Cadbury UK Ltd v The Comptroller General of Patentsdesigns and Trade Marks Société Des Produits Nestlé S.A. (Intervener)
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin |
| Judgment Date | 07 July 2016 |
| Neutral Citation | [2016] EWHC 1609 (Ch) |
| Court | Chancery Division |
| Date | 07 July 2016 |
| Docket Number | Case No: CH/2015/0325 |
[2016] EWHC 1609 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY
DIVISION INTELLECTUAL PROPERTYON
APPEAL FROM THE REGISTRAR OF TRADE
MARKS Decision No-0281-15
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr John Baldwin QC
(sitting as a Judge of the Chancery Division)
Case No: CH/2015/0325
and
Iain Purvis QC (instructed by Charles Russell Speechlys LLP) for the Appellant
Nicholas Saunders (instructed by the Treasury Solicitor) for the Respondent
Simon Malynicz QC (instructed by RGC Jenkins & Co) for the Intervener
Judgmenton Costs
I handed down judgment dismissing this appeal on 18 April 2016 and am now asked to deal with costs. The Appellant (Cadbury) has agreed to pay the costs of the Respondent (the Comptroller), estimated to be about £13,000, but there is a dispute regarding the costs of the Intervener (Nestlé). The parties requested that their submissions be put forward in writing and that the issues be determined without a hearing and I agreed to that course.
Nestlé asks for its costs (including the costs of its application to intervene) and its bill is some 5 times greater than that of the Comptroller. Its submissions are simple. It says that the appeal was dismissed, that its application to intervene should have been consented to at the outset, that its arguments were accepted by the Court and that it should have its costs in accordance with the usual principles, i.e. in the normal course the winner gets his costs.
Furthermore, it points to the correspondence prior to its joinder in the appeal. For example, there is a letter of 14 October 2015 wherein the Comptroller indicated that his position in relation to Nestlé's application to intervene was neutral, that if the application were granted he would consider that the appeal would, in effect, become an inter partes dispute between Cadbury and Nestlé and that he would seek directions that his skeleton argument be filed and served within 14 days of Nestlé's. He went on to observe that his role in appeals to the Court was to seek guidance on the law and to act in the public interest and that, in these circumstances, there may be no need to add significantly to the position set out by Nestlé in its skeleton.
The Comptroller reserved the right to rely on additional or alternative arguments and, in fact, what happened was that the Comptroller presented a detailed skeleton argument and counsel on his behalf made the main argument for the Respondents on the appeal.
Nestlé also drew attention to the fact that, prior to Cadbury's application to the Comptroller in suit (which was premised on the assumption that the relevant registration was for a series of trade marks), Nestlé had invited Cadbury to surrender its registration (following the Court of Appeal decision in Société des Produits Nestlé S.A v Cadbury UK Ltd [2013] EWCA Civ 1174, which was in relation to a mark with the same description as that in suit).
Nestlé also submitted that it had a direct interest in the appeal, the mark having been relied upon in infringement proceedings brought against it, and that direct interest justified its intervention. It also pointed out that Cadbury originally resisted the application to intervene, only consenting at the 11 th hour which, alone, it says led to the expenditure of over £20,000 by way of costs.
Finally, Nestlé observed that its submissions had been of assistance to the Court and this...
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