G.P.-S.33967—4968-69—1,000.

- X
In the Supreme Court of South Africa.
In die Hooggeregshof van Suid-Afrika.
( A11ELLATE &&&£& Division.)
(—__ _______________ __ __________ _ —.... JProviiisiale Afdeling.)

Appeal in Civil Case.

Appel in Siviele Saak.
GLSNTIRUCO ... Appellant,
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 IN THE__ SUPREME COURT OF SOUTH AFRICA.

(APPELLATE division)
I
In the matter between:- I

GENTIRUCO A.G................... APPELLANT

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I
AND |

FIRESTONE SOUTH AFRICA (PROPRIETARY) LIMITED .. RESPONDENT

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Coram: Ogilvie Thompson, C.J., Trollip, Rabie, 1*

I
Muller, JJ.A. et Corbett, A.J.A, |

Heard: 19 November 1971« Delivered: /G February 1972.

JUDGMENT. 1
- i

Trollip, J. A. : - i
I
The provisional orders for costs made by

Í
this Court in this litigation and the reasons for them
I

are set out at the end of the judgment delivered on 22 1

Í

September 1971 (not yet reported) and need not be re- i

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peated here. In pursuance of paragraph D of those J

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orders Firestone applied, and Gentiruco counter-applied,
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I
for them to be varied in certain respects. This judge­

ment deals with those applications, and it should be I

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read with our previous judgment. (The references to .

x i
the latter are to the typed pages thereof.)
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I
This .... /2
 2
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This Court provisionally ordered Gentiruco

to pay 40$ of Firestone's taxed party and party costs |

in all three courts (excluding certain costs separately )

dealt with). Firestone in its application for a varia-|

tion claimed that it should be awarded all its costs, |

or, alternatively, that the proportion of 40$ should be •

substantially increased; Gentiruco resisted that appliH

i
cation and counterclaimed for an order that Firestone j

should pay a substantial proportion of its costs, or, I

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alternatively, for a substantial reduction of the pro­

portion of 40$, and for certain other relief. |

As appears from this Courtf s previous j

judgment, Firestone, although the successful party, '

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I
was provisionally not awarded all its costs of the
I

litigation because it had raised and failed on the |

objections of lack of novelty (anticipation) and I

subject-matter (inventiveness)» The first broad

F

submission made on its behalf was that the claims (

of the specification in suit were so vague and in- |

sufficient that it had acted reasonably and properly 1

I
j
in .... /3
 3

in raising and persisting in those objections. In

support thereof it invoked Nel v. Nel 19^-3 A0D. 280 j

at p. 288/9» The defect in the claims mainly relied )

upon was the uncertainty of the meaning of "computed |

Mooney”. That defect, it was pointed out, also affected

certain other integers in the claims and, indeed, per- |

meated all the claims, thereby vitiating them, as this |

Court has held. The expression "computed Mooney”, I

it was also emphasized, was hitherto unknown in the I

art; it had been coined by the inventors and used '

i
for the first time in the specification. Conse-
i
quently, so the argument proceeded, Firestone, when
i
sued by G-entiruco, was faced with the uncertainty of
i
the meaning of the claims created by the use of that

expression; hence, with its back to the wall in the j

litigation (cf. Nel v. Nel, ibid.).Firestone had ■

acted reasonably and properly, not only in raising j

those objections, but also in relying on an extensive .

range and variety of documents to prove them, i.e., to |

prove that, whatever the Court ultimately found the |

claims .... /4 |

I
 4

claims meant, they had been anticipated or were not

inventive. Indeed, it was even maintained that, by

framing the specification in such an ambiguous and

insufficient manner and by refraining throughout from

amending the claims to remove such defects, G-entiruco,

and not Firestone, was "responsible" for Firestone’s

having raised those ob jections and for the manner in

which they were canvassed. (For the origin of the

use of "responsible11 in this context, see the die turn

of Gardiner, J., in the Union Share Agency case, 1$26

CoP.D. 129 at p. 141, quoted on p. 272 of our previous

judgment,)

