Gimex International Groupe Import Export v The Chill Bag Company Ltd and Others
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss |
| Judgment Date | 20 September 2012 |
| Neutral Citation | [2012] EWPCC 34 |
| Date | 20 September 2012 |
| Court | Patents County Court |
| Docket Number | Case No: 0CL70142 |
[2012] EWPCC 34
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
His Honour Judge Birss QC
Case No: 0CL70142
Hugo Cuddigan (instructed by Collyer Bristow) for the Claimant
The First, Second and Third Defendants did not appear and were not represented Matthew Kime (instructed by Ormrods) for the Fourth and Fifth Defendants
Hearing dates: 20th July 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
His Honour Judge Birss QC
His Honour Judge Birss QC:
In this action the Claimant Gimex contends that the defendants are liable for infringement of Community Registered Design No. 616057–0001 as a result of sales of a product called the Chill Bag. The first and second defendant companies dealt in the Chill Bag. The third, fourth and fifth defendants did not themselves deal in the Chillbag but Gimex contends they are personally liable for the acts of the companies. The defendants all denied that the Chill Bag was an infringement and contended that the design was invalid. The personal defendants also denied individual liability for the acts of the companies.
In my judgment handed down on 20 th July 2012 [2012] EWPCC 31 I decided that the registered design was valid and that the Chill Bag product was an infringement. As I explained in that judgment, in effect it was a preliminary issue in that the questions of personal liability were hived off at the CMC to be decided upon later. I gave directions for an enquiry as to damages caused by the infringements and for the issue of personal liability to be dealt with at the same further hearing. It may very well be that in the light of the judgment that the Chill Bag product infringes a valid registered design, the remaining issues in the action can be settled.
Before me Hugo Cuddigan appeared for Gimex instructed by Collyer Bristow and Matthew Kime appeared for the fourth and fifth defendants instructed by Ormrods. The first, second and third defendants did not appear and were not represented. In my main judgment (paragraph 2) I described these two groups of defendants as two "camps". The two camps filed separate pleadings, separate (but not materially different) evidence and were separately represented.
At the hearing on 20 th July one matter to be considered was costs. Clearly Gimex were entitled to an order for costs in their favour of some kind. Mr Kime did not dispute this in general terms although there were a number of detailed issues arising on the summary assessment. They were dealt with at the hearing. However an issue of principle also arose. This was about the costs cap. The problem was as follows.
The actual costs Gimex had incurred in these proceedings were about £119,000. This was a single bill attributable to the proceedings as a whole. In principle Gimex's costs could have been broken down into three groups: costs attributable to the proceedings generally and therefore for which both camps of defendants should be jointly and severally liable; costs attributable solely to one camp; and costs attributable solely to the other camp. In other cases it may be important to distinguish between these three categories, however in this case, at this stage, it is obvious that the vast majority of the costs fell into the first category. It would have been disproportionate to spend yet more costs identifying the very small amounts in the second and third categories.
Gimex contended that in the circumstances, since it was litigating against defendants who divided into two camps, it was entitled to apportion the total between the two camps of defendants and then have each portion assessed by applying the various stages of the appropriate PCC scale. The costs against each camp would be covered by the £50,000 cap under CPR Part 45 r 45.42(1). The result was that Gimex sought about £45,000 from each camp. Thus the total award to Gimex would be about £90,000.
I heard counsel and decided that this was not the right approach. The defendants as a whole were jointly and severally liable for the claimant's costs. The claimant's costs were summarily assessed as a single set of costs for each stage with a single overall cap.
Given that the issue raises an important question of practice and procedure in the PCC system, I informed the parties that my detailed reasons for this would be set out in a reserved judgment. This is that reserved judgment. There will be no need to attend the handing down of this judgment.
The relevant provisions of the CPR are VII of Part 45 and in particular r45.42, as follows:
VII Scale Costs for claims in a patents county court
Scope and interpretation
45.41 (1) Subject to paragraph (2) this Section applies to proceedings in a patents county court.
(2), (3) ….[ immaterial ]
(4) "Scale costs" means costs as defined in rule 43.2(1)(a)
Amount of scale costs
45.42 (1) Subject to rule 45.43 the court will not order a party to pay total costs of more than –
(a) £50,000 on the final determination of a claim in relation to liability; and
(b) £25,000 on an inquiry as to damages or account of profits
(2) The amounts in paragraph (1) apply after the court has applied the provision on set off in accordance with rule 44.3(9)(a).
(3) The maximum amount of scale costs that the court will award for each stage of the claim is set out in the Costs Practice Direction.
(4) The amount of the scale costs awarded by the court in accordance with paragraph (3) will depend on the nature and complexity of the claim.
(5) [ immaterial]
Section 25C of the Costs Practice Direction then sets out tables of the scale costs for each stage of a claim up to the determination of liability and for each stage of an inquiry as to damages or account of profits.
Mr Cuddigan submitted that it was fair and reasonable for his clients to recover in effect two lots of capped costs in this case. His primary reason was as follows. Had Gimex lost and...
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