Firestone South Africa (Pty) Ltd v Gentiruco AG

• Jurisdiction: South Africa
• Judge: Trollip JA, Rabie JA, Muller JA, Corbett JA and De Villiers JA
• Judgment Date: 25 August 1977
• Citation: 1977 (4) SA 298 (A)
• Hearing Date: 24 May 1977
• Court: Appellate Division

Trollip, J.A.:

This application concerning costs is an aftermath of the vast and lengthy litigation between the D parties (referred to as Firestone and Gentiruco respectively) that culminated in an appeal by Gentiruco and a cross-appeal by Firestone to this Court in 1971. The decisions on those appeals are fully reported - 1972 (1) SA 589, and, as to costs, 1972 (2) SA 772. The facts, therefore, need not be fully repeated here. It suffices merely to summarize those giving rise to the E present dispute. They are:

(a) At the trial of the Gentiruco's action for infringement of its patent and Firestone's counterclaim for the revocation thereof the Commissioner of Patents granted judgment on both in favour of Gentiruco with costs. Concerning the costs the Commissioner said:

"(Gentiruco) asks that three counsel should be allowed for F taxation purposes. It is in the circumstances, in my view, a reasonable request. As to the prescribed fees for the perusal of documents I am asked to permit the Supreme Court scale to be made applicable instead of the rate laid down in the Fourth Schedule to the (Patents) Act. The maximum amount permissible in terms of the latter is R21 per document. That amount, it is suggested, may be inadequate for some of the very lengthy and highly technical records and publications disclosed in this case. I agree that a fair way of dealing with the situation is G to permit the taxing officer a wider discretion. Para. 4 of the Fourth Schedule reads: 'The Commissioner may in respect of matters heard before him at his discretion order that fees be awarded at a higher rate than that laid down in the Schedule'. Such an order, of course, even in patent matters, is rarely made because the subject - matter of patent cases is almost always of an involved and complex nature. I refer to the judgment of CLAYDEN, J., in a case...where a similar application was refused. The facts, however, of that case are H clearly distinguishable from the facts we are dealing with. In the present case the length of at least one document disclosed is an exceptional feature, which, I think, justifies such a special order in respect of the specified item of perusal."

Consequently, in ordering Firestone to pay the costs of suit, the Commissioner also ordered that:

"costs granted in terms of this order include the costs of three counsel, and that such costs be taxed at a rate higher than that laid down in the Fourth Schedule to the Patents Act, 37 of 1952, such rate in respect of

Trollip JA

perusal of document to be the rate of scale applicable to civil actions heard in the Supreme Court, with leave to approach the Commissioner, if necessary, to fix a specified fee for the perusal of any specific documents."

(b) Firestone's appeal against the Commissioner's judgment to the Full Bench of the Transvaal Provincial Division was substantially successful. That Court, in para. (6) of its order of 2 March 1970, ordered Gentiruco to pay the costs of the action, the counterclaim, and the appeal, except those in respect of the matters specified in para. (7), which Firestone B was ordered to pay. Para. (8) read: A

"(8) All the above costs are to include the qualifying fees of expert witnesses who were required to qualify and the costs of three counsel (such costs to be taxed at a rate higher than laid down in the Fourth Schedule to the Patents Act, 37 of 1952)."

In its reasons for judgment the T.P.D. drew the attention of C the taxing officer to the Commissioner's remarks about fees for the perusal of documents, saying that it agreed with them. However, it added a directive that the taxing officer should bear in mind that many pages in the exhibits would not require "perusal" but merely a glance by the attorney or patent agent to indicate that they were irrelevant. The T.P.D. then added to D para. (8) an order relating to the perusal of documents for the trial and appeal in terms similar to the Commissioner's order quoted in (a) above.

The effect, inter alia, of those orders was that Gentiruco had to pay Firestone's costs relating to the appointment and holding of a commission de bene esse in the U.S.A. at E Firestone's instance, including those costs relating to its employment of three counsel in connection with it.

(c) Thereafter Gentiruco applied to that Court for an amendment of its order for costs. The application was substantially successful. On 2 September 1970 the Court amended para. (7) by mulcting Firestone in further costs on specified matters. Para. (8) was also amended thus:

"The words 'such costs' and also the brackets in para. 8 F are deleted and after the word 'counsel' the following is inserted:

'save that the costs of only one counsel are to be allowed in respect of the proceedings before the U.S.A. commission; all counsel's fees are'." (My italics.)

Paras. (6), (7), and (8) of the T.P.D.'s order, as amended, are G set out fully in the report of the appeal to this Court (see 1972 (1) SA 589 at p. 667D - H). The italicised words were ultimately deleted from para. (8) by this Court - see infra.

(d) With the necessary leave Gentiruco appealed to this Court against those parts of the T.P.D.'s judgment and orders that were adverse to it. Firestone cross - appealed against certain H parts of the judgment and orders adverse to it, including some of the orders in para. (7) and that part of the order in para. (8) allowing it the costs of only one counsel for the U.S.A. commission. (See 1972 (1) SA at p. 598E - H.) This Court, however, struck Firestone's entire cross-appeal off the roll because it had not been granted leave to cross-appeal (see ibid. at pp. 608B - H). In consequence, this Court said, those orders in para. (7) and (8) that were adverse to Firestone had to stand (pp. 667 - 8). But Gentiruco's appeal against the orders in those paragraphs adverse to it was properly before

Trollip JA

this Court; they were duly considered; but they were affirmed (p. 673C). This Court, on 22 September 1971, granted leave to each party to apply for a variation of some of its orders of costs (see p. 674). These included the orders of costs for the A U.S.A. commission. After hearing the subsequent applications made by both parties for variations, this Court, inter alia, on Gentiruco's application, ordered Firestone to pay all the latter's costs incurred in respect of the U.S.A. commission (see 1972 (2) SA 772 at pp. 774B - 775E). This necessitated the striking out of the words relating to this commission in para. (8) of the T.P.D.'s order (see p. 776 in fin.).

(e) In the result the relevant part of para. (8) in its final form read: B

"All the above costs are to include the qualifying fees of expert witnesses who were required to qualify and the costs of three counsel; all counsel's fees are to be taxed at a rate higher than laid down in the Fourth Schedule to the C Patents Act, 37 of 1952."

(Incidentally, the Fourth Schedule is not part of the Act itself, but of the regulations promulgated under the Act, but in the present proceedings nothing turns on that ellipsis in the Commissioner's and T.P.D.'s orders.)

(f) The Fourth Schedule prescribes a tariff of fees payable to patent agents and attorneys, including a fee of 67c to R21 for D perusing and considering a document. Under the heading therein, "Bills of costs", item 4 endows the Commissioner with a discretion in respect of matters heard by him to order that fees be awarded at a higher rate than that laid down in the Fourth Schedule. (This item is quoted in full in the extract from the Commissioner's judgment in (a) above.) But the Fourth Schedule does not prescribe any tariff of fees for counsel. The E only provision relating to such fees is...