Energy Beverages LLC v Cantarella Bros Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judgment Date: 14 April 2022
• Neutral Citation: [2022] FCA 394
• Date: 14 April 2022
• Court: Federal Court

Federal Court of Australia

Energy Beverages LLC v Cantarella Bros Pty Ltd (No 2) [2022] FCA 394

File number(s):	NSD 1711 of 2019NSD 1858 of 2019NSD 63 of 2021
Judgment of:	HALLEY J
Date of judgment:	14 April 2022
Catchwords:	PRACTICE AND PROCEDURE – application for stay of dismissal orders pursuant to r 36.08 of the Federal Court Rules 2011 (Cth) (Rules) – whether stay or rectification of the Trade Marks Register more suitable course pending determination of appeal – consideration of Woolworths Ltd v BP plc (2006) 150 FCR 134; [2006] FCAFC 52 and Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97; [2006] FCAFC 132 – preservation of status quo and subject matter of appeal – whether stay in public interest – application granted ; PRACTICE AND PROCEDURE – application for stay of costs orders pursuant to r 36.08 of the Rules – stay of costs order not necessary or appropriate – application dismissed ; COSTS – application for indemnity costs pursuant to s 43(3)(g) of the Federal Court of Australia Act 1976 (Cth) (FCA Act) – principles in respect of Calderbank offers – where appellant party did not accept offer by respondent to settle proceedings – whether rejection of offer unreasonable or imprudent – where appellant would have been in materially better position if it had accepted offer – application granted ; COSTS – application for costs of stay and indemnity costs applications – neither party wholly successful – no order as to costs in respect of stay and indemnity costs applications ; PRACTICE AND PROCEDURE – application for suppression orders pursuant to s 37AF of the FCA Act – whether necessary to prevent prejudice to proper administration of justice – consideration of public policy – application granted
Legislation:	Federal Court of Australia Act 1976 (Cth) ss 37AG, 43 Federal Court Rules 2011 (Cth) r 36.08
Cases cited:	Alexander v Cambridge Credit Corporation Ltd (Receivers Appointed) (1985) 2 NSWLR 685 Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (No 2) [2018] FCAFC 112 Beling v Sixty International S.A. (No 2) [2015] FCA 355 Calderbank v Calderbank [1975] 3 All ER 333 Cantor v Audi Australia Pty Limited (No 4) [2019] FCA 1633 Centor Australia Pty Ltd v RMD Industries Pty Ltd (No 2) [2013] FCA 1407 CGU Insurance Limited v Corrections Corporation of Australia Staff Superannuation Pty Ltd [2008] FCAFC 173 Dukemaster Pty Ltd v Bluehive Pty Ltd [2003] FCAFC 1 Elliott v State of Victoria (Department of Education & Training) [2018] FCA 1029 Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113 Hazeldene’s Chicken Farm Pty Ltd v Victorian WorkCover Authority (No 2) (2005) 13 VR 435; [2005] VSCA 298 Merial Inc v Intervet International BV (No 4) (2017) 124 IPR 1; [2017] FCA 223 Powerflex Services Pty Ltd v Data Access Corporation (1996) 67 FCR 65 Red Bull Australia Pty Limited v Sydneywide Distributors Pty Limited t/as Sydneywide Bottlers Australia [2001] FCA 1750 Re Wilcox; Ex parte Venture Industries Pty Ltd (1996) 72 FCR 151 Tsirigotis v Victoria (Department of Education and Training) [2020] FCA 1771 Woolworths Ltd v BP plc (2006) 150 FCR 134; [2006] FCAFC 52 Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97; [2006] FCAFC 132
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Number of paragraphs:	132
Date of hearing:	29 March 2022
Counsel for the Appellant:	Mr N Murray SC with Ms S Ryan SC
Solicitor for the Appellant:	Davies Collison Cave Law
Counsel for the Respondent:	Mr A Bannon SC with Mr B Cameron
Solicitor for the Respondent:	Herbert Smith Freehills

ORDERS

		NSD 1711 of 2019
BETWEEN:	ENERGY BEVERAGES LLC Appellant
AND:	CANTARELLA BROS PTY LTD Respondent

order made by:	HALLEY J
DATE OF ORDER:	14 April 2022

THE COURT ORDERS THAT:

1. Order 2 made on 18 February 2022 in this proceeding requiring the appellant to pay the respondent’s costs, as taxed or agreed (Costs Order) be varied to provide that the appellant is to pay the respondent’s costs, as taxed or agreed, up to 30 June 2021 and the appellant is to pay the respondent’s costs on an indemnity basis as and from 30 June 2021.

2. There be no costs orders with respect to the application by the appellant for a stay of the Costs Order and the respondent’s application for an indemnity costs order.

3. Pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth) and on the ground that it is necessary to prevent prejudice to the proper administration of justice, publication or other disclosure of the following is prohibited, other than to the parties and their legal representatives in this proceeding for a period of 5 years from the date of this order:

   1. the parts of Confidential Annexures SMG-005 and 006 to the affidavit of Sue Maree Gilchrist affirmed on 8 March 2022 that are highlighted in pink, blue, red and green in the Annexures to the “Appellant’s submissions in support of suppression order” dated 5 April 2022 (Appellant’s Suppression Submissions);

   2. the parts of the “Appellant’s Confidential Submissions in Answer on Costs” dated 22 March 2022 that are highlighted in pink, blue, red and green in the Annexures to the Appellant’s Suppression Submissions;

   3. the parts of the “Respondent’s Submissions on Further Costs Orders” dated 8 March 2022 that are highlighted in pink, blue, red and green in the Annexures to the Appellant’s Suppression Submissions; and

   4. the Confidential Annexure to the reasons for judgment delivered on 14 April 2022 accompanying these orders (Confidential Judgment Annexure).

4. To give effect to Order 3, Confidential Annexures SMG-005 and 006 to the affidavit of Sue Maree Gilchrist affirmed on 8 March 2022, the “Appellant’s Confidential Submissions in Answer on Costs” dated 22 March 2022 and the “Respondent’s Submissions on Further Costs Orders” dated 8 March 2022 be removed from the Court file forthwith and replaced with appropriately redacted versions, to be prepared by the appellants within 14 days of the making of this order in accordance with r 2.29 of the Federal Court Rules 2011 (Cth). The unredacted versions and the Confidential Judgment Annexure are to be stored in a sealed envelope in the Court file.

5. No access is to be granted to any third party to the Confidential Judgment Annexure or the unredacted version of the documents listed in Order 4 above for a period of 5 years from the date of this order, or without leave of a judge of the Court.

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

ORDERS

		NSD 1858 of 2019
BETWEEN:	ENERGY BEVERAGES LLC Appellant
AND:	CANTARELLA BROS PTY LTD Respondent

order made by:	HALLEY J
DATE OF ORDER:	14 April 2022

THE COURT NOTES THAT:

1. The...