Lutec (UK) Ltd v Cascade Holdings Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 13 August 2021 |
| Neutral Citation | [2021] EWHC 2259 (IPEC) |
| Docket Number | CLAIM NO: IP-2020-000085 |
| Court | Intellectual Property Enterprise Court |
[2021] EWHC 2259 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London EC4A 1NL
David Stone
(sitting as a Deputy High Court Judge)
CLAIM NO: IP-2020-000085
Mr David Ivison (instructed by Briffa) for the Claimants
Mr Nick Zweck (instructed by BBS Law Limited) for the Defendants
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.
David Stone (sitting as a Deputy High Court Judge):
At the liability trial of this matter on 25 June 2021, I held that all four pleaded registered designs were infringed by two of the Defendants' outdoor light fittings. My reasons can be found at [2021] EWHC 1936 (IPEC) (the Main Judgment). I awarded the Third Claimant (the owner of the registered designs) its costs, to be agreed or assessed. The parties have been unable to agree those costs. This is therefore my judgment on costs. Both sides provided written submissions and I dispensed with a hearing.
The Costs Sought
The Third Claimant seeks costs as follows (I also indicate the IPEC costs cap):
| Stage of Claim | Total (actual) | Stage Cap |
| First Interim application | £1,833.50 | £3,000.00 |
| Second Interim application | £6,885.00 | £3,000.00 |
| Preparing for and attending trial and judgment | £14,080.00 | £16,000.00 |
| TOTAL | £22,798.50 | £28,000.00 |
| TOTAL CLAIMED | £18,913.50 | £28,000.00 |
The Third Claimant does not ask that I lift the IPEC caps, but has provided written submissions outlining what its counsel says are ten “illustrative” points of “deeply unhelpful” conduct which the Third Claimant says the Defendants engaged in. I did not find this submission helpful and have not taken it into account in reaching my decision.
The Law
There was no disagreement between the parties on the law to be applied – the approach to costs in the IPEC was set out by HHJ Birss QC (as he then was) in Westwood v Knight [2011] EWPCC 11. That judgment, particularly at paragraphs 21 to 26, is well known and I do not repeat it here.
The Defendants' Position
The Defendants objected to the Third Claimant's costs on three grounds, which I will take in turn.
Is the Third Claimant liable for the costs that it has claimed?
The Defendants submitted that it remains a live issue in the proceedings whether the Third Claimant is in fact liable to its solicitors for the costs claimed. This submission arises by virtue of the facts set out at paragraphs 6 and 9 of the Main Judgment. The Defendants submitted that:
i) The Third Claimant was joined to the proceedings after the CMC;
ii) The Third Claimant is alleged not to have played an active role in the proceedings; and
iii) The Third Claimant has not been paying for the Claimants' solicitors' services.
On this basis, the Defendants submitted that the burden must lie with the Third Claimant to prove that it is liable for the costs claimed, and that the court ought not to make an award in the absence of witness evidence (for example from the Third Claimant's solicitors) explaining the terms of engagement and establishing that the Third Claimant is in fact liable for its solicitors' costs.
I do not accept this submission. I have before me a document signed by the Third Claimant's solicitor Mr Ralph Wehrle which states:
“The costs stated above do not exceed the costs which the Third Claimant is liable to pay in respect of the work which this statement covers. Counsel's fees and other expenses have been incurred in the amounts stated above and will be paid to the persons stated.”
Whilst that statement does not amount to a Statement of Truth, it seems to me sufficient for present purposes to justify the claim for costs made by the Third Claimant.
Has the Third...
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