Can unreasonable behaviour lead to a higher IPEC costs award?
In early 2021, Deputy High Court Judge David Stone (sitting in the IP Enterprise Court, IPEC) in a dispute over the use of the name CORMETON in relation to mechanical fire safety goods and services found there was trade mark infringement and passing off, but not copyright infringement. (You can read more about this decision here). He also ordered appropriate injunctions, delivery up, disclosure and orders for the election of a damages inquiry/account of profits.
By the Summer, the parties were back in court. Among other things, they disagreed over whether “automatic gaseous extinguishing systems” (AGEs) were mechanical fire safety goods and services. Following written submissions and a hearing, the judge considered that not only did they fall within this definition but they clearly fell within the prohibition set out in the Court Order which was effective from 1 February 2021.
The finding was important because the claimant also argued that the defendants had behaved unreasonably, and it was therefore entitled to recover costs beyond the usual £50,000 costs cap in the IPEC. On the basis that the earlier order was clear, and the defendants had not challenged whether AGEs fell within or outside the order at the time, the judge found that it was unreasonable to resist that part of the claimant’s application. What is more, the £3,000 application cap did not apply because the application related to the enforcement of an order. The claimant was therefore entitled to £5,036.40 in costs.
The judgment also addressed the claimant’s request for further information from the defendants for the purposes of Island Records v Tring disclosure prior to its election of an account of profits or damages inquiry. Both sides were successful on certain points, and therefore there was no unreasonable behaviour by the defendants in respect of this issue.