Costs of Trade Mark Appeals - Unicorn Studio Inc v Veronese

Author Jonas Magnus Lystad Licence CC BY-SA 4.0  Source Wikipedia Commons

 

Jane Lambert

Chancery Division (Iain Purvis KC) Unicorn Studio Inc v Veronese SpAS  [2024] EWHC 1098 (Ch) (21 June 2024)

This appeal highlights the importance of timely applications under CPR52.19 (4) in appeals to the Court from the Trade Marks Registry.

A party who wishes to appeal against a decision of a hearing officer has the choice under s.76 (2) of the Trade Marks Act 1994 of appealing to the Appointed Person or the Chancery Division of the High Court of Justice.  S.77 (1) defines an "Appointed Person" as a person appointed by the Lord Chancellor to hear appeals under the Trade Marks Act 1994.  Appointed persons tend to be senior members of the Intellectual Property Bar, solicitors specializing in that area of the law or distinguished academic lawyers.

There are advantages and disadvantages of appealing to the Appointed Person rather than the Court.  S.76 (4) provides that the decision of an Appointed Person is final.  Appeals from the High Court can be made to the Court of Appeal and in a few rare cases to the United Kingdom Supreme Court.  Costs of proceedings before an Appointed Person are limited to those that are recoverable before a hearing officer.  These are usually awarded on the scale referred to in Tribunal Practice Notice 2/2000 and subsequent notices unless a party behaves in such a way as to justify an award of costs against it that are off that scale. The costs that can be awarded by the Court in an appeal from a hearing officer are the same as in any other litigation unless an order is made under CPR 52.19.  

CPR 52.19 (1) provides:

"Subject to rule 52.19A, in any proceedings in which costs recovery is normally limited or excluded at first instance, an appeal court may make an order that the recoverable costs of an appeal will be limited to the extent which the court specifies."

CPR52.19A applies to appeals against decisions made in Aarhus Convention claims and is not relevant to appeals from a hearing officer.  CPR 52.19 (2) requires the court "to have regard to—
(a) the means of both parties;
(b) all the circumstances of the case; and
(c) the need to facilitate access to justice."

CPR 52.19 (3) states that it may not be appropriate to make an order under CPR 52.19 (1) if an appeal raises an issue of principle or practice upon which substantial sums may turn.  CPR 52.19 (1) requires an application for such an order to be made as soon as practicable.

In Union Studio Inc. v Veronese SpAS O/0875/23 15 Sept 2023, the respondent was partially successful in its opposition to Union Studio Inc.'s trade mark application.  The applicant appealed to the High Court.   Its appeal was heard by Mr Iain Purvis KC sitting as a deputy judge of the Chancery Division.  By his ex tempore judgment in Union Studio Inc. v Veronese SpAS [2024] EWHC 1098 (Ch) Mr Purvis allowed the appeal and directed costs submissions to be filed.  As the respondent had not taken part in the appeal Mr Purvis asked for the provisions of CPR 52.19 to be brought to the attention of the respondent.

The respondent, which was not represented at this stage, did not apply under CPR 52.19 (4) for an order under CPR 52.19 (1).  Mr Purvis considered at para [4] of his judgment in Union Studio Inc. v Veronese SpAS  [2024] EWHC 1098 (Ch) (21 June 2024) "that an application under this rule could have been appropriate given the huge discrepancy between the costs recoverable under the regime used for Opposition proceedings in the Trade Marks Registry and under the CPR in the High Court."  He added:

"This appeal could have been brought before the Appointed Person in which case costs would have been awarded in accordance with the Trade Marks Registry regime. There are circumstances in which fairness would require the High Court to direct that any costs awarded in the proceedings should be on the same basis as if the appeal had been brought before the Appointed Person. Otherwise there would be a risk that decisions to appeal to the High Court would be taken tactically as a means of putting unfair pressure on the Respondent."

Mr Purvis proceeded to assess costs.   The successful appellant had requested solicitors' costs at £22,823.30 and counsel's fees at £24,050.  Mr Purvis reduced the solicitors' bill to £15,000 and counsel's to £20.000 making a total of £35,000 for the appeal.  As for the hearing below, he awarded the appellant £2,000.

Anyone wishing to discuss this case may call me on 020 7404 5252 during office hours or send me a message through my contact form.  Readers may also wish to read the June Issue of my IP;/IT Update newsletter which focuses on  trade mark law,