Photobooth Props Ltd v Nepbh Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 27 June 2022 |
| Neutral Citation | [2022] EWHC 1634 (IPEC) |
| Docket Number | Claim No.: IP 2021-2021-NCL-000002 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 1634 (IPEC)
John Kimbell QC, sitting as a Deputy High Court Judge
Claim No.: IP 2021-2021-NCL-000002
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT (Ch.D)
Royal Courts of Justice
Rolls Building, London EC4A 1NL
Stephanie Wickenden, instructed by McDaniels & Co., for the Claimants
Jonathan Rodger, instructed by Sintons LLP, for the Defendants
APPROVED JUDGMENT ON COSTS
John Kimbell QC sitting as a Deputy High Court Judge:
This judgment was handed down remotely by circulation to the parties' representatives by email and released to BAILII. The date and time for hand-down is deemed to be 10.30 a.m. on Monday 27 June 2022
Introduction
In my judgment dated 1 April 2022 [2022] EWHC 750 (IPEC) I dealt with three applications (‘ the Applications’): an application for summary judgment by the Claimants and a strike out and security for costs application by the Defendants. The Claimants succeeded in part in their summary judgment application.
The Claimants' application was under CPR 24.2(a)(ii) for judgment on the pleaded issues of substance, ownership and infringement by the Sixth and Seventh Defendants in respect of eight Assigned Works and five New Works (as defined in the Particulars of Claim). The application succeeded only in respect of the New Works. The Defendants' applications were both dismissed.
The parties have not been able to agree costs. I received sequential submissions in writing from Ms Wickenden for the Claimants and Mr Rodger for the Defendants. I have dealt with the application on paper without a further hearing in accordance with CPR 63.25(3).
The Claimants seek the following costs orders:
a. Their costs of the part of the claim which has been summarily determined – i.e. substance, ownership and infringement of the New Works (the “ Determined Part of the Claim”);
b. The costs of the Claimants and Defendants' applications to be paid immediately owing to the unreasonable behaviour of the Defendants under CPR 63.26(2);
c. Those application costs to be summarily assessed and off the usual IPEC caps; and
d. The CMC costs to be reserved to trial.
The Defendants submit that the costs of the Applications be reserved until the conclusion of the trial in accordance with CPR Part 63.26(1) and the costs of the CMC be costs in the case.
The Claimants' application for costs is supported by the third witness statement of Mr Adam Turley which explains how the costs schedules relied upon by the Claimants were prepared. An updated schedule of costs in relation to the Determined Part of the Claim accompanied the Claimants' submissions in writing.
The sums sought by the Claimants are as follows:
a. Costs of Determined Part of the Claim: £11,970.41 (including court fees of £510)
b. Summary Judgment Application: £7,162.00
c. Strike Out Application: £1,965.61
d. The Security for Costs Application: £6,827.50
Relevant Principles
The Claimants referred me to CPR 44.2, which provides:
44.2 (1) The court has discretion as to –
(a) whether costs are payable by one party to another;
(b) the amount of those costs; and
(c) when they are to be paid.
(2) If the court decides to make an order about costs –
(a) the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but
…
(4) In deciding what order (if any) to make about costs, the court will have regard to all the circumstances, including –
(a) the conduct of all the parties;
…
(5) The conduct of the parties includes –
(b) whether it was reasonable for a party to raise, pursue or contest a particular allegation or issue;
(c) the manner in which a party has pursued or defended its case or a particular allegation or issue;,,,”
I was also referred to PD44.9.2(b) which contains a ‘pay as you go’ presumption which encourages the court to conduct a summary assessment of costs at the conclusion of each hearing (at least where that hearing has lasted no more than one day).
The general rule is that the court should make a summary assessment of the costs –
…
(b) at the conclusion of any other hearing, which has lasted not more than one day, in which case the order will deal with the costs of the application or matter to which the hearing related. If this hearing disposes of the claim, the order may deal with the costs of the whole claim, unless there is good reason not to do so, for example where the paying party shows substantial grounds for disputing the sum claimed for costs that cannot be dealt with summarily.
CPR Part 44 is not disapplied in IPEC. This means that the court retains the jurisdiction to summarily assess costs and order them to be paid at any stage in proceedings. However, CPR Part 63 contains its own rules about costs of applications in the course of IPEC proceedings.
CPR 63.26, which is headed “Costs”, provides:
(1) Subject to paragraph (2), the court will reserve the costs of an application to the conclusion of the trial when they will be subject to summary assessment.
(2) Where a party has behaved unreasonably the court may make an order for costs at the conclusion of the hearing.
(3) Where the court makes a summary assessment of costs, it will do so in accordance with Section IV of Part 45.
CPR 63.26(1) in my judgement reverses and displaces the general ‘pay as you go presumption’ in PD44.9.2(b) for claims in IPEC. It is significant that the word ‘will’ in 63.26(1) is not qualified by ‘usually’ or ‘generally’. CPR 63.26(1) in my judgement creates a very strong presumption in favour of reserving costs of applications made in the course of IPEC proceedings. This reading of CPR 63.26(1) is consistent with IPEC Guide at para. 4.10 (with emphasis added):
Costs of an interim application Costs of the case management conference or any other interim hearing will almost always be reserved to the conclusion of the trial (Part 63 rule 26(1)). The most usual exception arises when a party is found to have has behaved unreasonably. In such a case the court may make an order for costs at the conclusion of the hearing, to be paid shortly thereafter. These costs will be awarded in addition to the totality of the capped costs which the receiving party is entitled to at the end of the trial, see Part 45 rule 32.
CPR 63.26(1) could have easily created an exception for summary judgment or strike out applications which finally determine one or more issues between the parties but it does not. I therefore reject Ms Wickenden's submission that “There is no foundation for reserving the costs of the claim which has been summarily determined” and that “There is therefore no reason to divert from the usual position that the Court should summarily assess the costs of the matter disposed of after the hearing”. The clear words in CPR 63.26(1) are a very firm foundation and good reason for reserving costs in relation to issues which have been resolved following an application for summary judgment or strike out. Ms Wickenden's submission would involve reading into 63.26(1) an exception for summary judgment or strike out applications resulting in one or more issues being determined. I decline to read “application” in 63.26(1) as subject to that qualification. It is clearly intended to apply to all applications.
The reason for the different general rule is that IPEC's costs rules form part of an overall package of measures designed to make the court an effective forum in which to litigate lower-value, less complex intellectual property cases cost effectively and with predictable and proportionate levels of exposure and recovery. The tables of costs in section IV of PD45 which set out ‘caps’ for each stage of the determination of liability (Table A) and for an enquiry into damages (Table B) are a key part of this package. It is well established that even a wholly successful party who has spent more than the capped sum will not necessarily recover the maximum permitted for...
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