Federal Court of Australia

Deakin University v Macreadie (Final Orders) [2026] FCA 583

ORDERS

THE COURT NOTES THAT:

A.    Blue Carbon Lab Logo: refers to the logo substantially in the form set out under [98] of Deakin University v Macreadie [2026] FCA 482.

B.    The words “involved” in order 2 should be construed by reference to section 2 of the Australian Consumer Law, being Schedule 2 of the Competition and Consumer Act 2010 (Cth).

THE COURT DECLARES THAT:

1.    The second respondent’s use and threatened use of the Blue Carbon Lab name and the Blue Carbon Lab Logo to offer and promote the provision of environmental research services constitutes conduct in trade or commerce which is misleading or deceptive or likely to mislead or deceive in contravention of section 18 of the Australian Consumer Law.

THE COURT ORDERS THAT:

Injunctions

2.    The second respondent, whether by itself, its directors, officers, employees or agents or otherwise howsoever, be permanently restrained from:

(a)    representing that it is the owner of the Blue Carbon Lab mark or the Blue Carbon Lab Logo;

(b)    representing that it is the owner of the goodwill and reputation associated with the Blue Carbon Lab mark or the Blue Carbon Lab Logo;

(c)    representing that it has the right to use the Blue Carbon Lab mark or the Blue Carbon Lab Logo;

(d)    using the Blue Carbon Lab mark or the Blue Carbon Lab Logo to indicate the commercial origin of any provision of environmental research services.

3.    The first respondent be permanently restrained from being involved in any conduct of the second respondent that would contravene order 2 above.

4.    Within 14 days of the date of this order, the second respondent take such steps as are necessary to change its name to a name that does not include the phrase “Blue Carbon Lab”.

Rectification of Register

5.    Pursuant to section 88(2)(a) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks be rectified by cancelling the registration of trade mark number 2376685.

Costs

6.    The respondents pay the applicant’s costs of the proceeding, excluding any costs thrown away by reason of amendments to the applicant’s pleadings or claims not pressed at trial:

(a)    until 11:00 am on 25 March 2025, on a party-party basis;

(b)    after the time specified in order 6(a), on an indemnity basis.

7.    The costs referred to in order 6 be awarded in a lump sum pursuant to rule 40.02(b) of the Federal Court Rules 2011 (Cth).

8.    The quantification of the costs awarded under orders 6 and 7, and the making of such further orders and directions in connection therewith, be referred to a Registrar of the Court for determination.

Stay

9.    Order 5 is stayed:

(a)    initially for a period of 28 days from the date on which these orders are made; and

(b)    if an appeal is lodged within that period, until the determination of that appeal, or further order.

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

REASONS FOR JUDGMENT

WHEELAHAN J:

1    On 24 April 2026 I published reasons for judgment by which I held that the applicant, Deakin University, is entitled to permanent injunctions under s 232 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)) (ACL) and an order rectifying the Register of Trade Marks: Deakin University v Macreadie [2026] FCA 481 (PJ). I concluded at PJ [190] that Deakin was entitled to a declaration and permanent injunctions substantially to the effect of those sought to the extent that they are directed to the representations set out at PJ [120](a), (b), and (c) that were made by the second respondent and which I held were false. I held that a fourth representation set out at PJ [120](d) that was alleged by Deakin was not conveyed by the second respondent’s conduct. I also held that Deakin was entitled to a corresponding injunction directed to the first respondent, Prof Macreadie, because it was not in dispute that if the second respondent was liable then Prof Macreadie as its sole director was liable as an accessory. In addition, I held that the second respondent had applied to register a trade mark when it was not the owner of the mark and that the registration of the trade mark should be cancelled.

2    The parties have conferred in relation to final orders. There are two issues in dispute –

(1)    the form of the permanent injunctions; and

(2)    whether part of Deakin’s costs of the proceeding should be taxed on an indemnity basis because the respondents did not accept offers made shortly prior to trial to settle the proceeding.

