Westwood v Knight [2010] EWPCC 16 (19 November 2010)

Neutral Citation Number: [2010] EWPCC 16 Case No: OCL 70100 IN THE PATENTS COUNTY COURT St. Dunstan's House 133-137 Fetter Lane London EC4A 1HD 19/11/2010 B e f o r e : HIS HONOUR JUDGE BIRSS QC ____________________ Between: DAME VIVIENNE WESTWOOD OBE Claimant - and - ANTHONY EDWARD KNIGHT Defendant ____________________ Henry Ward (instructed by Taylor Wessing LLP) for the Claimant The defendant did not appear and was not represented Hearing date: Monday 15th November 2010 ____________________ HTML VERSION OF JUDGMENT ____________________ Crown Copyright © His Honour Judge Birss QC : This is a case management conference. Ordinarily a judgment of this kind would not be required at a CMC but this is the first such hearing to take place in the Patents County Court under the new procedures which came into force on 1 st October 2010. Case management in general and the CMC in particular are at the heart of the new procedures and a number of the issues which arose at this CMC have not been addressed in this court before. The parties are entitled to detailed reasons for my decisions. In addition the wider community of prospective users of this court will benefit from an understanding of how the issues have been dealt with on this occasion. The action The claimant in this action is Dame Vivienne Westwood O. B. E. the famous British fashion designer and businesswoman. She worked with her partner Malcolm McLaren in the 1970s and they are associated with the punk movement and with the British band the Sex Pistols. Today the claimant (through her group of operating companies) owns and operates stores throughout the world selling clothing ranges and accessories. The defendant is Anthony Edward Knight. He is a trader who sells fashion clothing and accessories over the internet. In doing so Mr Knight uses various names and marks of which the claimant complains in this case. The causes of action alleged are: i) infringement of registered trade mark and passing off by the use of various brands by the defendant which the claimant contends are either identical to or confusingly similar to the claimant's trade marks; ii) infringement of copyright, in that certain of the claimant's devices represent original artistic works created by the claimant and the defendant is alleged to have copied them and thereby infringed copyright; and iii) a declaration that certain trade mark registrations which the defendant has obtained are invalid on the ground essentially that the defendant's marks are confusingly similar to the claimant's own prior marks. In summarising the causes of action above I have used the expression "confusingly similar" as a shorthand for the various provisions of the trade marks legislation and passing off which are said to apply. This judgment is not concerned with the merits of these causes of action and it is unnecessary to lengthen it further by setting out those provisions. As an example of the issues arising: the claimant has trade mark registrations for an orb device (an orb with a cross and ring rather like the rings of Saturn) and the defendant is alleged to use a logo which is a copy of the claimant's orb device and is confusingly similar to it. The defendant has also registered trade marks which include an image of an orb with a ring. The rival marks (in black and white) are:- As another example, the claimant also uses a slogan "Too fast to live too young to die" both alone and as part of a device with the slogan placed around a skull and cross-bones. The defendant is again alleged to use a device which is a copy of the claimant's device and is confusingly similar to it and has registered the following internet domain names: i) www.toofasttolivetoyoungtodie.co.uk ii) www.toofasttolivetoyoungtodie.com iii) www.2fasttolive.co.uk. The defendant represents himself. He does not deny carrying out the acts complained of. His defence is essentially that he does not accept the claimant has the rights claimed and does not accept that his various activities infringe (either the registered trade marks or copyright) or amount to passing off. The proceedings The claim form was issued on 24 th June 2010 in the High Court. The Particulars of Claim is pleaded in the conventional High Court style with a statement of truth signed on behalf of the claimant by the claimant's solicitor. The defendant represents himself. His defence was received in Chancery Chambers in the High Court on 8 th August 2010. Mr Knight has signed the statement of truth. The document is entitled "Counterstatement of Claim" but nothing turns on that, it is a defence. Appended to it are copies of various documents Mr Knight wishes to rely on in support of his defence. The claimant's representatives sought to have the case transferred to the Patents County Court because they believe it is an appropriate case for the new procedures. The case was transferred by the order of Master Bragge made on 1 st October 2010. In my judgment since the case was transferred into the Patents County Court on 1 st October 2010 the new procedural provisions apply to it (see Technical Fibre [2010] EWPCC 011 ). The order for transfer directed that there be a case