 2023, the applicant filed an originating application together with a concise statement. At the core of the dispute identified in those documents was the use by the respondents of the word “Crescent”, which was also in use by the applicant. The dispute concerning the use of this word and various trade mark registrations has a long history: see, e.g., Crescent Capital Partners Management Pty Limited v Crescent Funds Management (Aust) Limited [2016] FCA 229 (Bennett J); Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Limited [2017] FCAFC 2; (2017) 123 IPR 412 (Greenwood, Edelman and Markovic JJ).

6    By the originating application, the applicant sought various forms of relief including declarations, injunctions, an order for corrective advertising, and orders for damages or an account of profits, against 18 respondents.

7    On 6 February 2024, the applicant filed an amended originating application which expanded both the relief sought and the range of respondents against whom such relief was sought. On the same day, the applicant filed a statement of claim, pursuant to which the applicant alleged, inter alia, that:

(1)    the first, second, fifth, seventh, eleventh, thirteenth and fifteenth respondents had infringed, and/or had threatened to infringe, Australian trade mark registrations numbered 1720170 CRESCENT and 1720171 CRESCENT CAPITAL PARTNERS (applicant’s marks);

(2)    each of the first, second, fifth, seventh, eleventh, thirteenth and fifteenth respondents made representations to the public that their services and products are those of, or associated with or approved, licensed or sponsored by the applicant, in contravention of: (a) ss 18 and 29 of the Australian Consumer Law, being Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL); and (b) ss 12DA and 12DB of the Australian Securities and Investments Commission Act 2001 (Cth) (ASIC Act);

(3)    Mr Yassine and various of the corporate respondents were knowingly involved in those contraventions of the ACL and the ASIC Act; and

(4)    Mr Yassine and the first and second respondents breached orders made by Bennett J on 23 March 2016 (26 March 2016 orders).

8    The applicant then alleged, in support of its claim for injunctive relief and with respect to the alleged conduct which included the conduct described in the previous paragraph:

Unless restrained by this Court, the Respondents will continue to engage in the unlawful conduct alleged above.

9    The statement of claim then set out the grounds for the applicant’s claims for damages or an account of profits, and for additional damages under s 126 of the Trade Marks Act 1995 (Cth) (TM Act).

10    From about 15 February 2024, various of the corporate respondents took one or more of the following steps toward a rebranding of themselves and their businesses from “Crescent” to “Salaam”:

(1)    the changing of their names to names including the word “Salaam”;

(2)    the registration of business names using the word “Salaam”;

(3)    the registration of approximately 40 domain names (in respect of which Mr Yassine is recorded as the registrant contact) using the words “salaam” and “salam”; and

(4)    the filing of various trade mark applications using the word “Salaam”.

11    On or around 22 April 2024, the website at www.salaam.com.au went live. On the same day a launch event for the “Salaam” brand was held. On or around 23 April 2024, a statement was published on the webpage accessible at www.crescentwealth.com.au/crescent-wealth-becoming-salaam, announcing the rebranding. It contained statements to the effect that: Mr Yassine believed that the new name would have the effect of making this proceeding irrelevant to the future activities of the respondents’ business; this proceeding was nevertheless unjustified; and the respondents would continue to defend this proceeding.

12    On 23 and 26 April 2024 respectively, the applicant filed an amended statement of claim and a further amended originating application, which added the nineteenth and twentieth respondents and made further changes to the prayers for relief sought in the amended originating application. The relief sought by the applicant, as consolidated in the further amended originating application, may be paraphrased as follows:

(1)    declarations that:

(a)    the first, second, fifth, seventh, eleventh, thirteenth and fifteenth to seventeenth respondents had infringed, and/or had threatened to infringe, the applicant’s marks by using, and threatening to use, various marks as trade marks in relation to services in respect of which the applicant’s marks are registered under s 120(1) of the TM Act and/or services of the same description as those services under s 120(2) of that Act;

(b)    Mr Yassine and the third to ninth, nineteenth and twentieth respondents are liable as joint tortfeasors for the infringement of the applicant’s marks by the first, second, fifth and seventh respondents;

(c)    Mr Yassine and the tenth to sixteenth respondents are liable as joint tortfeasors for the infringement of the applicant’s marks by the first, eleventh, thirteenth and fifteenth respondents;