The form of the injunctions

3    Against the second respondent, Deakin seeks the following order which uses the defined term “Blue Carbon Lab Logo” to refer to the logo substantially in the form set out at PJ [98] –

2.    The second respondent, whether by itself, its directors, officers, employees or agents or otherwise howsoever, be permanently restrained from:

(a)    representing that it is the owner of the Blue Carbon Lab mark or the Blue Carbon Lab Logo;

(b)    representing that it is the owner of the goodwill and reputation associated with the Blue Carbon Lab mark or the Blue Carbon Lab Logo;

(c)    representing that it has the right to use Blue Carbon Lab mark or the Blue Carbon Lab Logo.

(d)    using the Blue Carbon Lab mark or the Blue Lab Logo to indicate the commercial origin of any provision of environmental research services.

4    Paragraphs 2(a), (b), and (c) of the proposed order correspond to the representations that I held were actionable and they are not in dispute.

5    The respondents submit that paragraph 2(d) should be refused because it does not correspond to a representation that Deakin alleged in its amended statement of claim. While it is true that paragraph (d) does not directly correspond to a representation that was alleged in the amended statement of claim, it was a remedy that Deakin sought in its further amended originating application that was filed with leave on the second day of trial. Leave was granted to file the further amended originating application over the objection of the respondents who submitted that the case had been pleaded by reference to specific representations and that the additional orders that Deakin sought to add to the prayer for relief did not correspond to the pleaded representations and constituted a departure from the pleaded case. In giving leave to amend, I acted on a concession by the respondents that there was no prejudice to them and I gave leave on the basis that it was understood that the parties wished to be heard on the terms of any final relief: see PJ [19] and [190].

6    I consider the order sought by Deakin at paragraph 2(d) to be ancillary to paragraphs (a), (b) and (c). Because it is ancillary, it is not to the point that it does not in terms correspond to the specific representations that are the basis of the other orders. Thus understood, paragraph (d) is an order that Deakin sought at trial that is directed to the misleading and deceptive conduct that it has established, and I am persuaded that it is appropriate that I make that order.

7    As against Prof Macreadie Deakin seeks an order in the following form –

3.    The first respondent be permanently restrained from engaging in, or assisting any other person including the second respondent to engage in, the conduct referred to in order 2 above.

8    The above order is a departure from the order that Deakin sought at trial, which was to restrain Prof Macreadie from being involved in conduct of the second respondent that Deakin sought to enjoin. The point has significance to the extent that Prof Macreadie was not alleged to have contravened s 18 of the ACL as a principal, but only as an accessory to the second respondent’s contravention. Deakin submitted that the order was necessary to prevent Prof Macreadie from assisting other persons to engage in contravening conduct. But that was not a claim that was maintained at trial. In any event, Deakin has the benefit of an issue estoppel against Prof Macreadie in relation to the necessary elements of its ACL claim which must affect the likelihood of any future contested litigation between them.

9    The respondents’ proposed form of order is therefore a better expression of the relief to which Deakin is entitled against Prof Macreadie, being –

3.    The first respondent be permanently restrained from being involved in any conduct of the second respondent that would contravene order 2 above.

10    The parties accepted that the above order should be understood by reference to the definition of “involved” in s 2 of the ACL and a note to that effect is included in the order.

Costs

11    Deakin seeks the following order as to costs –

6.    The respondents pay the applicant’s costs of the proceeding, excluding any costs thrown away by reason of amendments to the applicant’s pleadings or claims not pressed at trial:

(a)    until 11:00 am on 25 March 2025, on a party-party basis; and

(b)    after the time specified in order 6(a), on an indemnity basis.

12    Deakin seeks costs on an indemnity basis from 25 March 2025 because on 21 March 2025 it served concurrent offers to settle the proceeding comprising an offer to compromise under r 25.01(1) of the Federal Court Rules and a Calderbank offer: see Calderbank v Calderbank [1976] Fam 93. The Calderbank offer was expressed to be open until 5.00 pm on 4 April 2025 and the offer to compromise was expressed to be open for 14 days.

