INTELLECTUAL PROPERTY ENTERPRISE COURT
ON APPEAL FROM
INTELLECTUAL PROPERTY ENTERPRISE COURT SMALL CLAIMS TRACK
DEPUTY DISTRICT JUDGE VARY
Fetter Lane, London, EC4A 1NL
B e f o r e :
| PABLO STAR MEDIA LIMITED
|- and -
The Defendant appeared as a litigant in person
Hearing date: 5 October 2017
Crown Copyright ©
Judge Hacon :
" one of the rare cases where the court should mark its disapproval of the litigation conduct of a successful party by ordering that he pay a portion of his opponent's costs"
Grounds for appeal
(1) The approach to damages on the 'user principle' was unreasonable and failed to take into account the multiple acts of infringement by Mr Bowen.
(2) The conclusion that the infringement was not flagrant was contrary to the authorities on this aspect of the law.
(3) The award was not dissuasive, as required by art. 3(2) of Directive 2004/48/EC ("the Enforcement Directive").
(4) Bringing proceedings in other jurisdictions was Media's right, particularly under EU law, and should have had no bearing on costs. The overriding objective was therefore wrongly applied to the order on costs.
(5) The District Judge wrongly took into account an offer of settlement of £250 by Mr Bowen.
(6) The District Judge asked the parties about Part 36 Offers and without prejudice offers before giving his judgment.
Approach to the appeal
" How reluctant should an appellate court be to interfere with the trial judge's evaluation of, and conclusion on, the primary facts? As Hoffmann L.J. made clear in Grayan there is no single standard which is appropriate to every case. The most important variables include the nature of the evaluation required, the standing and experience of the fact-finding judge or tribunal, and the extent to which the judge or tribunal had to assess oral evidence.
 It is worth noting that Biogen was a case very close to the top end of the scale. It involved very complex biotechnology which was the subject of a lot of expert evidence given at a lengthy trial before a very experienced judge of the Patents Court. In the circumstances Lord Hoffmann's memorable reference to Renan was not (if I may respectfully say so) out of place. There are far fewer nuances to be picked up from a bundle of statutory declarations which contain a good deal of irrelevant or tendentious material and on which there is no cross-examination.
 In this case the hearing officer had to make what he himself referred to as a multi-factorial comparison, evaluating similarity of marks, similarity of goods and other factors in order to reach conclusions about likelihood of confusion and the outcome of a notional passing-off claim. It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. (It is interesting to compare the observations made by Lord Radcliffe in Edwards v Bairstow  AC 14 at pp.38-39, about the general commissioners, a tribunal with a specialised function but often little specialised training.) On the other hand, the hearing officer did not hear any oral evidence. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.
 The appellate court should not treat a judgment or written decision as containing an error of principle simply because of its belief that the judgment or decision could have been better expressed. The duty to give reasons must not be turned into an intolerable burden: see the recent judgment of this court in English v Emery Reimbold & Strick Ltd (and two other appeals heard with it)  EWCA Civ 605, April 30, 2002, para.19:
" the judgment must enable the appellate court to understand why the judge reached his decision. This does not mean that every factor which weighed with the judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the judge's conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the judge to identify and record those matters which were critical to his decision."
"Moreover, I am unable to hold that Mr Salthouse was not entitled to take the view that he did. It is true that another hearing officer might, as indeed did the judge, have taken a different view. But it cannot be said that Mr Salthouse's view was one to which no reasonable hearing officer could have come."
" Ultimately the issue on the first appeal is whether the deputy judge was right to discern two errors of principle in the hearing officer's approach, so opening the way for the deputy judge to substitute his own view. For the reasons which I have explained, I do not think that the hearing officer did make any significant error of principle which appears from his written decision. I do find his conclusion surprising and if this court had a free choice between the hearing officer's decision and that of the deputy judge I would unhesitatingly choose the latter.
 However this court does not have a free choice, as Sir Martin Nourse has explained in his judgment. As Buxton L.J. said in Norowzian v Arks Ltd (No.2)  FSR 363 at 370:
" where it is not suggested that the judge has made an error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge."
The same principle applies to an appeal from a hearing officer to a judge of the Chancery Division. Although the hearing officer's decision is one which I find surprising, I do not consider that it can be described as clearly wrong."
(1) An appellate court must decide whether the court or tribunal below has made a distinct and material error of principle. If so, the decision will be overturned and the relevant point of dispute between the parties reconsidered.