(d)    by their use of the respondents’ marks the first and second respondents had breached paragraphs 3 and 4, and Mr Yassine had breached paragraph 6, of the 23 March 2016 orders;

(e)    by their use of the respondents’ marks the first, second, fifth, seventh, eleventh, thirteenth and fifteenth respondents had contravened, and/or had threatened to contravene, ss 18 and 29 of the ACL;

(f)    by their use of the respondents’ marks the first, second, fifth, seventh, eleventh, thirteenth and fifteenth respondents had contravened, and/or had threatened to contravene, ss 12DA and 12DB of the ASIC Act;

(g)    Mr Yassine and the third to ninth, nineteenth and twentieth respondents were involved in the conduct of each of the first, second, fifth and/or seventh respondents, in contravention of ss 232(1) and 236 of the ACL and ss 12GD and 12GF of the ASIC Act;

(h)    Mr Yassine and the tenth to sixteenth respondents were involved in the conduct of each of the first, eleventh, thirteenth and fifteenth respondents in contravention of ss 232(1) and 236 of the ACL and ss 12GD and 12GF of the ASIC Act;

(2)    orders that:

(a)    the respondents be permanently restrained from using the respondents’ marks in relation to financial services; financial portfolio management; financial information services; banking and investment services; financial advisory and financial management services, including by way of advertising, promoting, providing, offering for sale and/or selling the above services to consumers in Australia;

(b)    the first respondent, within 28 days, take all steps necessary to withdraw Australian trade mark applications 2363373 and 2371564 and to cancel the domain name registration for <crescentwealth.com.au>;

(c)    the eleventh respondent, within 28 days, take all steps necessary to cancel the domain name registration for <crescentfinance.com.au>;

(d)    the seventeenth respondent, within 28 days, take all steps necessary to cancel the domain name registration for <crescentgroup.com.au>;

(e)    the first to sixteenth, nineteenth and twentieth respondents, within 28 days, take all steps necessary to change their corporate names to remove the word CRESCENT and otherwise comply with the order described in 2(a) above;

(f)    the respondents, within 28 days, deliver up on oath to the solicitors for the applicant, or as the applicant may direct, for destruction of all printed and digital materials, including business cards, marketing flyers, product disclosure statements, advertising or promotional materials in which the names and marks described in (2)(a) above, or any names or marks substantially identical with any of those names or marks, appear;

(g)    Mr Yassine be permanently restrained from:

(i)    aiding, abetting, counselling and procuring;

(ii)    being directly or indirectly, knowingly concerned in; or

(iii)    being a party to,

conduct of the first to seventeenth respondents that would not comply with the order described in (2)(a) above;

(h)    Mr Yassine do all things reasonable or necessary within his power to give effect to the orders described in (2)(b) to (f) above;

(i)    each of the first, second, fifth, seventh, eleventh, thirteenth and fifteenth respondents be permanently restrained in trade or commerce in Australia, from making or causing to be made:

(i)    the representations; and

(ii)    any representation that is substantially identical to, or to substantially the same effect as, any one or more of the representations;

(j)    each of Mr Yassine and the third to sixteenth, nineteenth and twentieth respondents be restrained from aiding, abetting, counselling or procuring or being knowingly concerned in or a party to, contraventions of the ACL;

(3)    orders for:

(a)    corrective advertising;

(b)    damages or an account of profits under s 126(1)(b) of the TM Act;

(c)    additional damages pursuant to s 126(2) of the TM Act;

(d)    damages pursuant to section 236 of the ACL, or further or alternatively pursuant to s 12GF of the ASIC Act;

(e)    damages or an account of profits for passing off; and

(f)    interest, costs and ancillary matters.

13    On 30 April 2024, the respondents filed a defence to the amended statement of claim. That defence included:

In response to paragraph 33, the respondents:

(a)    say that they intend to continue to engage in the conduct pleaded in paragraphs 10 and 12 above, which is lawful conduct;

...

14    The conduct pleaded in paragraphs 10 and 12 of the defence to the amended statement of claim included the offering and provision of:

(1)    Sharia-compliant superannuation products under and by reference to the following trade marks:

(a)    CRESCENT WEALTH (the CRESCENT WEALTH Word Mark); and

(b)     ;

(2)    Sharia-compliant superannuation products under and by reference to the following trade mark:

;

(3)    Sharia-compliant home finance under and by reference to the following trade marks:

(a)    CRESCENT FINANCE); and

(b)     .