management conference on the first open date after 22 nd October 2010. If I may say so this was a useful thing to do since it ensured that the matter came before the Patents County Court for directions at an early stage after transfer. After consultations between the parties and with the listing office the CMC was listed to take place on 15 th November 2010. Before the hearing Mr Knight sought to have the CMC adjourned until 2011 because he said he could not attend it. I refused that application because the reasons for it were not sufficient to justify such an adjournment. Mr Knight was offered alternative dates for the CMC in December and the possibility of holding the hearing by telephone but he did not take them up. In his communications before the hearing Mr Knight also submitted that the case should be heard by a different judge because he contended I was biased against him and have been rude and arrogant towards him. These allegations were taken extremely seriously and were considered carefully. However in my judgment they were baseless and Mr Knight had no grounds for making them. I refused the application for the case to be dealt with by a different judge. Mr Knight did not attend the hearing. However, his correspondence included a request to the court to ask the claimant to clarify certain matters. These were considered at the CMC. At the CMC the claimant was represented by Mr Henry Ward instructed by Taylor Wessing. I also have before me a witness statement of Mr Jason Rawkins of Taylor Wessing dated 10 th November 2010. In his witness statement Mr Rawkins addressed various matters arising and explained the claimant's position. This was a useful exercise and as a result the claimant did not file a skeleton argument in advance of the CMC. In this case such a skeleton would have been unnecessarily duplicative and a pointless cost. In the Patents County Court parties' skeleton arguments at the interim stage need not be filed if they are not necessary. Nevertheless it is obvious that in some cases a skeleton argument on at least some issues will be needed at the CMC. The matter needs to be approached on a case by case basis. Part of the point of the new CMC procedure in the Patents County Court is that the court will pre-read into the case as a whole in order to conduct the CMC. A highly abbreviated skeleton argument on specific issues may well be necessary but there should be no need for extensive duplicative skeletons. The issues arising at the case management conference The issues arising are as follows:- i) The application of the new procedures to this case ii) Other amendments to the Particulars of Claim (not concerned with the new procedures) iii) Directions for further evidence iv) Other material under paragraph 29.1 of the Practice Direction v) The trial vi) Costs i) The application of the new procedures The first issue arising is whether the new procedures apply to this case. As mentioned above, in my judgment whatever the position in relation to cases already in the Patents County Court before the procedures came into force in 1 st October 2010 (see Technical Fibre above) the procedures as a whole are plainly intended to apply to cases transferred into the Patents County Court on or after the rules have come into force. This case was transferred on 1 st October 2010 and the new procedures as a whole apply to it. The next question arising therefore is how to apply the procedures to a case of this kind which was started in the High Court, pleaded in that way and in relation to which some costs were incurred in a forum in which the costs cap applicable in the Patents County Court (CPR Pt 45.41 – 45.43 and section 25C of the Costs Practice Direction (CPR PD 45)) did not apply. Re-pleading the case to conform to the Patents County Court rules Mr Henry Ward for the claimant submitted that the only amendments necessary to the pleadings in this case as result of the transfer were to include a point on the pre-action protocol and to have the statement of truth signed by an appropriate person. No other amendment was said to be necessary. This submission was as much concerned with the defence as with the Particulars of Claim and I accept it. My reasons are as follows. CPR Pt 63.20 (1) requires that, in the Patents County Court, the statements of case should set out concisely all facts and arguments upon which the party serving it relies. Looking at the defence first, in my judgment Mr Knight's Counterstatement of Claim and his further document sent on 11 th November 2010 referred to as his "counterstatement to the amended claim", together already do set out concisely the facts and arguments upon which Mr Knight relies. The Counterstatement of Claim annexes 46 pages of documents he relies on in support of his case. There is no need to require Mr Knight to re-plead the case. Such an order would simply cause delay and increase cost for no purpose. The claimant's Particulars of Claim are pleaded in the usual style for an intellectual property case in the High Court. Facts are pleaded in a concise fashion. There are specific issues on the facts in relation to which I have given permission to the claimant to serve evidence (see below) but there