INTELLECTUAL PROPERTY ENTERPRISE COURT
110 Fetter Lane,
B e f o r e :
Sitting as an Enterprise Judge
| BOCACINA LIMITED
|(1) BOCA CAFES LIMITED
(2) DERCIO DE SOUZA JUNIOR
(3) MALGORZATA DE SOUZA
Nicholas Lee (Costs Lawyer, Paragon Costs Solutions) for the Defendants
Crown Copyright ©
Daniel Alexander QC
The claim for costs
Costs – general points
(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
(b) the court may make a different order.
(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;
(b) whether a party has succeeded on part of its case, even if that party has not been wholly successful; and
(c) any admissible offer to settle made by a party which is drawn to the court's attention, and which is not an offer to which costs consequences under Part 36 apply.
(5) The conduct of the parties includes –
(a) conduct before, as well as during, the proceedings and in particular the extent to which the parties followed the Practice Direction – Pre-Action Conduct or any relevant pre-action protocol;
(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; and
(d) whether a claimant who has succeeded in the claim, in whole or in part, exaggerated its claim.
(1) The court will have regard to all the circumstances in deciding whether costs were –
(a) if it is assessing costs on the standard basis –
(i) proportionately and reasonably incurred; or
(ii) proportionate and reasonable in amount, or
(b) if it is assessing costs on the indemnity basis –
(i) unreasonably incurred; or
(ii) unreasonable in amount.
(2) In particular, the court will give effect to any orders which have already been made.
(3) The court will also have regard to –
(a) the conduct of all the parties, including in particular –
(i) conduct before, as well as during, the proceedings; and
(ii) the efforts made, if any, before and during the proceedings in order to try to resolve the dispute;
(b) the amount or value of any money or property involved;
(c) the importance of the matter to all the parties;
(d) the particular complexity of the matter or the difficulty or novelty of the q uestions raised;
(e) the skill, effort, specialised knowledge and responsibility involved;
(f) the time spent on the case;
Costs in IPEC/PCC
Offers to settle in the present case
"Our client would like to propose a settlement of this dispute on the following basis:
1. Our client changes its name to a name which does not include the word "Boca";
2. Our client undertakes that they will not, save for the extent set out below, use the name Boca as part of a trading style or otherwise in relation to a restaurant, café or bar in Bristol or surrounding areas;
3. Our client will immediate take steps to surrender its UK trade mark registration no 2594410.
Our client will need some time to affect (sic) a change to its branding. It estimates that it will need approximately 9 months but obviously it will do this as quickly as possible. In practice it may well be able to change the external appearance of its premises slightly more quickly than this and it will do what it can to ensure that this change over happens as quickly as possible".
Impact on the present case
The parties' contentions
The amount of costs
Particulars of claim and commencement of action
Defence and reply to the defence
Case management conference
Witness statement preparation
4500 Particulars of Claim.
Costs before December 2012 – Total £4500
350 Considering Defence.
600 Reply to Defence.
1250 Case Management Conference.
300 Witness statements.
3750 Trial and argument on form of order/costs.
Costs after December 2012 – Total £6250