INTELLECTUAL PROPERTY ENTERPRISE COURT
110 Fetter Lane,
London EC4 1NL
B e f o r e :
(Sitting as a Judge of the High Court)
|A KHAN DESIGN LIMITED||Claimant|
|- and -|
|STEPHEN HORSLEY & ANOTHER||Defendant|
165 Fleet Street, 8th Floor, London, EC4A 2DY
Tel No: 020 7421 4046 Fax No: 020 7422 6134
Web: www.merrillcorp.com/mls Email: firstname.lastname@example.org
(Official Shorthand Writers to the Court)
MISS LINDSAY LANE (instructed by DMB Law) appeared on behalf of the Defendant.
Crown Copyright ©
"The Defendants shall on or before 8th June 2012 by the most appropriate officer duly authorised, make and serve on the Claimant's solicitors an affidavit disclosing in respect of the 'RS-8' wheels to the best of the knowledge, information and belief of the deponent:
(a) The dates of purchase and sale, purchase price, quantities purchased and delivered to the Defendants;
(b) The names and contact details of the people to whom the Defendants sold or supplied the wheels;
(c) The names, addresses and contact details of the parties or party who i) manufactured and ii) supplied the Defendants;
(d) The price(s) of sale and/or supply by the Defendants;
(e) An estimate of the profits made by the Defendants.
exhibiting complete and legible copies of all orders, invoices, delivery notes, documents, and records in the Defendants' possession, custody or control."
"5. At the claimant's option, there be an inquiry as to damages or an account of profits in respect of the Defendants' acts of registered design right infringement.
6. The Claimant shall within 21 days of receiving disclosure pursuant to paragraph 3 of this Order elect between an inquiry as to damages and an account and communicate such election to the Defendant.
7. The Claimant shall be at liberty to apply for:
(a) the provision of further information by the Defendants in the event that the information provided pursuant to paragraph 3 above is not adequate to enable it to make its election under paragraph 6 above; and
(b) further directions in relation to the said election or inquiry or account."
"9. The question of costs shall be reserved to be determined by the trial Judge, together with the question of costs of the claim for infringement of UK Registered Design No. 2,093,429, upon the written submissions of the parties.
10. The following directions shall apply in relation to the aforementioned written submissions:
(a) The Parties shall exchange costs schedules by Wednesday 6th June 2012.
(b) The Claimant shall serve its written submissions in respect of costs by Wednesday 13th June 2012.
(c) The Defendants shall serve their written submissions in respect of costs by Wednesday 20th June 2012."
The reference in paragraph 9 of the Order to "UK Registered Design Right No 2,093,429" was a reference to another infringement claim which had been settled prior to the trial, and it was contemplated that I would deal with the costs of that claim as well.
"We refer to our exchange of costs schedules on 4 July 2012. Pursuant to the Judgment and the consent order ... the Claimant's position is that it is entitled to its costs as set out in the schedule served on 4 July 2012. As to costs relating to the claim for infringement of UK registered design no. 2,093,429 against the First Defendant, the Claimant's position is they are de minimis."
The letter goes on:
"We are unable to add to the above at present as we do not know whether the Defendants agree or disagree with the above. If it is the latter, then we invite them to serve their submissions which we may reply to."
The letter then proposed a timetable for the defendant's submissions, and went on to say:
"We trust you will agree this is the most sensible and logical approach to this matter."
"We enclose a copy of our letter dated 20 August 2009."
That is a "without prejudice save as to costs" letter, which proposed settlement terms. It goes on:
"Our client's position is that your client is not entitled to recover costs incurred after 17 September 2009. Indeed, in all the circumstances, we take the view that your client should be paying our client's costs incurred after 17 September 2009. Whilst we would have been able to have presented submissions on costs on the dates as agreed by counsel in the original order had your client complied with the specified timescale, our counsel will be on vacation throughout August and will not be in a position to draft submissions until September. We understand that the Court ordered that your client should file its submissions first and that our client would reply thereto. We propose Friday 31 August for the provision of your client's submissions with our client's response by 14 September 2012. We wait to hear from you."
So, in answer to the assertion "You pay our costs", the defendant replied saying "No, no, you pay our costs", and provided a revised timetable. That letter received a bare acknowledgment on 1 August 2012, and then the matter seems to have gone to sleep for 12 months, on costs as well as on damages.
"In that regard [i.e. costs] I refer to our letter of 24 July 2012. As set out in that letter my client's position is that it is entitled to its costs because it won at the liability trial. We consider costs for the claim relating to infringement of UK registered design number 2093429 against the First Defendant to be de minimis".
Thus, the claimant repeated what it had said before. It went on:
"Given this position, the logical sequence of dealing with costs ought to be that your client now provides its submissions if it disagrees with the above, so that we may reply to them."
There is an important sentence that follows:
"Whilst this deviates from the wording of the Order given post trial, we consider this to be the correct method given the initial position our client takes on its costs. Please would you confirm whether or not your client will now supply its cost submissions on this basis?"
There is significance in the observation that the proposal deviates from the wording of the order, because before me today, and, indeed, subsequently in the correspondence after 5 June 2013, Mr Norris submits that that first letter of 24 July 2012 contained the claimant's submissions on costs. The response to that letter of 5 June was, as I have already noted, on 27 June 2013 and, with respect to costs, it says this:
"In any event, the order clearly requires that the Claimant is to make any submissions on costs first, and then requires the Defendants to respond within seven days. These submissions should have been made in July last year and our clients see no reason why it should be necessary to change the order in which the Court required the submissions to be filed, notwithstanding the fact that your client is now out of time for doing so."
"Pursuant to the Judgment and the consent order agreed on 18 May, the Claimant's position is that it is entitled to its costs as set out in the schedule served on 4 July. These are our client's submissions."