is no need to require further pleading on these points since the pleadings already adequately set out the points in a concise fashion. There is one point however on which the Particulars of Claim do not reach the appropriate standard. Amongst the allegations in the Grounds of Invalidity attached to the Particulars of Claim is one that the claimant has since 1987 used a device which might be described as a cherub with the legs of a satyr. However no details of that are given, unlike the position for the other marks and brands the claimant relies on, for which more detail is given. Accordingly I will direct that the Particulars of Claim should be amended to add details of the use claimed for this device. As far as arguments are concerned (as opposed to facts), I will direct that the parties have leave to serve skeleton arguments before trial (see below). There is no need for further elaboration at this stage. Each side can see the case made by the other. Pre-action protocol CPR Pt 63.20 (2) requires that the Particulars of Claim should state whether the claimant has complied with para 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). As currently drafted the Particulars of Claim do not make such a statement. The claimant sought permission to amend to include it. In my judgment permission should be given. One of the purposes of the statement is to allow the period for the defence to be set by CPR Pt 63.22 (2) and (3). Since the defence has already been filed, that does not matter. However the question of pre-action conduct is also capable of having a bearing on costs in future (CPR Pt 44.3(5)(a)). Accordingly I will give permission. Statements of truth The statement of truth in the Particulars of Claim was signed by the claimant's solicitor using the form "the claimant believes" that the facts stated in the pleading are true. This is entirely conventional under the CPR (see CPR Pt 22.1 (6)(a)(ii) and Practice Direction 22 – Statements of Truth para 2.1). However CPR Pt 63.21 requires that in this court the statements of case should be verified by a statement of truth signed by a person with knowledge of the facts alleged or if no person has knowledge of all the facts, by persons who between them have knowledge of all the facts alleged. This is an important part of the package making up the new procedures since it allows the statements of case to stand as evidence (see the final report of the Intellectual Property Court Users' Committee Working Group on proposals for reform of the Patents County Court, which led to the new rules now in place). The claimant sought permission to amend the Particulars of Claim to have them verified by a statement of truth appropriate to the Patents County Court. That is clearly the right thing to do and I give permission for it. This may well be a case in which more than one person will need to sign the statement of truth on the Particulars of Claim since the pleading includes factual matters relating to the history of Dame Vivienne Westwood's activities going back to the 1970s but also points which may well be matters for her current solicitors to confirm. The claimant will need some time in which to identify the appropriate people to sign the statement of truth and again it must be convenient to give them a suitable period to do so. Clearly if more than one person does sign the statement of truth, they should indicate in some suitable way which parts of the pleading they are confirming. Mr Knight's defence is signed by him and nothing further needs to be done in that regard. Costs incurred in the High Court Finally I raised with Mr Ward the question of the costs cap under CPR Pt 45.41 – 45.43 and how the claimant proposed it was to apply to costs incurred before the action was transferred. The claimant's representatives had not prepared submissions on this issue. It may be that the whole costs of these proceedings should be covered by the cap or it may be that the costs incurred before transfer should be dealt with differently. I cannot decide those issues at this stage as the matter arises before me since I have no submissions on the point. In the circumstances I have decided to reserve the question of how costs incurred before transfer are to be dealt with until the conclusion of the proceedings. In this case that is the most convenient thing to do but in other cases it may well be something which the parties need to consider when the matter is transferred. This is because one of the purposes of the costs cap is to reduce the uncertainty relating to costs exposure for the parties. Reserving the costs simply prolongs the uncertainty but in this case, because the action had not proceeded very far in the High Court, I can be satisfied that the uncertainty is modest. ii) Other amendments to the Particulars of Claim The claimant also seeks permission to make further amendments to the Particulars of Claim which do not relate to the transfer to the Patents County Court. First, the Particulars of Claim as originally served included a claim for a declaration of invalidity of three of the defendant's UK registered trade marks: 2437947 (an orb and ring device with the words "red planet"), 2485853 (a device of a satyr-like