13    The terms of the offers were as follows –

1.    The Respondents undertake that they will not represent that:

(a)     the Second Respondent is the owner of the Blue Carbon IP (as defined in the Amended Statement of Claim dated 29 January 2025 (ASOC)) and AU TMs 2376679, 2376685, 2401900, 2449909 and 2449912 (the Blue Carbon trade marks);

(b)     the Second Respondent is the owner of the goodwill and reputation associated with the Blue Carbon IP, the Blue Carbon trade marks and the website at www.bluecarbonlab.org (Blue Carbon website);

(c)     the Second Respondent has the right to use the Blue Carbon IP, the Blue Carbon trade marks, the business name ‘Blue Carbon Lab’ and the Blue Carbon website; or

(d)     the Second Respondent has the sponsorship or approval of or an affiliation with the Applicant.

2.    The Respondents pay 50% of the Applicant’s costs of this proceeding, to be taxed in the absence of agreement.

14    The parties proceeded on the basis that the undertaking sought from the respondents was an undertaking to Deakin and not the Court. That construction is consistent with the fact that the offer to compromise could be accepted by serving a notice of acceptance in accordance with r 25.08(3) and that the terms of the offer did not require the parties to take any further steps. A failure to comply with an accepted offer is capable of being the subject of an application for enforcement under r 25.10.

15    In relation to the Calderbank offer, the Court may entertain making an order for indemnity costs against the respondents in the exercise of its general discretion as to costs where it is shown that the respondents’ failure to accept the offer was unreasonable or imprudent: Black v Lipovac (1998) 217 ALR 386 at [217]–[223] (Miles, Heerey and Madgwick JJ). The burden of showing unreasonableness is on Deakin and the reasonableness of the failure by the respondents to accept the offer is determined by reference to the circumstances existing at the time the offer was not accepted and not in hindsight: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 2) [2018] FCAFC 112 at [6]–[8] (Nicholas, Yates and Beach JJ). The circumstances to be taken into account in determining whether the failure to accept a Calderbank offer was unreasonable cannot be stated exhaustively but may include –

(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 order for indemnity costs in the event of the offeree rejecting it.

16    In relation to the offer to compromise, the costs consequences of non-acceptance by the respondents are provided for by the Federal Court Rules, r 25.14(3) –

(3)    If an offer is made by an applicant and not accepted by a respondent, and the applicant obtains a judgment that is more favourable than the terms of the offer, the applicant is entitled to an order that the respondent pay the applicant’s costs:

(a)    before 11.00 am on the second business day after the offer was served—on a party and party basis; and

(b)    after the time mentioned in paragraph (a)—on an indemnity basis.

17    Under r 25.14(3), if the applicant achieves a judgment more favourable than the offer of compromise, then there is a rebuttable presumption in favour of indemnity costs. It is not necessary for the Court to conclude that the respondent’s failure to accept the offer was unreasonable: Lodestar Anstalt v Campari America LLC (No 2) [2016] FCAFC 118 (Lodestar) at [23] (Allsop CJ, Greenwood, Besanko, Nicholas and Katzmann JJ). The Court has a discretionary power under r 1.35 to depart from the norm set by r 25.14(3).

18    The following features of the offers should be noted –

(1)    The terms of the undertakings the subject of the offers broadly reflected the relief sought by Deakin in its amended originating application in relation to the representations and not the more streamlined relief sought in its further amended originating application.

(2)    Of the four representations that corresponded to the undertakings sought by the offers Deakin failed to establish the fourth representation.

(3)    The offers did not contain any terms dealing with Deakin’s claims to have the registration of the logo mark cancelled.

(4)    The offers were expressed to be inclusive of costs and took no express account of any potential liability of Deakin for the costs of the amendments to its statement of claim and its originating application or any costs thrown away as a result of those amendments or as a result of the causes of action and issues that Deakin abandoned by the time it filed its written opening submissions on 24 March 2025.