15    On 1 May 2024, the first, second, seventh, thirteenth and fourteenth respondents filed a cross-claim against the applicant.

16    On 27 May 2024, the applicant filed a reply to the defence to the amended statement of claim which included, at paragraph 2, allegations concerning the steps taken by the respondents to rebrand from “Crescent” to “Salaam” and referred to at [10] above.

17    On 6 June 2024, the respondents filed a rejoinder to the reply to the defence to the amended statement of claim, which included an acknowledgement that between around 15 February 2024 and around 24 May 2024, the respondents took the steps identified in the particulars to paragraph 2 of the reply to the defence to the amended statement of claim to use “Salaam” in their business names and trading activities.

18    On 7 June 2024, a video clip was posted on X, LinkedIn, Facebook and Instagram accounts held under the name “Salaam”. During that video clip Mr Mas Johan Harris, an employee of the respondent group made the following statement:

The new name will also have the effect of making the legal action by Crescent Capital Partners irrelevant to our future activities. However, we consider the legal action unjustified and are defending the action and will continue to do so.

19    On 17 June 2024, the second case management hearing in this proceeding was held. Senior counsel for the applicant raised the respondents’ rebranding with the Court and noted that “there is no commitment whatsoever by our friends as to when they will stop using the name Crescent”. No such commitment was proffered by senior counsel for the respondents at the time (or subsequently).

20    Following that hearing, I made orders for the preparation of the proceeding for hearing including orders that:

(1)    pursuant to r 30.01 of the Federal Court Rules 2011 (Cth), that all issues of trade mark validity, registration, liability, declaratory and injunctive relief and flagrancy (for the purposes of additional damages under the TM Act) be heard and determined prior to and separately from all issues of quantum; and

(2)    the proceeding be set down for trial from 1 April 2025 to 11 April 2025.

21    Between 17 June 2024 and 23 August 2024, various of the respondents changed the names and handles of various social media accounts by replacing the expression “@CrescentWealth” with the expression “@Salaam”.

22    From about 3 July 2024, the parties exchanged offers for the resolution of the proceeding. To the extent that reliance is placed upon such offers for the purposes of the present application, those offers are referred to below.

23    On 3 July 2024, the respondents served a notice of offer to compromise, under r 25.01(1) of the Rules, by which the respondents in essence offered to provide certain undertakings to the Court not to use the “Crescent” name and trade marks (save for a transitional period of three months) on the basis that the proceeding and related proceedings would be dismissed on the basis that each party bear their own costs. That offer was not accepted because, as Mr Williams explained, there were aspects of it that were unacceptable to the applicant, including as to the substantive terms of the proposed undertakings and the condition that the undertakings would only be given if there were no costs order in favour of the applicant.

24    On 2 August 2024 Mr Yassine made his first affidavit, which was filed and served on the applicant and which included evidence that:

The decision to cease using Crescent Wealth branding and adopt alternative branding of Salaam (including Salaam Finance) resulted from a number of events and having regard to a number of considerations. I discuss these below and refer in this paragraph and further paragraphs below to steps taken in relation to company, business and domain names and trade marks, as a result of the decision:

(a)    In the 2020-21 budget, the Commonwealth government announced reforms to aspects of the regulation of superannuation through the Your Future, Your Super reforms. One of the main aspects of those reforms was to encourage smaller funds either to consolidate with larger funds or to close. A smaller fund in this context meant a fund with less than $30 billion under management. As a small fund, it was likely that the Crescent Wealth superannuation funds would need to be merged into a larger group of funds.

(b)    I and other executives of the Crescent Wealth superannuation funds business had internal commercial discussions in the period from about 2021 to 2023 about the strategic options open to Crescent Wealth in light of these reforms and other developments in relation to superannuation funds businesses and in relation to meeting the needs of members of the community who sought Sharia-compliant superannuation and other financial services including for the purpose of buying a home. One of the commercial options was to expand the Sharia-compliant services offered by the business and to re-brand the business as part of a re-launch to offer new products and seek to grow the business.

(c)    the earlier litigation with Crescent Capital and of the fact that Crescent Capital achieved registration in 2017 of trade marks Nos.1720170 and 1720171, the trade marks the subject of Cresent Capital’s infringement claims in these proceedings (the CCP Marks). In September 2021, following acceptance of Cresent Wealth’s Trade Mark Applications 1874318 and 1874320, Crescent Capital lodged notices of opposition to the applications. I understood that the unsuccessful party to the opposition proceedings had a right to appeal to the Federal Court of Australia. Following the various procedural steps in the oppositions including evidence, the oppositions were heard by the delegate of the Registrar of Trade Marks on 17 July 2023.

