INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| THE NATIONAL GUILD OF REMOVERS AND STORERS LIMITED
|- and -
t/a INTRANSIT REMOVALS AND STORAGE LIMITED
- and -
TDL 2013 REALISATIONS LIMITED
(formerlyTHOMSON DIRECTORIES LIMITED)
Thomas St Quintin (instructed by Backhouse Jones) for the Defendant
Crown Copyright ©
Judge Hacon :
(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.
"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."
(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 accounts for 10% of the total costs, the net effect of the winner paying the loser is to reduce the award to the winner by 20%);
(5) make a summary assessment of the costs that would be awarded for each stage identified in Table A of PD 45 Section IV without taking into account the cost caps for each stage;
(6) apply the overall discount to each of those summary assessments;
(7) compare the result in each case with the corresponding cost cap in Table A (or Table A as it applied up to 30 September 2013, as appropriate);
(8) make an award for each stage by reference to that comparison;
(9) add together those stage awards to reach a final total.
This final total will be the award in costs, subject to the overall cap of £50,000.
Permission to appeal
Form of Order