Trafalgar Group v Boss Fire - Trade Mark Costs Appeal

Australia Federal Court Latest Judgments

Filed April 1st, 2026

Detected April 1st, 2026

Summary

Federal Court of Australia issued costs orders in trade mark appeal Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd. The appellant succeeded on appeal but received party-party costs with a 10% discount due to partial success. The Court rejected indemnity costs, finding the respondent's rejection of a Calderbank offer was not unreasonable given the extremely short timeframe (less than 28 hours) to consider it.

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What changed

The Court determined costs outcomes following a trade mark appeal between Trafalgar Group and Boss Fire. The appellant was not entirely successful on appeal as some aspects of registration were not pressed, warranting a 10% discount from full costs. The respondent succeeded on one ground but did not achieve the ultimate outcome sought. The Court declined to award indemnity costs, finding the rejection of a Calderbank offer was reasonable given less than 28 hours was provided on the last business day before trial to consider the offer.

This case provides guidance on costs in trade mark proceedings and the standard for when Calderbank offers can be rejected without penalty. Parties involved in trade mark litigation should ensure adequate time is given when making settlement offers, and be aware that extremely short response periods may protect recipients from adverse costs consequences.

Source document (simplified)

Original Word Document (80.6 KB) Federal Court of Australia

Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd (Costs) [2026] FCA 366

| File number(s): | NSD 970 of 2024 |
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| Judgment of: | NEEDHAM J |
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| Date of judgment: | 1 April 2026 |
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| Catchwords: | COSTS – offer made before trial commenced – respondent’s rejection of Calderbank offer not unreasonable in the circumstances of a very short period given to consider the offer – less than 28 hours in the last business day before the trial – indemnity costs not ordered

COSTS – appellant not entirely successful on appeal – some aspects of registration not pressed – respondent successful on one ground but not in the end result – discount of 10% of costs sought – appellant entitled to costs of the appeal on the party-party basis |
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| Legislation: | Federal Court of Australia Act 1976 (Cth) s 43

Federal Court Rules 2011 (Cth) r 39.05
Trade Marks Regulations 1995 (Cth) Schedule 8 |
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| Cases cited: | Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (No 2) [2012] FCA 1478

Calderbank v Calderbank [1975] 3 All ER 333

Gray v Richards (No 2) [2014] HCA 47; 315 ALR 1

Queensland North Australia Pty Ltd v Takeovers Panel (No 2) [2015] FCAFC 128; 236 FCR 370

Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2024] ATMO 122

Appellant | |
| AND: | BOSS FIRE & SAFETY PTY LTD (ACN 136 955 685)

Respondent | |

The Respondent pay the Appellant’s costs of the appeal on the party-party basis, as agreed or taxed.
The costs order made by the delegate of the Registrar of Trade Marks on 2 July 2024 in Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2024] ATMO 122 be set aside.
The Respondent pay the Appellant’s costs before the delegate as assessed pursuant to Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Order 3 of the Orders made on 4 March 2026 be varied to include the following words, after the words “Notice of Appeal.”:

To give effect to this order:

(a) The Registrar of Trade Marks amend the specification of Australian Trade Mark Registration No. 1313971 to remove the following goods:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances;

Class 6: Common metals and their alloys; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; safes; goods of common metal not included in other classes; ores; access panels being doors of metal including fire resistant doors of metal; fire resistant panels made of metal;

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; flexible pipes, not of metal;

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; glass including fire retarding glass; access panel being doors not of metal including fire doors not of metal; insulating materials including insulating boards (not of metal) for structural steel protection; non-metallic buildings having insulating properties including insulating materials sprayed onto structural steel to provide fire protection; insulating boards and sprays including fire resistant insulating boards and sprays for the protection of metal ducts;

(b) The Appellant provide a copy of these orders to the Registrar of Trade Marks forthwith.

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

REASONS FOR JUDGMENT

NEEDHAM J:

1 On 4 March 2026 I gave reasons in Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2026] FCA 202 (the judgment). I will use the same defined terms as in the judgment. I made orders:

(a) Allowing Trafalgar Group’s appeal against a decision of the delegate of the Registrar of Trade Marks in Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd [2024] ATMO 122;

(b) Allowing the parties to bring in either agreed orders as to costs, or to make submissions as to the costs of the non-use appeal; and

2 In relation to its costs of the non-use appeal, Trafalgar Group now seeks:

(a) That Boss Fire pay its party-party costs up to 4 pm on 18 July 2025, and on the indemnity basis thereafter; and

(b) That the costs order before the delegate be set aside and a costs order against Boss Fire be made in its favour.

