Tynan v J4K Sports Ltd

Where a defendant knowingly declines to attend trial, the court may strike out its defence and counterclaim under CPR r.39.3(1)(c). The discretion should be exercised having regard to the circumstances and proportionality, particularly in the Intellectual Property Enterprise Court.

Strike-out does not dispense entirely with proof of the claim. The claimant must still establish the claim, although this will normally be achievable through the statement of case and witness evidence.

The IPEC costs cap should be lifted only in a truly exceptional case, or where conduct amounts to an abuse of the court’s process. Non-compliance with orders, weak or abandoned arguments and winding up shortly before trial may be unsatisfactory, but do not necessarily meet either threshold.

The claimant brought proceedings alleging infringement of UK and Community unregistered design rights in football goalkeeper gloves. The defendant, which was in creditors’ voluntary liquidation, knew of the proceedings but did not attend trial or send a representative.

The court struck out the defence and counterclaim, declined to rely on the defendant’s incomplete witness statement, and determined the surviving issue of ownership. The claimant then sought costs exceeding the IPEC £50,000 cap, relying on alleged abuse of process and the court’s discretion to depart from the cap.

1. The defendant’s failure to attend was established under CPR r.39.3(1)(c). The court had a discretion to strike out the defence and counterclaim. In the circumstances, leaving them extant would produce an inappropriate and incomplete case, and strike-out was proportionate in the IPEC ([2018] EWHC 3519 (Ch), paras 2–7).

2. Although the defence and counterclaim were struck out, the claimant still had to prove the claim. The court accepted the procedure described in CPR para.39.3.5, including reliance on the statement of case and witness evidence. The defendant’s incomplete witness statement was not relied upon because the defence and counterclaim had been struck out and, alternatively, because its author was absent for cross-examination and no Evidence Act notice had been given (paras 8–11).

3. Under s 215 of the Copyright, Designs and Patents Act 1988, the designer is the first owner of UK design right where the design was not created in employment. Article 14.1 of Council Regulation (EC) No 6/2002 provides that Community design rights vest in the designer or successor in title. The claimant’s evidence established that he was the sole designer and owner of the relevant designs (paras 13–20).

4. The claim therefore succeeded. The court refused to lift the IPEC costs cap. The defendant’s non-compliance with orders, unsustainable or abandoned arguments, and winding up before trial were unsatisfactory, but neither separately nor cumulatively amounted to abuse of process or conduct that was truly exceptional. The policy of preserving predictable costs protection for smaller litigants outweighed the claimant’s claim to recover the full costs (paras 21–37).