cherub holding an orb with a ring and the words "Red Planet Jeans") and 2503668 (the words "Worlds End Apparel Clothing" in a fancy format). Registered trade mark 2503668 is the subject of a pending opposition by one of the claimant's group of companies – Vivienne Westwood Ltd. The grounds of opposition are s5(4)(a) of the Trade Marks Act 1994 (passing off) and s3(6) (bad faith). The claimant submits that since she (or one of her companies) is already taking action against that mark in another forum, she seeks permission to remove this mark from the claim. It seems to me this is a convenient course provided the defendant's position on costs is protected. The claimant submitted I should make no order as to costs on this point. I do not accept that. I will reserve the costs of the proceedings in relation to trade mark No. 2503668. They can be addressed at the conclusion of the action. Second, the claimant seeks permission to add another of the defendant's UK registered trade marks into the proceedings in order to include it within the claim for a declaration of invalidity. The mark is No. 2555661 for the words "Red Planet Westwood". The application for this trade mark was filed on 12 August 2010, the same day the Particulars of Claim were deemed served on the defendant. The claimant wishes to include this mark in the proceedings by way of a claim for invalidity. Since the period within which notice of opposition had to be filed expired on 10 th November 2010, 5 days before the CMC, the claimant (and her company Latimo SA) filed a notice with the Registry on 8 th November 2010. Mr Rawkins' witness statement states that the purpose of the notice is only to preserve the claimant's right to oppose the trade mark in the event the court does not permit the claim for invalidity of this mark to be brought into the proceedings. He says that if the claimant does not file a full opposition by 10 th December 2010 then the trade mark application will be automatically registered shortly afterwards. In the circumstances and on the basis of the claimant's indication to me in Mr Rawkins' statement, I will give permission to amend the Particulars of Claim to include a claim for invalidity of registered trade mark No. 2555661. There will then be no opposition. This will minimise the number of parallel proceedings. The date by which the amended Particulars of Claim will be served will be set as Thursday 30 th December 2010 in order to give sufficient time for the mark to be registered. This will not cause undue delay in the proceedings. The defendant has had clear notice of the points being taken from now. If the defendant wishes to file a consequentially amended defence, he can make a paper application in that respect and I will consider it. I will include in the order a provision requiring service of a revised amended Particulars of Claim by 22 nd November 2010. Since the defendant did not attend the CMC I will give the defendant 7 days thereafter to apply to vary the order giving permission to amend. The defendant sought clarification of the position regarding this trade mark (No. 2555661). As I have explained above, the validity of this trade mark will be decided in these proceedings. The grounds of invalidity the claimant intends to rely on are in the amended Particulars of Claim, which the defendant has already seen. There will be no opposition proceedings before the Registry on this mark. iii) Directions for further evidence to be filed before trial CPR Pt 63.23 (1) provides that at the first case management conference (after appropriate defences have been filed) the court will identify the issues and decide whether to make an order in accordance with paragraph 29.1 of the Practice Direction 63. Paragraph 29 of the practice direction then provides (so far as material):- 29.1 At the case management conference referred to in rule 63.23 the court may order any of the following- (1) specific disclosure … (4) witness statements (5) experts reports (6) cross examination at trial (7) written submissions or skeleton arguments 29.2 The court will make an order under paragraph 29.1 only – (1) in relation to specific and identified issues (2) if the court is satisfied that the benefit of the further material in terms of its value in resolving those issues appears likely to justify the cost of producing and dealing with it. CPR Pt 63.23 (2) then provides that save in exceptional circumstances the court will not consider an application by a party to submit material in addition to that ordered under paragraph (1). These interlocking provisions represent a radical departure from previous English civil procedure, at least as it is practiced in the courts handling intellectual property claims. The provisions are a key element of the new procedure and its purpose in making intellectual property cases less expensive and quicker to resolve. The parties do not have a free rein to call any evidence they want on any topic. The court will control the procedure. Further material will only be permitted on identified points and only if it satisfies the cost benefit test in paragraph 29.2(2). If material has not been permitted in this way, CPR Pt 63.23(2) sets a significant hurdle in