(d)    Over an extended period from about 2021 to 2023, I and other executives of the Crescent Wealth superannuation funds business had discussions and negotiations with a number of superannuation funds about the possibility of a merger. In the second half of 2023, Crescent Wealth was in detailed merger discussions and negotiations with Russell Investments Master Trust (Russell), the trust of which Salaam super ultimately became a division. In the course of those discussions and negotiations, it became apparent to me that, with the change of trustee name upon a merger of Crescent Wealth with a larger fund, Crescent Wealth would need to undertake a number of administrative steps including preparing fresh templates for member communications and revising and printing PDSs to refer correctly to the merged organisation including the trustee and that this would be costly. I understood in late 2023 that the direct costs involved in these administrative tasks would be in excess of several hundred thousand dollars, and that there would be extensive time and effort involved in carrying out the necessary steps.

(e)    Following the decision on 25 October 2023 to dismiss the oppositions, Crescent Capital appealed the opposition decision to the Federal Court on 15 November 2023 and at the same time commenced proceedings in the Federal Court against various Crescent Wealth and other companies as well as myself alleging registered trade mark infringement, misleading and deceptive conduct, passing off and breaches of the orders of the Federal Court made on 23 March 2016 by reason of conduct involving use of the Crescent Wealth brand. Until that time, at no time since the resolution of the earlier proceedings by the Full Court decision in 2017, had Crescent Capital Partners alleged infringement of the CCP Marks.

(f)    I understood that, if as a result of the litigation, it was necessary to change the Crescent Wealth brand, it would be necessary to repeat the exercise referred to in sub-paragraph (d) above and that the costs incurred would be duplicated.

(g)    When Crescent Wealth completed its plans in late 2023 and early 2024 for the establishment of new products, a re-launch of the business and merger with Russell, we also considered the options for rebranding including undertaking market research into alternative brands, preparation of brand logos and livery. Trade mark applications were filed on 8 March 2024. Extensive actions were taken in about early 2024 in relation to corporate name changes and registering domain names as I discuss below.

(h)    Annexed and marked Annexure TY-19 is the press release announcing the re-launch and re-branding. As stated in the press release, at all times I believed that the new name would have the effect of making the legal action by Crescent Capital irrelevant to the future activities of the business; however, the legal action was unjustified and would continue to defend the legal proceedings.

(underline emphasis added)

25    On 20 September 2024, the applicant served a letter containing an offer to settle the proceeding. That letter explained why a previous offer from the respondents (dated 13 August 2024) contained various “deficiencies” with respect to the undertakings contained therein. The 20 September 2024 letter then explained that the applicant’s offer contained therein addressed the “deficiencies” in the respondents’ 13 August 2024 offer. It continued “[i]n addition, given that the only issue on which there is likely to be a dispute is the issue of costs, and this should not hold up the resolution of the substance of the case [the applicant’s] offer provides for a mechanism for the determination of costs by the Court should the parties be unable to agree on an appropriate costs order”.

26    On 2 October 2024, the solicitor for the respondents replied, taking issue with various matters raised in the 20 September 2024 letter, including the terms of the offer contained therein. The 2 October 2024 letter contained a further offer from the respondents.

27    On 28 November 2024, the applicant filed an interlocutory application by which it sought, relevantly, orders that:

(1)    the amended (sic) originating application and notice of cross-claim be dismissed, without prejudice to the applicant’s right to bring infringement proceedings in respect of any future infringement of its registered trade marks and the respondents’ rights to challenge those trade marks by way of a cross-claim in such infringement proceedings; and

(2)    the respondents pay the applicant’s party and party costs of this proceeding.

28    In support of that application, the applicant filed Mr Williams’s 28 November 2024 affidavit, in which he expressed views that:

(1)    at the date of that affidavit, the respondents’ only use of the brand “Crescent” appeared to him to be historical, and de minimus;

(2)    the substance of the dispute over the use of the “Crescent” brand by the respondents had been overtaken by the complete rebranding of the respondents’ businesses to the “Salaam” brand and that the corporate respondents were then trading under the brand “Salaam”; and

(3)    he understood that the respondents did not intend to continue to use the “Crescent” brand.