Those arguments, in my view, cannot

prevail,

Firstly, despite the novelty of the

concept and the uncertainty of the meaning of "compu­

ted Mooney", it must have been quite clear to Firestone

that the invention, as described and claimed in the

specification, related fundamentally to the use of

tough or high (measured) Mooney rubbers with a minimum

degree /5
 5

degree of toughness, i.e., those rubbers hitherto re­

garded as practically unprocessable (see pages 96, 172,

and 241 of this Court * s previous judgment), and that

the phrase ”a ’computed Mooney' plasticity of at least

90” was used in the relevant claims to express that

minimum degree of plasticity. (On this aspect I

think that any difficulty created by the rubber, Diene

55r can be disregarded, for it was an unusual rubber

and probably unknown at the effective date of the

specification - see p. 144 - and that must have been

known to Firestone at all material times.) Conse­

quently Firestone, being in doubt about the precise

meaning of the phrase, should nevertheless have assumed

at the outset that that integer of the claims involved

the use of tough rubbers with a measured minimum Mooney

of about 90, Accordingly, it could and should have

J
I

made and prepared for its objections of anticipation

and obviousness on that basis• That would have been

a safe, practical, and fair assumption to have made. ■

For it is clear from the explanation of "computed

Mooney" in the body of the specification (and this |

was ... /6
 6

was common cause) that, whatever its true meaning,

the computed Mooney of a rubber is sometimes the same

as, but it is never less than, its measured Mooney;

so, if tough rubber with a measured Mooney of a least

90 is assumed, it would mean that its computed Mooney

would also not be less than 90; and that is what

claim 1 (the broade s t claim) and mo st of the o ther

claims prescribed.

It was, however, submitted that, since

the meaning of ”computed Mooney” was so uncertain as

to be meaningless, Firestone was entitled to assume,

and this Court ought to have assumed, that rubbers

of any toughness or softness were useable in the in­

vented process. But that would have been quite un­

realistic . For this Court did not hold that the ex­

pression ”a ’computed Mooney

* plasticity of at least

90" was meaningless; it merely held that it was

uncertain which of four different possible meanings

or methods of computation it conveyed; and, in any

event, such an assumption would have been a travesty

 7

of the invention as described in the specification.

It was for those reasons that this Court itself, having

held that the meaning of "computed Mooney” was ambiguous

assumed that that integer of the claims involved the

use of tough rubbers having a measured Mooney of at

least 90 in order to determine those objections (see

pages 180 and 243). And despite Firestone's criti­

cism of it, I think that that assumption was correctly

made. Firestone should also have made and acted on

the same assumption at all relevant times. !

Indeed, it is clear, I think, that

Firestone, from an early stage, did approach the sit-

1

uation on that basis. Thus, Dr• Bull, who was mainly

responsible for collecting possible anticipatory docu­

ments for Firestone, explained under cross-examination

that, by 11 tough” rubber ”in the context of the anti­

cipations”, he meant generally rubber with a measured I

Mooney of more that 90, and that it was reasonable to

adopt that figure for the purpose of discussing anti-

i
cipation. And when Firestone 1s counsel opened its j

case .... /8
 8

case at the trial, he stated in regard to the ob­

jection of anticipation that, notwithstanding the no­

velty of the concept of computed Mooney,

11 the Court will accept, where necessary, a

conversion from the recognised standards of measure-

I
I

ment of viscosity, or plasticity, .... to this new

scale of 'computed Mooney1 .... (and) will be entitled

to use the inventors’ own definition, viz. that the

'computed Mooney' must be equal to, or greater than,

the actual measured Mooney, So that accepting for j

the purposes of this aspect of our case, that compu­

ted Mooney is a valid concept .... then it is sufficient

I
i

for us to show that rubbers had a measured Mooney of

at least 90 to bring those anticipated uses within the

scope of the claim".

The other ambiguities or insufficiencies

in the claims relied on by Firestone do not take its j

argument on this aspect any further.

Consequently, in my view, the ambiguity

I
I
or uncertainty of the meaning of "computed Mooney",

and /9
 9

and other defects in the claims, did not necessitate

or justify the production and use by Firestone of the

mass and variety of documents relating to anticipation

and obviousness (said by Gentiruco to be about 120

documents) and the protraction of the litigation caused

by them and the evidence concerning them. In that

regard it is also relevant to bear in mind that an

appreciable number of those documents were relied on

to prove obviousness; but, as Firestone did not prove

that they or any part of them constituted common know­

ledge at the relevant time, they did not even qualify

for consideration in the determination of that issue

(see pages 233 to 236); and the incurrence and wastage

of those costs were not in any way due to any defects

in the claims.