the way of its introduction into the case. It seems to me that one important consequence of the provisions is that, subject to proper safeguards, some relevant evidence will be excluded from trials. Merely because some evidence is relevant will not necessarily justify permission being given to adduce it. On the other hand the parties need to know that the court will give permission for evidence to be filed in a proper case since otherwise there will be a temptation to overload the statements of case with unnecessary material. Of course powers along these lines were introduced with the CPR itself (see e.g. CPR Pt 1.1 (2) (proportionality) and Pt 1.4 (1) (active case management), (2) (h) (considering whether the likely benefits of taking a step justify the cost of taking it) but the new procedures create a specific framework in which they can be applied in order to improve the resolution of disputes about intellectual property rights. In his witness statement Mr Rawkins went through the various issues arising in the proceedings and explained the claimant's position on whether further evidence should or should not be permitted. At the hearing Mr Ward took the court through the various issues arising and made his submissions on them. The first issue The first issue is the description of the claimant's work in paragraphs 1 to 8 of the Particulars of Claim. These paragraphs describe (amongst other things) the claimant opening her first store in London in 1971 with Malcolm McLaren, her involvement with the 1970s punk movement, her stores today in London, Leeds and elsewhere, her operating companies and the awards the claimant has won in recognition of her contribution to the fashion industry. Essentially the point of these paragraphs is to support the plea in paragraph 8 of the Particulars of Claim that " the claimant is a very well known fashion designer who is known throughout the world, including the United Kingdom. " As this is a passing off case (amongst other things) this is the kind of point on which litigants often produce extensive further evidence even though the defendant does not really challenge it. (Of course in other cases there is a real fight about reputation and goodwill.) In this case the claimant submits no further evidence should be required on these issues. I agree. The defendant does not directly challenge these issues (he does challenge other things – see below). This is the kind of point which can unnecessarily increase the costs of litigation. The claimant now knows it does not need to (indeed may not) file further evidence on this point. While it might not be too costly to produce in the overall scheme of things, there is no benefit in this case in doing so. The second issue The next issue (paragraphs 9 to 11 of the Particulars of Claim) relates to the specifics of the claimant's brands and goodwill, i.e. the use by the claimant of the various brands in issue including "Vivienne Westwood" itself but others as well ("Let it rock", the orb device, "Too fast to live too young to die", "Red Label", "Worlds End", "Destroy", "Anglomania", "I love crap" and a lips device). This is a key part of the case. The allegations here relate to the dates and extent of use by the claimant of these various brands. These are the issues challenged in the defendant's defence. He puts forward material annexed to the defence which he contends supports his case that the claimant does not have the rights she claims in various ways. The claimant sought permission to file evidence on these issues. It seems to me the cost-benefit test is plainly satisfied here and I will give permission for it. Mr Rawkins' witness statement did not attempt to estimate how much this evidence would cost but in my judgment there is no need for that sort of evidence on this point in this case. In some cases in order to apply the cost benefit test it will be necessary to file evidence explaining what the cost of such evidence would be but this is an illustration of the point that such cost evidence will not be necessary on every point. It would be faintly absurd if the new procedure put parties to substantial extra cost (of preparing evidence about the cost of evidence) when it was not necessary. It is clear in this case that the evidence will not be costly to produce and goes to the core of the dispute. The defendant's second request for clarification relates to the matter of the claimant's brands. Two of the claimant's brands in issue are "Red Label" and "Vivienne Westwood Red Label" while the claimant complains of the defendant's use of "Red Planet" (see e.g. the defendant's device above and the new trade mark 2555661 "Red Planet Westwood"). The defendant asks how his Red Planet marks can be said to infringe the claimant's Red Label marks. This question will depend on two matters, first the question of confusing similarity and second the matter of evidence to back up the claimant's case that she used the relevant brands on dates preceding the defendant's use. These points are pleaded out in the Particulars of Claim and will be addressed in the further evidence as appropriate. The claimant's case is clear and there is no need to order the claimant to elaborate further. The