29    On 2 December 2024, I made orders for the preparation of the interlocutory application for hearing on 11 February 2025.

30    On 28 January 2025, the applicant filed its submissions on the interlocutory application, but did so by reference to an amended interlocutory application, by which it sought, relevantly, orders that it have leave under r 26.12(2)(c) of the Rules to discontinue its further amended originating application, subject to an order that the respondents pay the applicant’s party and party costs of the proceeding, excluding any costs referable solely to the cross-claim.

31    On 31 January 2025, I made orders listing for hearing on 6 February 2025 the question whether the Court has power to make the orders of the kind sought in the amended interlocutory application. This was because leave to discontinue was sought upon a condition that there be an award of costs in favour of the applicant, and thus there existed the possibility that the Court was being asked to provide an advisory opinion in circumstances where the applicant was not committed to filing a notice of discontinuance but would have the option of doing so once it knew whether or not it would be the beneficiary of a costs order.

32    It became unnecessary to determine that question when, on 3 February 2025, I made orders by consent, inter alia, granting leave to the applicant to file: (a) a further amended interlocutory application in which the grant of leave was not expressed to be conditional upon an order for costs favourable to the applicant; and (b) a notice of discontinuance under r 26.12(2)(c) of the Rules to discontinue its further amended originating application.

33    On 5 February 2025, the applicant filed each of those documents.

C.    CONSIDERATION

34    Against that background, I turn to consider the applicant’s further amended interlocutory application.

C.1    Relevant principles

35    It is trite that the Court has a broad discretion as to costs: see s 43 of the Federal Court of Australia Act 1976 (Cth) (FCA Act). Where the Court has decided on the merits of the case, costs typically “follow the event”. That is, the party who is unsuccessful because of the Court’s determination is required to pay the costs of the successful party. However, different considerations apply where – as in the present case – the Court has not determined the merits of the case. In Chapman v Luminis [2003] FCAFC 162 the Full Court of this Court (Beaumont, Sundberg and Hely JJ) explained at [7]:

The authorities establish the following propositions in relation to the making of costs orders in circumstances such as the present:

-    where a proceeding terminates before there has been a hearing, the Court should not resolve the issue of costs by engaging in something in the nature of a hypothetical trial: Australian Securities Commission v Aust-Home Investments Ltd (1993) 44 FCR 194 at 201;

-    this does not mean that a Court can never make an order for costs. Often it will be unable to do so, but in other cases an examination of the reasonableness of the conduct of the parties may provide the basis for an order, or a judge may be confident that one party was almost certain to have succeeded if a matter had been fully tried: Re Minister for Immigration & Ethnic Affairs; Ex parte Lai Qin (1997) 186 CLR 622 at 625 (McHugh J);

-    a distinction is to be drawn between cases in which one party, after litigating for some time, effectively surrenders to the other, and cases where some supervening event or settlement so removes or modifies the subject of the dispute that, although it could not be said that one side has simply won, no issue remains between the parties except that of costs. In the former type of case, there will commonly be lacking any basis for an exercise of the Court’s discretion otherwise than by an award of costs to the successful party. It is the latter type of case which more often creates problems, since there may be difficulty in discerning a clear reason why one party, rather than the other, should be bear the costs: ONE.TEL Ltd v Deputy Commissioner of Taxation (2000) 171 ALR 227 at 231-232 (Burchett J).

See also Nichols v NFS Agribusiness Pty Ltd [2018] NSWCA 84; (2018) 97 NSWLR 681 at 689 to 690 [37] (Payne JA, Basten and Meagher JJA agreeing); FCA US LLC v Mahindra Automotive Australia Pty Ltd [2021] FCA 1091 at [32] to [35] (Halley J); and Bridging Capital Holdings Pty Ltd v Self Directed Super Funds Pty Ltd [2022] FCA 361 at [16] (Stewart J).

36    A matter informing the exercise of the costs discretion is the imposition of obligations on parties and their representatives by ss 37M and 37N of the FCA Act. In summary:

(1)    the parties to a civil proceeding before the Court must conduct the proceeding (including negotiations for settlement of the dispute to which the proceeding relates) in a way that is consistent with the overarching purpose of facilitating the just resolution of disputes according to law; and as quickly, inexpensively and efficiently as possible; and

(2)    the parties’ lawyers must, in the conduct of a civil proceeding before the Court (including negotiations for settlement) on the party’s behalf take account of the duty imposed on the party and assist the party to comply with the duty.