19    Commencing with the offer to compromise, it is sometimes difficult to evaluate whether an offer to compromise which has a non-monetary component is more or less favourable than a judgment achieved at trial. That is particularly so where the text of the terms of the offer does not directly correspond to the judgment obtained at trial. In four distinct respects, Deakin has obtained a more favourable result –

(a)    it has obtained a declaration of contravention of s 18 of the ACL which serves to vindicate its claim to ownership of the goodwill, although the weight given to this feature is tempered by the fact that the declaration ultimately sought and obtained is more confined than the declarations sought by Deakin in its amended originating application dated 29 January 2025 which was superseded by the further amended originating application dated 8 April 2025;

(b)    it has established an entitlement to an order for rectification of the Register to cancel the logo mark;

(c)    it has obtained an order requiring the second respondent to change its name; and

(d)    subject to the exclusion of costs thrown away as a result of amendments and claims that Deakin abandoned, it will be entitled to an order for its costs.

20    On the other hand, Deakin failed to establish one of the four representations that it alleged. However, the failure of Deakin to establish the fourth representation is subject to the consideration that compliance by the respondents with the undertakings that were sought in paragraphs 1(a), (b) and (c) of the offers would likely have had the practical result that there would have been no occasion for the second respondent to make the fourth representation, which in any event was a representation that I found was not made. The same result flows from the orders that will be made. I also consider that the effect of the orders that will be made will correspond to the advantage that Deakin sought to achieve by the undertakings such that the differences in their terms are not material to the evaluation of whether Deakin achieved a more favourable result at trial. I do not consider that Deakin’s failure to establish the fourth representation affects its result on a global or commercial basis.

21    As to Deakin’s costs at the time the offers were open for acceptance, although there was no evidence in relation to the quantification of costs of amendment and costs thrown away, I consider that those costs would not have approached anything like 50% of Deakin’s costs at the time the offers were made. I am familiar with the evidence that the parties prepared and filed, and I do not consider that any of that evidence was not material to the claims that Deakin maintained at trial. I accept the applicant’s submission that the costs thrown away by the respondents in preparing pleadings and submissions in response to claims later abandoned by Deakin would not have been significant. The respondents did not direct me to any evidence that those costs would have approached anything like 50% of Deakin’s costs.

22    For the above reasons, I conclude for the purposes of r 25.14(3) that Deakin obtained a judgment at trial that was more favourable than the terms of the offer to compromise.

23    The respondents submitted that the Court should exercise its power under r 1.35 to make an order inconsistent with r 25.14(3) on the ground that it was “not unreasonable” not to accept the offer to compromise. The power under r 1.35 must be exercised in a way that best promotes the overarching purpose, which is to facilitate the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible: Federal Court of Australia Act 1976 (Cth), s 37M(3). In addition, the power should be exercised for proper reasons which will generally arise only in exceptional circumstances: Lodestar at [27]; Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 40 at [10] (Tamberlin, Finn and Sundberg JJ).

24    In support of their claim that the Court should make an order inconsistent with r 25.14(3) the respondents submitted that the trial was necessary because the case turned on the evaluation of oral evidence of witnesses. I do not accept the foundation of the submission or the submission itself. There was only one witness who was cross-examined at any length, and that was Prof Macreadie. At the time the offer to compromise was made all the affidavit evidence had been filed, and before the offer expired Deakin’s written opening had been filed. The outcome of the case turned on findings of fact relating to the activities of Deakin’s Blue Carbon Lab and its reputation that were admitted, were otherwise uncontroversial, and which were within Prof Macreadie’s knowledge. The outcome also turned on the application of accepted principles established by High Court authority to the established facts. As I held at PJ [169], the respondents’ case rested on a false premise that Prof Macreadie had acquired and then developed his own goodwill to the exclusion of Deakin. These were not exceptional circumstances. To not give effect to r 25.14(3) on the tenuous basis advanced by the respondents would undermine its purpose and would not give effect to the overarching purpose in s 37M(1) of the Act. The respondents have therefore not advanced any persuasive ground on which r 25.14(3) should not operate according to its terms.

25    The application of r 25.14(3) is sufficient to support the costs order that Deakin seeks. It is therefore unnecessary to consider Deakin’s alternative submission that, properly advised, it was unreasonable for the respondents not to accept the Calderbank offer.

26    I will make the final orders indorsed on these reasons for judgment.

Associate:

Dated:    11 May 2026