Lappet Manufacturing Company Ltd v Mr Basil Ibrahim Rassam
| Jurisdiction | England & Wales |
| Judge | Mr Justice Adam Johnson |
| Judgment Date | 12 August 2022 |
| Neutral Citation | [2022] EWHC 2158 (Ch) |
| Docket Number | Case No: IL-2021-000081 |
| Court | Chancery Division |
| Year | 2022 |
[2022] EWHC 2158 (Ch)
Mr Justice Adam Johnson
Case No: IL-2021-000081
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
SHORTER TRIALS SCHEME
7 Rolls Buildings
Fetter Lane, London
EC4A 1NL
Michael Hicks (instructed by Potter Clarkson) for the Claimants
Christopher Hall (instructed by Harper James) for the Defendants
Written submissions only
Approved Judgment
This judgment was handed down remotely by circulation to the parties' representatives by email and released to the National Archives. The date and time for hand-down is deemed to be 2pm on Friday 12 August 2022.
I have to deal with two matters consequential on my Judgment dated 13 June ( [2022] EWHC 1412 (Ch)), following written submissions made by both parties. The two matters are (1) costs, and (2) permission to appeal.
Costs
The Claimants were the successful parties, in that they successfully resisted the two applications made by the Defendants, both of which I dismissed. It is therefore agreed that, in principle, the Claimants are entitled to their costs of the two applications. There is disagreement, however, as regards the amount payable, and the time to be allowed for payment.
Amount of Costs
The Claimants have filed costs schedules showing both their costs as they stood at the date of the hearing on 3 May, and their costs as they stand today. These are as follows:
i) Jurisdiction Application: £16,624.40 (current costs £23,334.40).
ii) Transfer Application: £10,339.10 (current costs £16,420.10).
The Defendants filed costs schedules for the hearing on 3 May, showing that at that stage, their costs for the two applications were as follows:
i) Jurisdiction Application: £19,432.50.
ii) Transfer Application: £9,552.50.
Three particular points arise for consideration in assessing the quantum of the Claimants' costs. I will deal with them in turn.
Pre-Action Protocol: The Defendants criticise the Claimants for having issued their Claim Form without having first sent a letter of claim, as required under the relevant Practice Direction. They argue this should lead to a 25% reduction in recoverable costs.
I do not consider this a valid criticism. The claim is for counterfeiting of the Claimants' goods. In the circumstances, it was reasonable in my view for the claim to be commenced without prior notification. I think the Claimants were entitled to assume there would be no real utility in seeking to engage in pre-action discussions. I do not propose to make any deduction on this basis.
Hourly Rates: This is perhaps the main point of contention. The Claimants' solicitors, who are based in Nottingham, have charged on the basis of the following hourly rates:
i) Partner (Grade A fee earner): £462 per hour (2021), and £490 per hour (2022 rate).
ii) Associate (Grade C fee earner): £293 per hour (2021 rate), and £330 per hour (2022 rate).
However, the present Guideline Hourly Rates for Nottingham are rather lower than these figures, as follows:
i) Grade A fee earner: £261 per hour.
ii) Grade C fee earner: £178 per hour.
The Defendants' position is that the Claimants' solicitors should be held to those Guideline Hourly Rates, and so a substantial reduction is justified.
Recently, in Samsung v. LG Display, Males J said at [6] that if a rate in excess of the guideline rate is to be charged, then a “ clear and compelling justification must be provided”, and it is not enough merely to say that a case is a “ commercial case, or a competition case, or that it has an international element, unless there is something about these factors in the case in question which justifies exceeding the guideline rate”.
In this case, I am satisfied that there is justification for an increase on the Nottingham Guideline rates. That arises from the complexity of the issues which arose on the two applications I disposed of. Both required specialist knowledge of the procedure applicable to intellectual property claims, and trade mark claims in particular. The intricacies will be readily apparent from my earlier Judgment. In my opinion, the Claimants were thus fully justified in engaging solicitors with the appropriate specialist knowledge, appropriate to advising on the issues in question and managing the conduct of the Defendants' applications. I do not regard this case as one in which the justification is put forward only in a generalised way: it is put specifically on the basis of the specialist procedural knowledge needed in order to act effectively. It therefore does not fall foul of the proscription set out by Males LJ in the Samsung case. Instead, as I see it, a departure from the Guideline Rates is justified on the basis of the long-established principle that specialist solicitors in specialist areas of activity should recover an uplift to reflect that specialism, where that is justified in the circumstances: see, e.g., ABS Company Limited v. Pantaenius UK...
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...remedy of an account generally (which may not be a claim for money) and the remedy for an account of profits (which always will be): [2022] EWHC 2158 (Ch) at [23]. The Judge refused permission, because he did not immediately see the validity of the distinction the defendants sought to draw......
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...must be provided.” SG responded by referring me to the observations of Adam Johnson J in Lappet Manufacturing Co Ltd v Rassam [2022] EWHC 2158 (Ch) that a departure from the guideline rate was justified “on the basis of the long-established principle that specialist solicitors in specialis......