37    A further matter informing the exercise of the Court’s discretion as to costs in the present case is r 26.12 of the Rules which provides in so far as is presently relevant:

26.12      Discontinuance

(1)     A party claiming relief may discontinue a proceeding in whole or in part by filing a notice of discontinuance, in accordance with Form 48.

(2)     The party may file the notice of discontinuance:

...

(c)     with the leave of the Court—at any time.

...

(7)     Unless the terms of a consent or an order of the Court provide otherwise, a party who files a notice of discontinuance under subrule (2) is liable to pay the costs of each other party to the proceeding in relation to the claim, or part of the claim, that is discontinued.

38    As r 26.12(7) states, the discontinuing party is to pay the costs of the other parties unless (relevantly) the Court orders otherwise. Examples of other orders that may be made in the exercise of the Court’s broad discretion include an order that each party bear their own costs; or, as is sought on the present application, an order that the other party or parties pay the costs of the discontinuing party.

39    The applicant contends that the order it seeks is appropriate on two bases, namely: (1) capitulation or surrender by the respondents; and (2) unreasonable conduct by the respondents.

C.2    Have the respondents capitulated or surrendered?

40    The first basis is the applicant’s contention that it has been substantially successful in the proceeding as a result of a capitulation or surrender by the respondents.

41    The applicant relies in particular upon the final subparagraph of the passage from Chapman set out at [35] above and contends that the present is a case “in which one party, after litigating for some time, effectively surrenders to the other”, with the consequence that there is “lacking any basis for an exercise of the Court’s discretion otherwise than by an award of costs to the successful party”.

42    The evidence does not support the applicant’s contention that the respondents have capitulated or surrendered in any relevant sense. In particular:

(1)    the respondents stated in plain terms that, despite taking steps to rebrand, they intended to continue to defend the proceedings in: (a) the 23 April 2024 statement ([11] above); (b) the 7 June 2024 video clip ([18] above); and (c) Mr Yassine’s 2 August 2024 affidavit ([24] above);

(2)    in so far as the applicant sought injunctive relief, I am not satisfied that the respondents have capitulated or surrendered by rebranding, in circumstances where the respondents have not provided any undertakings nor agreed to any orders that would prevent them from using the “Crescent” name and it thus remains open to them to continue to engage in the impugned conduct; and

(3)    more broadly, there has been no capitulation or surrender by the respondents with respect to significant parts of the further amended originating application and in particular the declaratory relief sought to the effect that Mr Yassine and other respondents had breached this Court’s orders; and the claim for damages (including additional damages) or an account of profits with respect to the respondents’ past conduct. The relief sought was wide-ranging and serious. In this respect, and contrary to the applicant’s submission, I do not consider the order made following the 17 June 2024 case management hearing separating the determination of issues of quantum to be relevant, when it reduced the task for the respondents ahead of the first hearing only with respect to quantum and all other issues remained for determination.

43    The applicant’s contention that the respondents have capitulated or surrendered appears to be based upon the evidence of Mr Williams as to his (necessarily subjective) understanding as set out in his 28 November 2024 affidavit (see [28] above); and the proposition that the rebranding achieved the applicant’s purposes in bringing the proceeding. However, an assessment of whether a respondent’s actions have the result of fulfilling an applicant’s purpose in bringing a proceeding is to be considered not by reference to subjective assessments of that purpose but by reference to that purpose as manifested in the originating application. Examples of the use of the relief sought by an applicant as the yardstick include Australian Competition & Consumer Commission v Contact Plus Group Pty Ltd (in liq) [2006] FCA 396 at [10] and [16] (Weinberg J); Elevate Brandpartners Ltd v Hammond (No 4) [2020] FCA 421 at [21] to [22] (Stewart J); Mahindra at [35(d)] and [45] to [49]; and Bridging Capital at [25] (Stewart J).

44    That is not to say that it is necessary in any particular case for an applicant to prove that a respondent has effectively capitulated or surrendered to every prayer for relief sought against that respondent. As Halley J explained in Mahindra at [35(d)] “[a] party does not have to achieve complete success in order to establish that the other party effectively surrendered or capitulated. It is enough to demonstrate that the outcome secured sufficiently achieves the party’s purpose in bringing the proceedings”.

