Global Flood Defence Systems Ltd and Another v Johan Van Den Noort Beheer BV and Others
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 05 February 2016 |
| Neutral Citation | [2016] EWHC 189 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Date | 05 February 2016 |
| Docket Number | Case No: IP-2014-000093 |
[2016] EWHC 189 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
His Honour Judge Hacon
Case No: IP-2014-000093
Michael Hicks (instructed by Shakespeare Martineau) for the Claimants
Tom Alkin (instructed by DTM Legal LLP) for the Defendants
Hearing date: 1 February 2016
On 1 February 2016 I handed down judgment following the trial of three issues. In the first of them the claimants alleged that the defendants had made groundless threats of patent infringement. Because of the way the case had developed, if the claimant did not establish its allegation of unjustified threats this part of the case had to be adjourned to be heard at a later date. The second and third issues concerned the claimants' claim for misrepresentation and the defendants' counterclaim for minimum royalties due under a patent licence agreement.
The proceedings against the third defendant were settled before the trial, so here, as in the earlier judgment, 'the defendants' means just the first two.
I held that the claim in relation to threats should be adjourned, the claim for misrepresentation failed and the counterclaim for outstanding royalties succeeded. One of the matters to be resolved after the judgment was handed down was costs. I now give reasons for my decision on costs.
The defendants sought their costs in relation to misrepresentation and royalties due, subject to the costs caps which apply in this court. The claimants submitted that an order for costs could not be made until judgment had been given in the threats allegation.
The material paragraphs of CPR 45.31 provide:
45.31 (1) Subject to rule 45.32, 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 44.12(a).
(3) The maximum amount of scale costs that the court will award for each stage of the claim is set out in Practice Direction 45.
Rule 45.32 concerns costs of an application where a party has behaved unreasonably, which does not arise here. The reference to rule 44.12(a) contains a typographical error: it should be rule 44.12(1)(a), which provides that where a party entitled to costs is also liable to pay costs to the other side, the court may set off one against the other and direct that the balance be paid.
In the normal course at the end of a trial in the IPEC, the court will decide which party is the overall winner. The winner may have lost in relation to some issues. That does not necessarily mean that the winner's costs will be subject to a discount or that there will be a set-off, but in appropriate cases this will be done. Each of the stage costs incurred by the winner will be subjected to summary assessment and then, if appropriate, a discount or a set-off will be applied to each of the assessed costs. The total of all the assessed stage costs after discount or set-off will be awarded, subject to the £50,000 overall cap. See BOS GmbH & Co KG v Cobra UK Automotive Products Division Ltd [2012] EWPCC 44, at [23]–[24].
Mr Hicks, who appeared for the claimants, said that until after the trial of the threats allegation it was not possible to say which was the overall winning party or whether the court should apply a discount or set-off to that party's costs. The assessment of costs had to be adjourned.
Mr Alkin, who appeared for the defendants, argued that this was the wrong approach. He relied on what His Honour Judge Birss QC said in Destra Software Limited v Comada (UK) LLP [2012] EWPCC Civ 39. This was an application by the defendants to transfer the case from the Patents Count Court (PCC) to the High Court. The case was about copyright in software. Judge Birss identified seven issues that would have to be decided at trial, one of which was a central argument advanced by the defendants: they said that there was a necessary implication in all the circumstances that they owned the copyrights in issue or had an implied licence under them. The judge decided that the best way forward was to try the ownership/licence issue as a preliminary point in the PCC and review matters thereafter. Towards the end of the judgment he said this:
"What happens to the costs cap in a preliminary issue case? It seems to me the position is clear. This will be a trial and the PCC stages that apply to and include a trial will apply. I realise that that means that if the rest of...
To continue reading
Request your trial
-
(1) Nicholas Martin v Julia Kogan
...Limited [2012] EWPCC Civ 40; [2013] F.S.R. 38 at [13]–[15] and Global Flood Defence Systems Ltd v Johann Van Den Noort Beheer BV [2016] EWHC 189 (IPEC); [2016] 1 Costs L.R. 137 at [7]–[15]. He argued that there were good reasons for treating a Part 20 claim differently. A counterclaim does ......