Yesterday in the Intellectual Property Enterprise Court, England and Wales, in A Kahn Design Ltd v Stephen Horsley and another, John Baldwin QC (sitting as judge) held that it would be an abuse of process to allow the successful claimant in registered design infringement proceedings to pursue its claim for costs claims, where it had itself failed to comply with a directions order from the trial judge, without good reason, especially when considering that the court was not in the best position to assess costs two years after judgment was given on the issue of infringement.  What's more, it would be an abuse of process to let the claimant pursue an inquiry into damages when its claim had not been conducted efficiently and there had been complete disregard for the court order.

In this case the claimant held a registered design for decorative car wheels. Once infringement was found, the defendant was ordered to serve a statement containing details of its infringing sales, and the claimant was ordered to elect for damages or an account of profits within 21 days of receiving this statement, with the chance to apply for further information if the defendant's statement was insufficient to enable it to make an election. Costs were reserved for the trial judge to deal with on written submissions. Costs schedules were to be exchanged, the claimant being told to serve its submissions by a certain date and for the defendant to reply.

The defendant served its statement and the parties exchanged their schedules of costs. A whole year then went by before the claimant wrote to the defendant to say that costs and damages remained outstanding. The defendant objected that the claimant had failed to make an election within the required time. Six months later the claimant replied that the defendant's statement of particulars of infringing saleshad been grossly insufficient, that it elected an inquiry into damages, reiterating its costs submissions. The claimant then applied for an extension of time to comply with the order on the basis that the delay had been caused by its insurers failing to provide funding to its solicitors.

Said the court, it was being invited to consider costs when the judge had completely forgotten about the case details. In the absence of evidence that the claimant had been unable to put its solicitors in funds, it would be surmised that it had chosen not to do so. In any event, that was not a good explanation for putting the defendant at the very severe disadvantage caused by the judge not being in a position to fairly assess costs. Further, it was not appropriate to subject the defendant to an inquiry into damages when the action had been asleep for two years, since the cost of an inquiry would be substantial and the damages might be small.