Schutz (UK) Ltd & Anor v Delta Containers Ltd & Anor

An application to adjourn a trial should be determined by assessing the parties’ likely prejudice in the circumstances existing when the application is heard. Where a material change means that related proceedings may no longer determine the issues in the scheduled trial, the prospect of avoiding earlier litigation costs may be insufficient to justify substantial delay. Particular weight may be given to prejudice caused by fading witness recollection, loss of witness availability, and delay in obtaining effective relief. The court may assess costs summarily where the application is short and the costs claimed are disproportionate.

The claimants brought trade mark infringement and passing off proceedings against the defendants concerning restored and cross-bottled intermediate bulk containers. Related patent proceedings against another company concerned the same commercial activities. The defendants applied to adjourn the trade mark and passing off trial until the final outcome of the related patent proceedings, including any possible appeal to the Supreme Court.

The court had previously directed that the proceedings be heard sequentially because success in the patent proceedings appeared likely to make the other claims redundant. The Court of Appeal had since found patent infringement, but further appeal remained possible. The issue was whether the changed circumstances justified delaying the trial, which could otherwise occur four to five and a half years after commencement.

1. Application dismissed. The application had to be considered on the basis that there was a real possibility that the final determination of the patent proceedings would not dispose of the trade mark infringement and passing off claims.
2. The circumstances had materially changed since the earlier case-management decision. The defendants’ position was no longer that the patent outcome would necessarily render the other claims redundant. If the patent decision became final against them, they might still contest the trade mark and passing off claims.
3. The defendants’ prejudice from refusing the adjournment was limited principally to having to incur the costs of defending the claims earlier than they wished. By contrast, adjournment could cause substantial prejudice to the claimants. Evidence concerning confusion related to events in 2008, witnesses had already waited to give evidence, and there was a real risk of faded recollection or unavailability. The undertaking given by the defendants also limited the prospect of obtaining further evidence of confusion.
4. Delay would postpone any injunction obtained for trade mark infringement or passing off. Such relief could extend beyond the protection available in the patent proceedings, including by restraining use of marked cages with third-party bottles. The defendants were not prepared to submit to judgment on those claims if the claimants ultimately succeeded in the patent proceedings.
5. The claimants were awarded the costs of the application. The court summarily assessed them at £15,000, considering the application’s limited duration, the evidence relied upon, its complexity, and the disproportionate level of costs claimed.

Not stated in the judgment.