defendant has the necessary material in order to know what case he has to meet at trial. Third issue In Mr Knight's defence various points are made about the course of proceedings before the UK Trade Mark Registry and OHIM. One is the opposition by the claimant to the defendant's mark Worlds End before the UK Registry and the other two are oppositions by the defendant to two Community Trade Mark applications of the claimant's. Mr Rawkins in paragraph 13 of his witness statement has set out a summary of the status of these three sets of proceedings. For example he has clarified that in one of the OHIM cases, although Mr Knight asserts that the claimant's mark has been revoked, in fact what has happened is rather different. Mr Knight's opposition to the mark had been dismissed and the mark put on the register but the opposition has been reinstated following a procedural point about fax transmissions. The mark had been registered and that registration has been rescinded now that the opposition will continue. However, Mr Rawkins explains, that mark has not been revoked. The claimant sought permission to admit paragraph 13 of Mr Rawkins' statement as evidence at trial. It seems to me this is a highly cost effective way of proceeding and I will give the claimant permission to do that. There is no need for any further evidence on these issues. Fourth issue Paragraphs 12 and 13 of the Particulars of Claim relate to the publication by the claimant of a "Manifesto". No further evidence on this would be proportionate or necessary. Fifth issue The fifth issue relates to alleged misrepresentation and the matter of confusion on the part of the public (partly paragraphs 15 and 16 of the Particulars of Claim but also later paragraphs such as paragraphs 31 to 36). The claimant claims that the defendant has adopted a wide range of the claimant's names, marks and logos and/or marks which are confusingly similar to the claimant's marks. This is obviously a key issue in the case. However it does not follow that any further evidence should be permitted on it. In some passing off and trade mark cases the parties seek to submit evidence from members of the public or carry out surveys to bolster their case on this topic. In this case as it stands before me that sort of evidence would plainly fail a cost-benefit test - it would be complex, expensive and disproportionate and the claimant does not seek permission to adduce it. The court can readily compare the marks in question in a case like this and form a view at trial about the likelihood of confusion. The claimant does seek permission to adduce evidence in the form of documents which were not created for this case but which (the claimant says) support her case of misrepresentation. For example the claimant's representatives say there are documents showing feedback on the eBay website which (they claim) shows members of the public buying goods from the defendant in the mistaken belief they were those of the claimant. Again Mr Rawkins' statement did not embark on an analysis of the cost of producing such evidence and again it seems to me he was right not to do so. This sort of material will not be costly to produce – the exercise is essentially a limited and focussed disclosure exercise and may be highly probative. Of course I recognise that in many trade mark cases what is alleged to be evidence of actual confusion turns out not to be relevant for various reasons. However that in itself works in favour of giving the claimant permission to file this material since another aspect of trade mark infringement and passing off cases is to consider - if the marks complained of have existed side by side in the market but no actual confusion has come to light - whether that may militate in the defendant's favour. Sixth issue The case includes a claim for copyright infringement in relation to six devices, each of which is alleged to be an original artistic work created by the claimant. The claimant does not seek permission for any further evidence on these points of subsistence and ownership on the basis that once the Particulars of Claim carry an appropriate statement of truth, further material would be unnecessary. I do not accept that submission in its entirety. For five of the devices ("Too fast to live too young to die", the orb combined with the words "Vivienne Westwood", "Destroy", "I love crap" and an "AR" device associated with the manifesto) I accept the point. Mr Knight in his defence does not raise any matters about those five devices which might mean that further evidence on them was proportionate. However one of the devices is different. This is the orb device with the crown and Saturn's rings. The defendant points to the well known certification mark for Harris Tweed which consists of an orb with a crown (registered as No. 1341566). He points to similarities between this and the claimant's device and asserts that the claimant did not create the design but merely adapted it (paragraph 11 of the defendant's Counterstatement of Claim). Although Mr Knight does not use the legal term, it is clear that he disputes the originality of this work. Mr Ward for the claimant on instructions informed me of some of the history