Cadbury UK Ltd v The Comptroller General of Patents Designs And Trade Marks

Interveners in appeals concerning intellectual property decisions do not ordinarily recover their costs. The court should balance encouraging legitimate interventions against the risk of unnecessary expense and delay. Relevant considerations include whether the intervener succeeded, added value to the hearing and avoided duplicating the respondent’s submissions. Even where those considerations favour the intervener, a further good reason is required before departing from the usual position. A commercial interest and adequate resources, without material disadvantage or a supervening public interest, will generally not justify a costs order.

The judgment concerned the costs of an appeal from a decision of the Registrar of Trade Marks. The appeal had been dismissed on 18 April 2016. Cadbury agreed to pay the Comptroller’s costs, but Nestlé sought its own costs, including the costs of its successful application to intervene.

Nestlé relied on the dismissal of the appeal, the assistance its submissions had provided and its direct commercial interest. Cadbury argued that the intervention had increased the costs and delayed the hearing, and that the Comptroller was capable of defending the decision. The central issue was whether Nestlé should recover its costs as an intervener.

1. No order for Nestlé’s costs. The court held that the costs of an intervener are discretionary and that, in cases of this kind, the ordinary position should be that no order is made.
2. The court adopted the rationale in Ryanair Holdings Plc v Competition and Markets Authority, Aer Lingus Group Intervening [2015] CAT 15: the approach should encourage legitimate interventions while avoiding interventions that cause unnecessary expense or impede the efficient conduct of proceedings.
3. Before considering any departure from the ordinary position, the court should consider whether the intervener succeeded, added value to the hearing and avoided duplicating the respondent’s submissions. Those matters were satisfied here, although the second was only just satisfied because the Comptroller’s submissions were adequate.
4. Something further was required. Nestlé had a commercial interest in intervening and was well resourced. There was no supervening public interest and no suggestion that Nestlé would be materially disadvantaged if it received no costs. Those circumstances did not justify departing from the usual rule.
5. Cadbury was liable for the Comptroller’s agreed costs. No order was made in respect of Nestlé’s costs, including the costs of its intervention.

• High Court (Chancery Division): the appeal from the Registrar of Trade Marks was dismissed on 18 April 2016. The present judgment determined the consequential dispute concerning costs.