45    However, this is not a marginal case. In this proceeding the applicant sought various forms of relief, some of it very significant, against twenty respondents. None of the relief sought has been achieved, in form or in substance. The respondents appear to have ceased use of the “Crescent” name but have given no undertaking nor submitted to any order as to the future. The applicant has, by filing its notice of discontinuance, abandoned all of its claims for relief in this proceeding on the basis of subjective views formed by the applicant. The respondents have not capitulated or surrendered in any relevant sense.

C.3    Have the respondents behaved unreasonably, such that they should be ordered to pay the applicant’s costs?

46    The second basis upon which the applicant contends that the respondents should pay its costs of the proceeding is the applicant’s contention that the respondents have behaved unreasonably in several ways. The applicant calls in aid the obligations set out at [36] above concerning compliance with the overarching purpose.

47    The applicant contends that the respondents acted unreasonably in not being transparent about the rebranding including the filing of documents with the Court that used the respondents’ original names, rather than their rebranded names.

48    I do not regard the respondents’ conduct with respect to the disclosure of the rebranding to constitute unreasonable behaviour such that the respondents ought pay the applicant’s costs. As set out above:

(1)    on 27 May 2024 the applicant filed a reply to the defence to the amended statement of claim, which included, at paragraph 2, allegations concerning the steps taken by the respondents to rebrand from “Crescent” to “Salaam”(see [10] and [16] above); and

(2)    these allegations were acknowledged as correct in the rejoinder filed by the respondents on 6 June 2024 (see [17] above).

49    There can be no doubt that the applicant was aware of the detail of steps being taken toward the rebranding by 27 May 2024, at the latest. The applicant has not suggested that the failure of the respondents to identify those steps to it or to the Court earlier than 6 June 2024, or the failure of the relevant corporate respondents to update their names on the Court file, caused any prejudice to the applicant. None is apparent.

50    It is true that those corporate respondents who changed their names did not take steps to update their names on the Court file. This is regrettable, but does not amount to conduct that is sufficiently unreasonable to warrant an adverse costs order.

51    The applicant also contends that the respondents acted unreasonably by maintaining – by paragraph [33] of their defence to the amended statement of claim – that they proposed to continue the impugned conduct; and by continuing their defence of the applicant’s claim after the rebranding.

52    I do not accept that any unreasonable behaviour on the part of the respondents has been proven, in circumstances where the applicant has not established that:

(1)    the respondents did not propose to continue the impugned conduct at the time that the defence was filed;

(2)    the respondents did not have a basis for defending the proceeding once they decided to rebrand (alternatively, once they had rebranded). It is clear that regardless of the effect of the rebranding upon the injunctive relief sought, the respondents were defending a case which extended well beyond claims for injunctive relief; or

(3)    it suffered any relevant prejudice as a result of the continuation of the defence.

53    The applicant also submitted that the respondents failed to act in accordance with s 37N of the FCA Act by failing to seek to resolve the proceeding once “the substantive issue in the case” had been resolved by the rebranding with the result that the only issue was costs. This submission is misconceived, as it incorrectly equates the rebranding with the relief sought by the applicant.

54    A similar submission was made with respect to the 20 September 2024 offer (see [25] above). The applicant contends that the respondents’ failure to accept that offer was unreasonable when that reflected an agreed position between the parties, save as to costs. I do not accept that submission. As is clear on the face of the 20 September 2024 letter itself, and confirmed by the 2 October 2024 letter (see [26] above), there was no agreed position save as to costs and the form of any undertakings to be provided was unresolved.

55    Thus, I am not persuaded that the order sought by the applicant ought be made. It follows that the applicant’s further amended interlocutory application should be dismissed.

56    I am also unpersuaded, for the same reasons, that the costs position should be otherwise than that provided for by r 26.12(7). The respondents have been put to the expense of defending a proceeding which has now been abandoned. In the absence of any reason to otherwise order, the applicant should pay the respondents’ costs of the proceeding.

57    I note for completeness that the respondents contend that the applicant acted unreasonably in various ways. However, it is unnecessary to consider those submissions.

D.    CONCLUSION

58    The applicant’s further amended interlocutory application filed on 5 February 2025 should be dismissed with costs. I will make orders accordingly.

Associate:

Dated:    27 February 2025

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