of the claimant's orb device and her relationship with Harris Tweed in the past. The relationship is no secret and the fact that the claimant has worked with a number of well known organisations – including in particular Harris Tweed – is pleaded in the Particulars of Claim. However it seems to me that Mr Ward and his instructing solicitors' instincts were correct that this point bears a little more explanation than is presently in the Particulars of Claim. I should state that it is perfectly clear that the claimant's orb device is not identical to the Harris Tweed certification mark in the counterstatement. Nevertheless it seems to me that this issue is one on which I should give the claimant permission to file evidence. I am well aware that I am giving the claimant permission she did not ask for. However, although the defendant did not attend the hearing, it is clear from the defence that this is a point in contention. By giving the claimant permission to deal with this point I am not requiring the claimant to give evidence, whether anything on this is filed is a matter for her and her advisers. It may be at trial nothing further will turn out to have been necessary. If I had acceded to the claimant's submission that no permission should be given to file evidence on this point then what would have happened at trial? The defendant would contend the work was not original. The claimant might seek to rely on the fact they had no permission to deal with the point over and above the material in the Particulars of Claim to justify what might be regarded as inadequate evidence. What then? It is to head off such a situation that I am giving the claimant permission. I should repeat that I have not decided that the Particulars of Claim are necessarily inadequate at all, my task at this stage is to ensure the proceedings can be brought to an orderly and cost effective trial. The cost of further evidence directed to this point will be minor and, if filed the evidence may turn out to be important on the issue. Seventh issue The defendant does not seek to put forward a case of independent design in relation to the copyright claim and accordingly the claimant does not seek permission to file any further evidence in relation to copyright infringement. I agree up to a point. The evidence in relation to the defendant's activities is largely set out in an annex to the Particulars of Claim (Annex 2). Mr Knight does not deny that the various names, marks and logos there are or were used by him. Nothing more is needed on that. However it seemed to me that it would be helpful at trial for the claimant to provide the documents from which extracts shown in Annex 2 have been taken. This will not be at all costly and will greatly assist in the resolution of the case. This permission to file such material is not permission to add further allegations of infringement, it is simply to allow the proper context (and best quality copies) of the existing pleaded infringements to be available for trial. Further evidence from the defendant? The defendant did not attend the hearing and has not asked for permission to file further material under paragraph 29.1 of the Practice Direction. Two points of clarification were sought by the defendant and I have dealt with them above. It seems to me that in these circumstances I should not give the defendant permission to file further evidence. In terms of a cost/benefit analysis I am fortified in that decision by the fact that the defendant's defence ("Counterstatement of Claim") is signed by him and therefore satisfies the statement of truth requirements in this court (CPR Pt 63.21). I am not preventing the defendant from proving his case, on the contrary his evidence in support of his defence is set out in the document which stands as evidence already. Although the "counterstatement to the amended claim" has not yet been signed, it clearly represents part of the defendant's case also. It will need to be signed before trial but I am not going to slow down these proceedings by getting into a wrangle about that at this stage. iv) Other material under paragraph 29.1 Neither side sought an order for disclosure and I will make no order for it. Neither side sought to rely on expert evidence and again I will make no such order. It seems to me that all the live issues in this case can readily be determined without expert evidence. Neither side sought an order for cross-examination and I will make no order for it. I should point out that of course since I have given permission for some further material to be served it might be said that until one has seen that material, we do not know whether it will need to be the subject of cross-examination. Although in principle that is undeniable, as a practical matter I doubt it will arise in this sort of case bearing in mind the further evidence contemplated. If a problem arises later it can be dealt with. I will direct that skeleton arguments be filed in advance of trial. This is for a number of reasons. First since the case began in the High Court the pleadings do not purport to set out "arguments" as opposed to facts. To require the parties to go back and re-plead the case in some way to fit it into the