LG CORPORATION LIMITED V ATSPEC LIMITED HC WN CIV 2008-485-1782 [2009] NZHC 921 (3 August 2009)

IN THE HIGH COURT OF NEW ZEALAND
WELLINGTON REGISTRY
                                                                 CIV 2008-485-1782

              UNDER                      the Trade Marks Act 2002

              IN THE MATTER OF           an appeal from the decision
of the Assistant
                                         Commissioner of Trade Marks dated 17
                                 
       July 2008 and New Zealand Trade Marks
                                         Applications Numbers 744171 and 744172
   
                                     in the name of Atspec Limited

              BETWEEN                    LG CORPORATION LIMITED
                                         Appellant

              AND                        ATSPEC LIMITED
                    
                    Respondent


Hearing:      On Papers

Counsel:      R M Wallis for Appellant
              R J Hopkins for Respondent

Judgment:     3 August 2009


                       JUDGMENT OF SIMON FRANCE J
                             (Ruling as to costs)



[1]    This was an appeal by LG against a decision to allow registration of a
trademark submitted by Atspec. The appeal was unsuccessful.
The respondent
seeks an increased costs award as regards preparation time. The scale allowance is
0.75 days.


[2]    At the original
hearing, and initially on the appeal, Atspec was represented by
one of its officers.    However, subsequent to the initial appeal
management
conference, counsel was instructed. I accept the appellant's submission that this is
not a relevant factor. No doubt it
would have taken counsel more time to prepare
appeal submissions than would normally be the case, but it is not a reason why the


LG CORPORATION LIMITED V ATSPEC LIMITED HC WN CIV 2008-485-1782 3 August 2009

unsuccessful party should meet above scale costs.
               The appeal, although
unsuccessful, did not lack merit and was in that sense fairly brought.


[3]    The classification
agreed upon was 2B. It is well settled that the agreed
classification provides a firm starting point for costs liability. Early identification
of
the relevant scale can assist parties to conduct matters being aware of what the costs
situation is. It is equally well settled
that it is not binding and a Court may depart for
good reason.


[4]    The appeal was argued within a day. The calculation for scale
purposes is
0.75 days. That reflected a well-focussed approach by both counsel to their oral
submissions, and is not necessarily
indicative of what was involved in the appeal.


[5]    This was not an especially complex trademark matter. It was a question of
the visual impact of completing logos, given the context in which they would be
used. As is common in the area, the appeal hearing
invoked all the possible grounds
of objection within the Act, although they were pursued with varying levels of
enthusiasm. Counsel
for the respondent notes that the appellant's submissions were
36 pages. To that I would add that the casebook contained 23 authorities.


[6]    Notwithstanding it was not out of the ordinary for a copyright appeal, I do
consider that an allowance of 0.75 days was
significantly insufficient for the nature
of the appeal, and the issues involved. In making an adjustment to the scale I am
being
intentionally conservative.     This is because the appeal was not especially
complex for its type and I accordingly consider it
correct to be circumspect. Having
regard to the nature of the appeal, and the submissions filed by the appellant, I
consider it reasonable
to increase the scale allowance for preparation to two days. It
would not have been excessive had the appeal hearing taken a full
day to argue, and
it seems reasonable to me to allow twice that for preparation.

[7]     I accordingly allow two days preparation
time at the B rate but otherwise
confirm the original classification of 2B.




                                                
    ______________________________
                                                                          Simon France J



Solicitors:
R Wallis,
Baldwins Law Limited, PO Box 5999, Wellesley Street, Auckland
email: [e-mail]
R J Hopkins, AWS Legal, PO Box 1207,
Invercargill