Secondly, I must confess to some diffi­

culty in understanding how, because of the defects

in the claims, Gentiruco was "responsible” for Fire­

stone T s having raised anticipation and obviousness as

objections, let alone for the somewhat extravagant

manner in which they were canvassed. However, in

order . /10
 10

order to dispose of this part of Firestone’s argument,

it suffices merely to say that we entertain no doubt

that, even if the claims had been reasonably certain

in meaning and not insufficient in any respect t Fire­

stone would still have raised those objections and

canvassed them in the manner that it did. Or to put ■

I
it in another way: we are satisfied that it was not |
I

the defects in the claims that induced Firestone to

raise those objections and to canvass them as it did,

but its determination to attack the patent on the

grounds of lack of novelty and subject-matter

*

In support of its argument under this

head Firestone also relied on sections 43 (6) and 54

(1) (a) of the Patents Act, No. 37 of 1952. Both

provisions say in effect that the Commissioner may,

in the exercise of his discretion as to costs, take

into consideration the conduct of the patentee in fra­

ming defective claims and permitting them to remain

defective. The situation postulated by those sections:

I
for the exercise of that discretionary power against 1

the .... /11

 11

the patentee, is, of course, not present here. It

only arises where the specification or claims are de­

fective but the Commissioner nevertheless decides in

the patentee's favour to uphold the specification, sub

ject to its being suitably amended, instead of revo­

king the patent, or to grant relief in respec t of any

valid claim that has been infringed. Nevertheless,

Firestone contended that those provisions embody a

principle of general application, namely, that a

patentee can and ought to be penalised by an adverse

order of costs for framing defective claims and allow­

ing them to remain defective. Assuming, without de­

termining, the existence and content of such a princi­

ple , I do not think that it ought to be applied here,

since, for reasons already given, there was no causal

connection between the defects in the claims and the

raising of and the manner of canvassing the objections

In other words, sections 43 (6) and 54 (1) (a) do not

advanc e Fires tone 1s c aus e.

Thirdly, even if it could be assumed

to .... /12
 12

to have been reasonable, proper, or prudent for Fire­

stone to raise those objections and to canvass them

in the manner that it did, I do not think that that

assists it. In our previous judgment we held that

it was reasonable and proper for Firestone to have

denied infringement, and, applying Nel v. Nel, supra,

we awarded the costs of that issue to Firestone (see

pages 282/3). But we provisionally differentiated

between the issues of infringement and of anticipation

and obviousness. In consequence, we provisionally

declined to apply Nel v. Nel, supra, to the latter

issues and preferred to adopt in respect of them the

dieta of Gardiner, J., in the Union Share Agency case,

supra, and of Bowen, L.J., in the Badische Anilin case,

2 R.P.C, 73 at p- 118. The reasons for doing so are

fully set out at pages 272 to 284, and need not be

repeated here. It suffices to say that I have not

been persuaded by Firestone's argument that our pro­

visional decision was wrong in any respect.

Consequently, Firestone * s first

submission .... /13

 13

submission fails.

Firestone’s second broad submission

for variation of the 40$ proportion related to the

particular order made by the Court a quo in paragraph

7 (e) of its orders, namely, that all the costs of the

trial and appeal to it occasioned by the calling of

certain overseas witnesses (Deutsch, Meishner, Hain-

bach, and Zutrauen) had to be paid by Firestone (see

p. 268). Firestone’s cross-appeal against that order

was struck off, so that the order in par. 7 (e) has

to stand (see p. 269)- In addition, this Court, in

provisionally ordering Gentiruco to pay 40$ of Fire­

stone 1s costs in each of the two lower Courts, excluded

the abovementioned costs therefrom (see paragraph C,

pages 289 and 290). The result is that Firestone

will therefore have to pay Gentiruco

s
* costs in the

lower Courts relating to the calling of those wit­

nesses, whilst Firestone's costs in those Courts re­

lating thereto are provisionally excluded from the 40$>

apportionment. (if the evidence of those witnesses

occasioned .... /14

 14

occasioned any costs to Firestone in the appeal to this;

I
Court they would be subject to the 40% proportion, for •

we made no order excluding them.) It should also be

explained here that those witnesses were called by

Firestone on the issues of anticipation and obvious­

ness . Firestone therefore submitted that, since the

Court a quo1s order in par. 7 (e) in Gentiruco's fa­

vour has to stand, "the overall picture of costs’* was

substantially altered, and that the effect of also

excluding those particular costs from the 40$ apportion

ment was "to penalise Firestone twice for the same

error of judgment", which was inequitable.