3 The application for indemnity costs is based upon a Calderbank offer (being a letter dated 17 July 2025, which was relied upon in this costs application). It was expressed to be open until 4 pm the following day, and was expressed to be reasonable “for reasons set out in Trafalgar [Group]’s opening outline of submissions in the Non-Use Appeal …”. The 18 th of July was a Friday, with the hearing before me to begin on the following Monday, 21 July 2025.

4 The parties are agreed that costs should follow the event. The issues are, whether that should be costs of the entirety of the hearing, and on which basis.

5 In relation to costs generally, Boss Fire submitted that there should be a discount of the successful party’s costs of 10% to recognise that Trafalgar Group did not seek the entirety of its original relief in relation to the Registered Goods, the fact that Trafalgar Group was not successful on Ground 2 which was fully argued, and “its conduct of the appeal” (a reference, it seems, to the late recognition that the appeal could only succeed in respect of some of the Registered Goods). Boss Fire relied on the statement of the Full Court (Dowsett, Middleton, and Gilmour JJ) in Queensland North Australia Pty Ltd v Takeovers Panel (No 2) [2015] FCAFC 128; 236 FCR 370 at [11] as to the “three distinct categories of situation in which a successful party might be deprived of costs”.

6 In relation to indemnity costs, Boss Fire contended that it was not unreasonable to reject the offer, given the short period for which it was open, and because Trafalgar Group did not obtain a result “equal to or better than” Boss Fire’s ultimate result at trial, because of the retreat from the full suite of goods originally the subject of the appeal.

7 Embarking upon the exercise of determining costs, I must have regard to a number of factors, including that the discretion under s 43 of the Federal Court of Australia Act 1976 (Cth) is broad and unfettered. I must undertake a “broad evaluative judgment of what justice requires” (Gray v Richards (No 2) [2014] HCA 47; 315 ALR 1 at 2 [2], per French CJ, Hayne, Bell, Gageler and Keane JJ). In doing so, I am guided by the Calderbank principles and the making of indemnity costs orders should a party unreasonably reject a reasonable offer in circumstances where they do not improve their position after hearing.

8 As to the question of costs, clearly Trafalgar Group should have its costs, in both the proceedings before me (the non-use appeal) and before the Registrar. The recognition by Trafalgar Group during the hearing that it could not establish use for the whole range of goods for which the FYRE Device Mark was registered came late in the hearing; Boss Fire had to prepare for that and in particular cross-examine Mr Rakic, Trafalgar Group’s witness, in relation to them. While the submissions of Boss Fire on costs do not specifically say so, I gather that this is the “conduct of the appeal” ground referred to.

9 Boss Fire was also successful on Ground 2 (although that matter was only decided by me because, although Ground 1 was successful, the ground had been fully argued).

10 It seems to me that none of these matters incline my discretion towards ordering the 10% discount sought by Boss Fire. While some time was spent on Ground 2, and there was a late recognition that the use of the FYRE Device Mark was not sustainable over the entire range of goods, these are the kinds of matters which were referred to by McKerracher J in Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd (No 2) [2012] FCA 1478 at [5] where his Honour said: “In large scale commercial litigation, having regard to the complexity of issues involved, it is almost inevitable that the successful party may not win every argument”.

11 I do not consider that the matters raised, and retreated from, were frivolously brought; nor do I consider that the proceedings were run by Trafalgar Group in a way which needlessly increased the costs. The “win” for Boss Fire was not one which changed the outcome of the proceedings.

12 As for indemnity costs, I do not consider that it was unreasonable for Boss Fire to reject the Calderbank offer. It was open for, it seems, less than 28 hours. While the legal representatives and the parties would have been in a position to assess their prospects of success, an offer which is open only for the last business day before a three-day hearing is not a reasonable offer. I do not consider that I should impose the burden of an indemnity costs order on Boss Fire in these circumstances.

13 Boss Fire is to pay Trafalgar Group’s costs of the non-use appeal on the party-party basis, as agreed or taxed. The costs order made by the delegate of the Registrar of Trade Marks be set aside, and Boss Fire is to pay the Appellant’s costs before the delegate as assessed pursuant to Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Directions to Registrar

14 In the judgment, at [117], I ordered that the FYRE Device Mark remain registered only for a subset of the goods in accordance with the submissions of the appellant. In its submissions on costs and proposed orders, Boss Fire proposed that I make a direction to the Registrar to remove the other goods from the specification for the FYRE Device Mark. The proposed order is consistent with my reasons and Trafalgar Group did not make submissions in reply against it. Accordingly, I am prepared to make those orders given that it gives effect to my reasons; Order 3 of the Orders made on 4 March 2026 can be altered in accordance with the power to amend an order under r 39.05(e) or (h) of the Federal Cou r t Rules 2011 (Cth).

| I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Needham. |
Associate:

Dated: 1 April 2026

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