The National Guild of Removers and Storers Ltd v Derek Milner t/a Intransit Removals and Storage Ltd TDL 2013 Realisations Ltd (formerly Thomson Directories Ltd) (Third Party)
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 10 April 2014 |
| Neutral Citation | [2014] EWHC 1117 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: CC12P02507 |
| Date | 10 April 2014 |
[2014] EWHC 1117 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: CC12P02507
and
Jonathan Hill (instructed by Coyle White Devine) for the Claimant
Thomas St Quintin (instructed by Backhouse Jones) for the Defendant
Following my judgment dated 18 March 2014 I have to settle the form of Order. Two points are in dispute: costs and permission to appeal. The parties have requested that I settle the approach to costs, specifically whether the defendant should have an award of costs, if so whether there should be a discount and if there is to be a discount how it should be applied, before submission are made as to quantum. On the basis that this might save time and unnecessary costs, I will do so. I will use the same abbreviations for the trade marks as used in my earlier judgment.
Costs
In my view the Defendant is the overall winner and is entitled to an award of costs. The Claimant's claim for (i) infringement of TM 258, (ii) infringement of copyright and (iii) passing off all failed. In addition the Defendant's counterclaim for revocation succeeded in full in relation to TMs 351 and 710, and in substantial part in relation to TM 722.
The Defendant's counterclaim failed in relation to the following matters that were contested at trial:
(i) a declaration that all four of the Claimant's TMs were invalidly registered on the ground of bad faith;
(ii) an order for the revocation of all four TMs (in practice only TM 258 and the remainder of TM 722 were at stake) for non-use on the ground that insofar as they were used, they were not used as trade marks.
The Defendant concedes that because of the matters referred to in paragraph 3 above there should be a discount on the costs awarded to the Defendant. He also submits that the discount should be assessed on a stage by stage basis, to be applied only where appropriate to a particular stage. That approach was rejected by HH Judge Birss QC in BOS GmbH & Co KG v Cobra UK Automotive Products Division Limited [2012] EWPCC 44; [2013] FSR 39, at [32]:
"Mr Pritchard submitted I should apply the discount only to certain PCC stages. I reject that. It seems to me that the discount is one which can only be sensibly applied overall and I have done so. The discount approach is itself a fairly rough and ready approximation and to start applying it only to certain costs and not others cuts across the rationale for the discount in the first place."
I agree.
The starting point in BOS v Cobra was the relevant principles established in MMI Research Ltd v Cellxion Ltd [2012] EWCA Civ 139 and the cases there cited, to which was applied the issue based approach to costs in the PCC. In summary, this involved the following steps:
(1) Identify the party who is the winner overall.
Assuming there is an overall winner,
(2) identify any sufficiently circumscribed issues in relation to which the winner should be deprived of his costs, having lost on those issues;
(3) identify any other issues sufficiently exceptional such that the winner should pay the loser's costs of those issues;
(4) taking into account (2) and (3), assess an overall discount to be applied to the award of costs to the winner (any issues falling under (3) will usually count double so that, for instance, if an issue...
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