In considering this argument I find it

convenient to deal also with Gentiruco's counter­

application that the proportion of 40$ ought to be sub­

stantially altered in its favour. This Court, in

fixing that proportion, did take into account, as a

broad but not precise factor, the still extant, special

orders of the Court a quo obliging Firestone to pay

certain costs of Gentiruco’s, including those relating

to .... /15
 15

to the abovementioned witnesses. That is indicated

by the wording of the relevant orders. In Gentiruco’s

counter-application facts were furnished purporting

to show the amount of time taken up at the trial by the

evidence of those witnesses and by canvassing the

issues of anticipation and obviousness. Thus, the

evidence of those witnesses occupied 511 pages, or

about 10$, of the record of the viva voce proceedings.

That represents an appreciable amount of time at the

hearing. But as against that, the other data, and

especially the information on the documentary evidence,

concerning the issues of anticipation and obviousness

tend to show that the proportion of 40$ was somewhat

too favourable to Firestone. But the latter factor

must not be pushed too far in Gentiruco1s favour.

For it seems probable that Gentiruco* s data and informa

tion do not take sufficient account of the fact that

a not insubstantial portion of that evidence and those

documents related to the issues on which Firestone

succeeded, such as the state of the art at the relevant

time .... /16

 16

time and the technical background to the invention.

Those factors therefore tend to cancel each other out.

As explained in our previous judgment, the proportion

of 40% was a practical estimate of the appropriate

apportionment of the costs between the parties, and

it was only arrived at after long, careful, and

anxious consideration. In the result I have not been

persuaded by the arguments of either party that it was

wrong or ought to be altered•

Consequently, Firestonefs second sub­

mission and Gentiruco’s counter-application in regard

to the 40$ proportion both fail.

Gentiruco also submitted that Firestone

ought to be ordered to pay the costs relating to the

issue of infringement on grounds that can be summarised

thus: Firestone unnecessarily denied the relevant

facts relied on by Gentiruco, it adopted a tardy and

less than candid attitude towards its obligation to

discover documents relating to infringement, and the

costs thereby unnecessarily incurred by Gentiruco were

not
 17

not insubstantial. The reasons for provisionally

awarding those costs to Firestone appear from our

previous judgment (pages 282/3)» Counsel for Gen-

tiruco conceded that ordinarily, for those reasons,

Gentiruco should pay those costs, but he contended

that the aforementioned grounds constituted exceptional

circumstances justifying a different order. I do

not agree. Despite the argument to the contrary,

I still do not think that Firestone acted unreasonably

or improperly in completely denying infringement.

After all, the onus was on Gentiruco to prove it, and

in our previous judgment we merely assumed, without

deciding, in Gentiruco"s favour that it had discharged

that onus. Moreover, the evidence on the issue, which

was given by three witnesses, only took up about two

days of the trial, the argument in each Court less than

one day, and the relevant documents filled less than

one volume of the record. Hence, as our previous

judgment stated (p. 283)> the investigation of the

issue in each Court did not, relatively speaking,

unduly . /18
 18

unduly protract or materially add to the costs of the

litigation. Lastly, even if there were substance

in Gentiruco’s complaint about Firestonefs conduct

concerning discovery, I do not think that, by itself,

it justifies a variation of the order of costs at pre­

sent under inquiry. That order must therefore remain

undisturbed•

Gentiruco also raised the question of the

costs of the massive record of the trial that took

place in Baltimore, U.S.A,, concerning the American

patent, be tween the parent companies of the parties.

Its counsel submitted that the record was mainly, if

not wholly, irrelevant to any issue on which Firestone

had succeeded. It became common cause, however, that

the only order that could be made by this Court is

that the Taxing Master of the Court concerned should

determine in the ordinary way all questions arising

in regard to those costs. Such an order will be made.

That leaves for consideration the

question of the costs of the expensive U.S.A. Commission.