(2) The appellate court should not treat a judgment or decision as containing an error of principle simply because it could have been better expressed.
(3) The judgment or decision below must have identified and recorded those matters which were critical to its conclusion. By implication a failure to do this can amount to an error of principle.
(4) Absent an error of principle, there is no single standard to be applied in assessing whether the appellate court should interfere with the decision below. It is a multi-factorial assessment with the following being of particular relevance: (i) the nature of the evaluation required, (ii) the standing and experience of the fact-finding judge or tribunal and (iii) the extent to which the judge or tribunal had to assess oral evidence.
(5) In making this assessment the appellate court should not interfere solely because it finds that a conclusion reached below is surprising or is one which the appellate court would not have reached. Neither such finding necessarily means that the court or tribunal below has made a material error of principle.
(6) In the case of an appeal from a decision given by specialised hearing officer following a hearing without oral evidence, the appellate court should show a real reluctance, but not the very highest degree of reluctance, to interfere with the decision (absent an error of principle).
The law on costs
(1) This rule applies to any case which has been allocated to the small claims track.
(2) The court may not order a party to pay a sum to another party in respect of that other party's costs, fees and expenses, including those relating to an appeal, except
(a) the fixed costs attributable to issuing the claim which
(i) are payable under Part 45; or
(ii would be payable under Part 45 if that Part applied to the claim;
(b) in proceedings which included a claim for an injunction or an order for specific performance a sum not exceeding the amount specified in Practice Direction 27 for legal advice and assistance relating to that claim;
(c) any court fees paid by that other party;
(d) expenses which a party or witness has reasonably incurred in travelling to and from a hearing or in staying away from home for the purposes of attending a hearing;
(e) a sum not exceeding the amount specified in Practice Direction 27 for any loss of earnings or loss of leave by a party or witness due to attending a hearing or to staying away from home for the purposes of attending a hearing;
(f) a sum not exceeding the amount specified in Practice Direction 27 for an expert's fees;
(g) such further costs as the court may assess by the summary procedure and order to be paid by a party who has behaved unreasonably;
(3) A party's rejection of an offer in settlement will not of itself constitute unreasonable behaviour under paragraph (2)(g) but the court may take it into consideration when it is applying the unreasonableness test.
Costs and the overriding objective
" I also note that Mr Price has elected through his companies to sue Mr Bowen in Ireland as well as the UK, and has threatened litigation in the United States also. Both parties are UK domiciled. Mr Bowen's website is clearly targeted at the UK. This court would have jurisdiction to deal with the entire claim.
 Whilst I mean no disrespect to the general courts of Ireland or the United States, it would have been more efficient if the entire claim had been resolved in this court. Neither party needs expensive legal representation because they can be heard in person. Specialist intellectual property judges sit in a specialised court, capable of dealing with questions of intellectual property law without the assistance of learned counsel. Proceedings are quick and cheap.
 Mr Price's tactics of suing in several courts appear to be deliberately intended to maximise cost and pressure on Mr Bowen to settle."
" I am concerned that Mr Price's approach to this claim has little regard to the overriding objective, in particular [CPR Part 1, rule 1.1] (2)(b), (c), (d) and (e). I am sufficiently concerned that this seems to me to be one of the rare cases where the court should mark its disapproval of the litigation conduct of a successful party by ordering that he pay a portion of his opponent's costs.
 In the circumstances I order that Pablo Star Media Limited reimburse Mr Bowen his costs of attending this hearing today, which amounts to £164.10,and which may be deducted from the damages and interest awarded above."
"6. You talk about the US Library of Congress Copyright Register as being irrelevant. However in the U.S. your infringement would be deemed 'wilful' and statutory damages of up to $150,000 can be awarded plus costs. We have not gone there at present but could. I will save you the legal explanation for now but it is real."
"The overriding objective
(1) These rules are a new procedural code with the overriding objective of enabling the court to deal with cases justly, having regard to any welfare issues involved.
(2) Dealing with a case justly includes, so far as is practicable
(a) ensuring that it is dealt with expeditiously and fairly;
(b) dealing with the case in ways which are proportionate to the nature, importance and complexity of the issues;
(c) ensuring that the parties are on an equal footing;
(d) saving expense; and
(e) allotting to it an appropriate share of the court's resources, while taking into account the need to allot resources to other cases."
The relevance of Mr Bowen's offer
Costs of the appeal