Unicorn Studio Inc v Veronese (Société par Actions Simplifiée)

On an appeal from opposition proceedings, the successful appellant is ordinarily entitled to its appeal costs, but the court may assess those costs summarily and make appropriate reductions for excessive or unnecessary work. Under CPR Part 52.19, the court may limit recoverable appeal costs where first-instance recovery is normally restricted, having regard to the parties’ means, all the circumstances and access to justice. The issue was not determined because no application was made. In assessing costs, the court may distinguish between the importance of the dispute to a party and the proportionality of the costs incurred.

The appellant appealed a Hearing Officer’s decision in opposition proceedings before the Registrar of Trade Marks. The Hearing Officer had partially upheld the opposition and refused the trade mark for certain categories of goods. The appellant appealed to the High Court and succeeded, so that the mark proceeded to grant for all categories.

This judgment concerned costs. The respondent took no part in the appeal and opposed the costs claimed. The issues were whether the appellant should recover its appeal costs, whether recovery should be limited under CPR Part 52.19, and what sums were reasonable and proportionate.

1. Disposition. The appeal had been allowed in the earlier ex tempore judgment, with the trade mark proceeding to grant for all categories of goods. The appellant was the overall winner and was entitled in principle to its appeal costs.
2. Possible costs limitation. The court considered that an application under CPR Part 52.19 might have been appropriate because of the substantial difference between costs recoverable in Trade Marks Registry opposition proceedings and under the CPR in the High Court. Fairness might justify limiting High Court costs to the basis applicable before the Appointed Person, to prevent tactical use of a High Court appeal to place unfair pressure on an absent respondent. Any application should ordinarily be made as soon as practicable and supported by evidence. No application was made, and the court made no further determination on the point.
3. Appeal costs. The court declined to make a percentage deduction for unsuccessful subsidiary arguments because they had not materially increased the costs. Solicitor costs were reduced from £22,823.30 to £15,000 because the time spent on the short Grounds of Appeal, skeleton argument and bundle was excessive or unnecessary. Counsel’s advice fee was disallowed, but £20,000 was allowed for the skeleton argument and hearing. Including court fees, the appeal costs awarded were £35,000.
4. Proportionality and Registry costs. No deduction was made for lack of proportionality because the brand was important to the appellant’s business and the dispute formed part of wider cancellation and opposition proceedings. The costs before the Trade Marks Registry were assessed at £2,000 rather than the £3,400 sought, reflecting the case’s limited complexity despite evidence and detailed issues.

• High Court (Business and Property Courts): The appeal from the Hearing Officer was allowed. The trade mark proceeded to grant for all categories of goods. The present judgment awarded £35,000 for the appeal and £2,000 for the proceedings before the Trade Marks Registry.