The .... /19

 19

The order for that commission was granted by consent

on Firestone's application. However, at the in­

stance of Gentiruco, the costs of the application and

commission were reserved for the decision of the trial

court; the order also expressly noted that Gentiruco

did not at any time concede that the commission was

necessary. The Court a quo, reversing the order made

by the Commissioner at the trial, ordered Gentiruco

to pay those costs, but allowed the costs of only one

counsel at the commission (see pages 266 to 270 of our

previous judgment). Gentiruco appealed, inter alia,

against that order. This Court, whilst not overlooking

that the commission dealt mainly with the issue of

inventiveness, nevertheless provisionally ordered those

costs to be costs in the cause. In doing so, it was

influenced by the view of the Court a quo that Gentiruco

had itself largely brought about the need for the com­

mission by unnecessarily refusing Firestone’s reasonable

requests to make certain admissions. That provisional

order means that if it stands, Gentiruco would have to

pay /20
 20

pay U0$> of Firestone’s costs of the commission. Gen­

tiruco contended that that would be inequitable, since,

for various reasons urged by it, Firestone ought to

be made to pay all the costs thereof.

We have been furnished with a copy of

the somewhat elaborate and complicated proceedings

for the issue of the commission. The answering affi­

davit filed on behalf of Gentiruco made its attitude

to Firestone * s application quite clear: it did not

concede that any of the evidence sought to be taken

was relevant to any of the issues to be canvassed at

the trial, but it appreciated that the Commissioner

could not at that stage determine its relevance or

admissibility; moreover, Gentiruco was not desirous

of holding up the trial, the commencement of which

had already been delayed; consequently, it agreed to

the granting of the commission, subject to the costs

being reserved and not being made costs in the cause

(as Firestone prayed), for, it submitted, if such evi­

dence turned out to be inadmissible on any ground,

Firestone /21
 21

Firestone should be ordered at the trial to pay the

costs.

In the result, the Commissioner, with

the parties’ consent, reserved the question of the

costs. Consequently, I think that the appropriate

order to make now must depend upon the nature of the

evidence actually taken on commission, its relevance

and probative value to the issues raised and de termined

in the litigation, and this Court’s decision on those

issues and on the costs relating thereto.

According to Firestone’s application

the evidence sought to be adduced on commission related

to (a) facts concerning anticipations, (b) facts con­

cerning certain documents which Firestone intended

using at the trial in connection with common knowledge,

(c) facts for the purpose of identifying and proving

the records of the trials in Baltimore and Canada,

(d) facts concerning criticisms of the specification

in suit, and (e) facts relevant to the allegation

i
I

that the specification and claims in suit were not

framed .... /22

 22

framed in good faith, and with reasonable skill and

knowledge.

The evidence adduced on commission re­

lating to (a) and (b) was directed mainly at proving

the publication, circulation, or accessibility in the

U.S.A, of certain documents, including some of the

tire test reports dealt with in our previous judgment

(see pages 239 and 24o), and at showing that some of

them were in the possession of General Tire and Rubber

Company or were known or available to certain of its

employees, including the inventors of the patent in

suit. Its relevance and probative value to the issues

of anticipation and common knowledge or inventiveness

are most obscure and its contribution to proving the

state of the art at the relevant time or the technical

background to the invention in suit was negligible, if

not nil. Firestone should therefore bear the costs

of such evidence, since we have held that it failed

on those issues and is liable for most of Gentiruco1s

costs relating thereto.

No .... /23
 23

No evidence was adduced on (c), presumabl

because the parties came to some arrangement about the

records of the Baltimore and Canadian trials.

In regard to (d) and (e), the only wit­

ness examined was one TeGrotenhuis, a lawyer, who

assisted in drafting the American and South African

patents. His examination was directed at showing

that he and the inventors possessed certain informa­

tion at the time the invention was evolved, and also I

at proving that there were certain discrepancies in

the figures and data between the South African speci-

i

fication and certain disclosed documents. These dis­

crepancies were ultimately admitted by Gentiruco at

the hearing before the Commissioner but without its

conceding their relevancy. Again, the relevance and

probative value of that evidence to any issue between

the parties at the trial is not apparent. Certainly, í

i
i
I
the allegation of want of good faith or absence of

reasonable skill and knowledge in framing the specifi­

cation and claims was not put to TeGrotenhuis crisply•

And .... /24

 24

And if that allegation was relevant, as, for example,

to a possible attempt by G-entiruco to amend the speci­

fication, and TeGrotenhuis1s evidence thereon was

necessary, the allegation in Firestone’s application

for the commission - ”from enquiries made by it

Firestone believes that Mr. TeGrotenhuis is unwilling

to come to this country to testify on behalf of Fire­

stone” - was not substantiated. For at the commission

he testified, without being challenged thereon, that

he was never asked by anyone whether he was willing

to come here to testify in person.

