Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 3)

• Jurisdiction: Australia Federal only
• Judgment Date: 22 June 2023
• Neutral Citation: [2023] FCA 683
• Date: 22 June 2023
• Court: Federal Court

Federal Court of Australia

Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd (No 3) [2023] FCA 683

File numbers:	NSD 15 of 2017NSD 1802 of 2017
Judgment of:	STEWART J
Date of judgment:	22 June 2023
Catchwords:	COSTS – competing applications for costs associated with an application for a stay of first instance proceedings pending outcomes of applications for special leave to appeal, and any appeals, to the High Court
Cases cited:	Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530 Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2021] FCAFC 163; 393 ALR 595 MTR Corporation (Sydney) NRT Pty Ltd v Thales Australia Ltd[2020] NSWCA 226 Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	27
Date of last submissions:	16 June 2023
Date of hearing:	Determined on the papers
Counsel for the Applicants:	S L Ross
Solicitor for the Applicants:	Griffith Hack Lawyers
Counsel for the Respondents:	A R Lang SC
Solicitor for the Respondents:	Gilbert + Tobin

ORDERS

		NSD 15 of 2017 NSD 1802 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 ; MS SONIA AMOROSO Third Respondent
AND BETWEEN:	SELF CARE IP HOLDINGS PTY LTD (ACN 134 308 151) Cross-Claimant ; SELF CARE CORPORATION PTY LTD (ACN 132 213 113) Second Cross-Claimant
AND:	ALLERGAN INC Cross-Respondent ; ALLERGAN AUSTRALIA PTY LTD (ACN 000 612 831) Second Cross-Respondent

order made by:	STEWART J
DATE OF ORDER:	22 JUNE 2023

THE COURT ORDERS THAT:

1. The applicants pay the costs of and incidental to the respondents’ application for a stay of the proceedings, from 10 December 2021 up until the stay was consented to by orders on 14 February 2022, including the costs of the case management hearing on 16 December 2021.

2. The applicants pay the costs of the parties’ competing applications in respect of the stay-related costs.

3. Failing agreement between the parties on the quantification of the costs in orders 1 and 2 within 28 days of these orders, the costs be determined on a lump-sum basis by a Registrar of the Court.

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

REASONS FOR JUDGMENT

STEWART J:

Introduction

1. There are competing applications before me with regard to costs associated with an application by the respondents for a stay of first instance proceedings pending the outcome of applications for special leave to appeal to the High Court and, if special leave were granted, the appeals. The stay was ultimately ordered by consent, but no order was made in relation to the respondents’ costs associated with their application for the stay. The respondents were thereafter granted special leave to appeal and they were successful in their appeals to the High Court: Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[2023] HCA 8.

2. The respondents seek an order that the applicants are liable to them for their costs of and incidental to their request for a stay of the proceedings. The applicants, in contrast, seek an order that the applicants and the respondents bear their own costs of and incidental to the respondents’ request for a stay of the proceedings.

3. For the following reasons, I have concluded that the respondents should have their costs of the stay application, including from when they first requested such a stay on 10 December 2021 until orders granting the stay were made by consent on 14 February 2022.

The relevant events

4. There are two principal proceedings. In proceeding NSD15/2017, the applicants (conveniently referred to as Allergan) made claims against the respondents (conveniently referred to as Self Care) of trademark infringement, breach of the Australian Consumer Law (ACL) and passing off. In proceeding NSD1802/2017, Allergan appealed from a decision of a delegate of the Registrar of Trade Marks to allow Self Care’s application for registration of a trade mark. There was also a cross-claim in that proceeding for the removal from the register of a mark of Allergan’s in a particular class for non-use and for cancellation of a defensive mark in respect of a particular class.

5. On 1 December 2017, Yates J ordered that the two proceedings be heard together and that the quantification of the loss and damage claimed by Allergan be heard and determined separately from and after all questions of liability had been determined.

6. The matters then proceeded to trial on that separated basis. On 22 October 2020, I published reasons for judgment in which I explained why all but one of Allergan’s claims (being a particular ACL claim) should be dismissed, Allergan’s trademark appeal should be dismissed, Self Care’s cross-claim for cancellation of a defensive mark should be dismissed and Self Care’s cross-claim for removal of a mark should succeed. See Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2020] FCA 1530. Agreed orders giving effect to those reasons were made on 7 December 2020.

7. Allergan appealed from those orders to the Full Court. In the meanwhile, the parties sensibly agreed that the relevant orders be stayed pending the appeal.

8. The Full Court substantially upheld Allergan’s appeal on 7 September 2021: Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd[2021] FCAFC 163; 393 ALR 595. The proceedings were remitted to me for determination of the various damages claims and an account of profits, and to decide a costs question. On 13 October 2021, the Full Court made various declarations with regard to trademark infringement and the ACL claims, and injunctions against Self Care restraining them from using certain phrases or descriptors in relation to their products. Those orders also foreshadowed an application by Self Care, to be filed within seven days, to stay the injunctions.

9. In the meanwhile, on 5 October 2021, Self Care had filed applications for special leave to appeal to the High Court against the orders of the Full Court.

10. On 19 October 2021, Self Care by their new solicitors, Gilbert + Tobin, wrote to Allergan by their solicitors, Griffith Hack, making a proposal with regard to the injunctions being stayed pending the outcome of the special leave applications. Griffith Hack responded, refusing the request for a stay of the injunctions and proposed that the proceedings continue notwithstanding the special leave applications.

11. On 29 November 2021, Griffith Hack requested a case management hearing in order to progress the matters. It was only in response to that, on 10 December 2021, that Gilbert + Tobin proposed that the proceedings should be stayed, arguing that it was premature to fix a timetable to progress the process of determining damages and any account of profits when there was the potential that the Full Court’s findings of trademark infringement and breaches of the ACL might be overturned.

12. Allergan pressed for the first instance proceedings to continue into a discovery and quantum phase, and for the determination of the outstanding costs question, notwithstanding the special leave applications and Self Care’s articulated position that progress in the first instance proceedings should be held in abeyance pending the outcome of the special leave applications. Allergan required Self Care to file a stay application and at the same time pressed for extensive procedural...