Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 05 March 2021
• Neutral Citation: [2021] FCA 185
• Court: Federal Court
• Date: 05 March 2021

Federal Court of Australia

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 2) [2021] FCA 185

File numbers:	NSD 15 of 2017NSD 1802 of 2017
Judgment of:	STEWART J
Date of judgment:	5 March 2021
Catchwords:	COSTS – where costs were previously determined – whether costs order can be revisited pursuant to the slip rule in r 39.05(h) of the Federal Court Rules 2011 (Cth) – whether there was “an error arising in a judgment or order from an accidental slip or omission” – where costs had not previously been sought on an indemnity basis – where multiple Calderbank offers were made – whether unsuccessful party would have been in a better position had it accepted the offers – whether offers were unreasonably or impudently rejected – no basis to award costs on an indemnity basis – slip rule applied – previous costs order vacated – rough and ready allowance made for issues on which predominantly successful party was unsuccessful – costs awarded on a lump sum basis to be quantified by agreement or the Registrar
Legislation:	Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) Federal Court of Australia Act 1976 (Cth) s 43 Federal Court Rules 2011 (Cth) rr 22.03, 39.05(h), 39.05(e) Therapeutic Goods Act 1989 (Cth)
Cases cited:	Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No. 2) [2018] FCAFC 112 Calderbank v Calderbank[1975] 3 WLR 586 CGU Insurance Ltd v Corrections Court of Australia Superannuation Ltd [2008] FCAFC 173 Chevron Australia Holdings Pty Ltd v Cmr of Taxation (No 5) [2015] FCA 1310 Construction, Forestry, Mining and Energy Union v Mammoet Australia Pty Ltd (No 2) [2012] FCA 1404 Cretazzo v Lombardi (1975) 13 SASR 4 DJL v The Central Authority[2000] HCA 17;201 CLR 226 EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 92 Hammond v Quayeyeware Pty Ltd, in the matter of Quayeyeware Pty Ltd[2019] FCA 2207; 141 ACSR 434 Hancock Prospecting Pty Ltd v Rinehart (No 3)[2021] FCAFC 23 Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd (No 2) [2015] FCAFC 155 Notaras v Barcelona Pty Ltd (No 2)[2019] FCA 617 Owston Nominees No 2 Pty Limited v Branir Pty Ltd [2003] FCA 629; 129 FCR 558 Paciocco v Australia and New Zealand Banking Group Ltd (No 2) [2017] FCAFC 146; 253 FCR 403 Pantzer v Wenkart[2007] FCAFC 27 Polygram Records Inc v Raben Footwear Pty Ltd [1996] AIPC 91-284; 140 ALR 617 SZCZF v Minister for Immigration and Citizenship [2009] FCA 208; 107 ALD 138 Tropicana Ltd v Australasia Corporate Services Pty Ltd [2011] FCA 684 Victoria v Sportsbet Pty Ltd (No 2) [2012] FCAFC 174 Federal Court of Australia, Costs Practice Note (GPN-COSTS), 25 October 2016
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area	Trade Marks
Number of paragraphs:	72
Date of hearing:	Determined on the papers
NSD 15 of 2017
Counsel for the Applicants/Cross-Respondent:	S J Goddard and E E Whitby
Solicitor for the Applicants/Cross-Respondent:	Griffith Hack Lawyers
Counsel for the Respondents/Cross-Claimant:	A R Lang and J E McKenzie
Solicitor for the Respondents/Cross-Claimant:	MinterEllison
NSD 1802 of 2017
Counsel for the Appellant:	S J Goddard and E E Whitby
Solicitor for the Appellant:	Griffith Hack Lawyers
Counsel for the Respondent:	A R Lang and J E McKenzie
Solicitor for the Respondent:	MinterEllison

ORDERS

		NSD 15 of 2017
BETWEEN:	ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831) First Applicant ; ALLERGAN INC Second Applicant
AND:	SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151) First Respondent ; SELF CARE CORPORATION PTY LTD (ACN 132 213 113) Second Respondent ; SONIA AMOROSO Third Respondent
AND BETWEEN:	SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151) (and another named in the Schedule) First Cross-Claimant
AND:	ALLERGAN INC (and another named in the Schedule) First Cross-Respondent

order made by:	STEWART J
DATE OF ORDER:	5 March 2021

THE COURT ORDERS THAT:

1. The applicants are liable to the respondents for 90% of their party/party costs in this proceeding and proceeding NSD1802/2017.

2. Failing agreement between the parties on the quantification of those costs within 28 days of these orders, the costs to be determined on a lump sum basis by a Registrar of this Court.

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

ORDERS

		NSD 1802 of 2017
BETWEEN:	ALLERGAN INC Appellant
AND:	SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151) Respondent

order made by:	STEWART J
DATE OF ORDER:	5 March 2021

THE COURT ORDERS THAT:

1. Order 2 of the orders of 22 October 2020 is set aside.

2. Costs of this proceeding are costs in proceeding NSD15/2017.

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

REASONS FOR JUDGMENT

STEWART J:

Introduction

1. This judgment concerns the costs of the proceedings which, aside from costs dealt with here, I have previously determined. As there is no need for present purposes to distinguish between the various applicants or the various respondents, I shall refer to them simply as Allergan (the applicants) and Self Care (the respondents).

2. On 22 October 2020, I published reasons for judgment in these two proceedings: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 (the first judgment). The cases are:

1. NSD15/2017 (the main proceeding) in which Allergan advanced cases against Self Care for trademark infringement, misrepresentations contrary to the Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) (ACL), passing-off and infringements of the Therapeutic Goods Act 1989 (Cth), and in which Self Care by cross-claim sought removal of certain trademarks from the register, or for the scope of their registration to be reduced; and

2. NSD1802/2017 (the appeal proceeding) in which Allergan appealed against the decision of a delegate of the Registrar of Trade Marks to allow Self Care’s trade mark application in respect of FREEZEFRAME PROTOX to proceed to registration.

3. In respect of the main proceeding, I made orders that the parties prepare consent or competing orders, in accordance with my reasons and findings, to dispose of the...