On the question of Gentiruco’s alleged

unreasonable refusal to admit certain facts, thereby

rendering the commission necessary, the position is

as follows. Gentiruco did make many admissions in

terms of Firestone’s requests. But Firestone alleged

in its application that the commission was nevertheless

essential because Gentirucofs qualifications to those

admissions rendered them inadequate to establish the

facts that Firestone was seeking to prove. In reply

to .... /25
 25

to that allegation Gentiruco pointed out that it had ,

previously informed Firestone that, if it reframed

its requests for admission without referring to the

record of the Baltimore trial, Gentiruco might make

further admissions, but, it alleged, that was never

done, in consequence of which, when the trial was set

down for hearing in September 1967, it (Gentiruco)

had then refused to make any further admissions.

But, Gentiruco stated further, once the relevant docu­

ments had been properly identified and considered by

it, it would be in a position to make further admission^

i

which might eliminate the need for some of the evid-

dence sought to be taken on commission. (That

apparently did subsequently happen.) Firestone answered

by denying that its requests for admissions were not

thereafter reframed and that the relevant documents

i
had not hitherto been properly identified, and it con­

cluded by stigmatising Gentirucofs attitude as being

throughout "obstructive”.
i
In view of that dispute on the affidavits,

I .... /26
 26

I cannot say, at any rate without having heard argu­

ment thereon, that Gentiruco

s
* refusal to make further

or unqualified admissions was unreasonable at the time

of the application for the commission. And, in any

event, even if it was then unreasonable, I do not think

that it has now any decisive bearing on the issue of

the costs of the commission. For, as stated earlier,

that issue must now be resolved by the nature of the

evidence actually taken on commission, its relevance

and probative value to the issues in the litigation,

and this CourtT s decision on those issues and on the

costs relating thereto.

Section 76 (1) (g) of the Patents Act,

1952, empowers the Commissioner to issue commissions

de bene esse. That discretionary power is exercisable

"where it appears convenient or necessary for the pur­

poses of justice” (see Rule of Court 38 (3), rendered

applicable by the concluding part of section 76 (1)

and section 82 (1) of the Patents Act). Despite ;

Gentiruco1s disputing from the outset the relevance

and . /27
 27

and admissibility of the proposed testimony, it must

have appeared, prima facie, to the Commissioner that

it was convenient or necessary for the purposes of

justice for the commission to issue, especially as

Gentiruco consented thereto. However, as costs

were reserved and in view of that dispute and Gentiruco’s

present application, I think that the onus is on

Firestone, as the applicant for the commission, to

satisfy us now that the commission was convenient or

necessary for the purposes of justice in order to justi

fy our confirming that the costs should be costs in

the cause. For reasons already given, I do not think

that Firestone has discharged that onus. Moreover,

as also pointed out above, in so far as the commission

related to the issues of anticipation and inventive­

ness, the liability for those costs must fall on Fire­

stone. It should therefore be ordered to pay all ,

those costs. It follows that it should also pay all

Gentiruco's costs incurred on the appeals to the Court

a quo and this Court in respect of the viva voce and '

documentary
 28

documentary evidence taken on the U„S.A, commission.

But the time of the actual hearing on the appeals taken

up by such evidence was negligible, and the same can

be assumed to apply to the trial, since the contrary

was not contended. Hence, for taxation purposes,

such time can be ignored. The provisional orders

previously made by this Court must therefore be

varied accordingly.

As to the costs of the present pro­

ceedings, we were asked by Firestone to order that they

be costs of the appeal on the merits, since, it was

contended, the present proceedings were merely an

extension of the hearing of that appeal. It is true

that, where this Court leaves the question of costs

open for later debate, such an order may be justified.

I

But the present proceedings are distinguishable from

such a situation. We canvassed the question of costs

I
fully in our previous judgment, arriving at certain

provisional conclusions thereon, in an effort to in­

duce finality in this lengthy litigation and especially

to .... /29
 29

to avoid the expense of a hearing on costs. Hence,

the present proceedings are not merely an extension

of the hearing of the appeal on the merits; they are

in reality fresh proceedings initiated by the parties’

applications to have the provisional orders varied.

Now Firestone has failed entirely in its application,

whereas Gentiruco has succeeded in having the pro­

visional orders amended in an important respect, which

was also an issue that it raised by its appeal to this

Court against the relevant orders of the Court a quo•

Consequently I think that Centimeo is entitled to

these costs. To make them costs of the appeal would,

mean condemning Gentiruco to pay 40$ of Firestone’s

costs of proceedings in which Gentiruco has succeeded

and Firestone has failed, which would be most in­

equitable .

The following orders are therefore made:

I. The orders made on 22 September 1971 by this Court

are amended in terms of paragraph D thereof as follows I

(i) .... /30

 30

(i) . Paragraph B2 thereof is amended to read as

follows:-

"2(a). Firestone is ordered to pay the costs

of the appeal to this Court relating to the

recorded viva voce and documentary evidence

taken on the U.S.A, commission granted on (

Firestone's application. ( I

(b) . For the purpose of the taxation of

costs, the length of time occupied by the

hearing relating to such evidence can be re­

garded as nil.

(c) . G-entiruco is ordered to pay of

Firestone1s taxed party and party costs of thé

appeal, including the costs in respect of

three counsel, but excluding those costs

dealt with in this sub-paragraph and para- I

graph A hereof”.

(ii) . Paragraph C thereof is amended to read as

follows:-

”C. The Orders of the Court a quo. i

1. Paragraph (6) of the orders of the Court a

quo, as amended, is amended to read as fallows:

 31

1 (6) . Save to the extent set out in.

paragraph (7) hereof, the Respondent (Gen-

tiruco) is ordered to pay -

(a) . 40$ of Appellant’s (Firestone’s) ,

taxed party and party costs of the action

and counterclaim, excluding those particular

costs mentioned in paragraph (7) hereof;

(b) , 40$ of Appellant’s (Firestone’s) j

taxed party and party costs of the appeal,

including the costs of the application to (

amend this Court's order, but excluding those ■

i

particular costs mentioned in paragraph (7)

hereof;

(c) . Appellant’s (Firestone’s) taxed

party and party costs in respect of Responderit1s

(Gentiruco1s) application for leave to take

evidence on commission in the U.S.A.

(d) . Appellant’s (Firestone’s) taxed

party and party costs for its application

for the setting aside of certain notice of

set .... /32

 32

set down filed by the Respondent (Gentiruco)

for 16 May 19^6. r I

2. Paragraph (7) of the orders of the

Court a quo, as amended, is amended by adding the follow­

ing sub-paragraph thereto -

'(f). Firestone is ordered to pay the

1I

costs of its application to take evidence on commission

in the U.S.A., the costs appertaining to such commission,

and the costs of the trial and appeal relating to the

recorded viva voce and documentary evidence taken on

that commission. For the purpose of the taxation

of costs, the length of time occupied by the hearing |

at the trial and on appeal relating to such evidence

can be regarded as nil.1 |

3- Paragraph (8) of the orders of the I

Court a quo, as amended, is amended by deleting the

words, * save that the costs of only one counsel are to !

be allowed in respect of the proceedings before the ,

U.S.A, commission.’”
III

II The following paragraphs are added to the orders

I
of .... /33 '
 33

of this Court made on the 22 September 1971 -

”E. All questions whether, and if so,

to what extent and in what amount or amounts, the costs

of Firestone relating to the record of the trial in

Baltimore, U.S.A., should be allowed and taxed in Fire­

stone’s party and party costs in any court, shall be

de termined in the ordinary way by the Taxing Master

concerned.

F. Firestone is ordered to pay the costé

of the parties1 applications and the hearing on 19

November 1971 for the variation of the provisional

orders made on 22 September 1971» such costs to in­

clude the costs relating to three counse

W.C. Trollip, J.A

concur.