Patents County Court form seems to me to be a waste of time and money. One of the key purposes behind the fuller pleadings in the Patents County Court is to facilitate a case management conference along the lines provided for in the rules. That has taken place and there is no need to go back. Moreover one of the problems with the introduction of a fuller pleadings regime in the Patents County Court in the 1990s was that some astonishing documents were produced at great cost and potentially little benefit (see e.g. Optical Laboratories v Hayden Laboratories [1993] RPC 204 at p206 line 24). At the pleading stage it may well be unnecessary to do more than state concisely what the argument is rather than take up space setting it out in elaborate detail. The court is unlikely to need arguments to be addressed in depth for the CMC and permission can always be given (if appropriate as here) for skeleton arguments before trial. In terms of the cost/benefit analysis it seems to me that in this case the balance clearly favours dealing with the issues in skeleton arguments. v) The trial Mr Ward submitted that this action can be tried in one day. I agree. As is set out in the note on Arrangements for the Patents County Court of 25 th October 2010, trial dates are fixed at the case management conference. Mr Ward submitted the case would be ready for trial in early March and invited me to fix the trial for the week of 7 th March 2011. I agree. I have fixed the trial for 8 th March 2011. I have also set the date on which judgment will be handed down, two weeks later on Tuesday 22 nd March 2011. Two weeks after the trial will be sufficient time to prepare the judgment in a case of this kind. In my judgment it is in the interests of the parties and of the court to have these dates set now as it allows everyone to prepare properly and to manage their workload. vi) Costs The costs of the CMC in general will be costs in the case. There are certain specific matters of costs which I have addressed above. Conclusion It bears repeating that ordinarily a CMC will not require a judgment of anything like the length of this one. However in the circumstances of this case, it seemed to me that this exercise was worthwhile. The Order made at this case management conference is set out in Annex A to the judgment. Annex A UPON THE APPLICATION of the Claimant dated 8 November 2010 AND UPON HEARING Counsel for the Claimant AND UPON READING those documents recorded on the Court file as having been read IT IS ORDERED THAT: Amendment The Claimant has permission to amend the Claim Form, Particulars of Claim and Grounds of Invalidity to: 1.1 Comply with the requirements of Section V of CPR Part 63.20(2) and 63.21; 1.2 Remove from the claim Trade Mark Application Number 2503668 for WORLDS END; 1.3 Add, upon registration of the same, UK Trade Mark Application Number 2555661 for RED PLANET WESTWOOD by way of a claim for invalidity; 1.4 Add details of the use that has been made of the satyr/cherub device shown at paragraph 4 of the Grounds of Invalidity to the Particulars of Claim; 1.5 Amend the Claim Form so as to reflect the Claim as set out in the Particulars of Claim and Grounds of Invalidity. The Claimant shall serve on the Defendant a draft copy of the Claim Form, Particulars of Claim and Grounds of Invalidity as proposed to be amended in accordance with paragraph 1 of this Order on or before 4pm on Monday 22 November 2010. In accordance with CPR 29.10, the Defendant shall have 7 days from the date of service upon him of the documents set out at paragraph 2 (as amended in accordance with that paragraph) to apply to vary or to set aside paragraph 1.4 of this Order. The Claimant shall serve on the Defendant the Particulars of Claim and Grounds of Invalidity amended in accordance with paragraph 1 of this Order on or before 4pm on Thursday 30 December 2010. Evidence Paragraph 13 of the Statement of Jason Rawkins dated 10 November 2010 be admitted as evidence in the case. The Claimant has permission to serve on or before 4pm on Monday 31 January 2010 a witness statement giving details of use of the marks on which the Claimant relies in the Claim. The Claimant has permission (if it so chooses) to serve on or before 4pm on Monday 31 January 2010 a witness statement giving further details of the provenance of the orb, crown and rings device shown at Paragraph 22 of the Particulars of Claim. The Claimant has permission to rely on documents (not being documents generated for the purpose of these proceedings) indicating confusion on the part of the public, as hearsay evidence at the trial of the action. The Claimant will serve copies of the documents relied on, on or before 4pm on Monday 31 January 2010. The Claimant has permission to rely at the trial of the action on those documentary materials forming the basis of the Defendant's use set out in Annex 2 to the Particulars of Claim or the best copies of such material available. The Claimant will serve copies of the documents relied on, on or before 4pm on Monday 31 January 2010. Save as aforesaid there shall be no disclosure of documents by either party. Trial The parties have permission to file skeleton arguments, on or before close of business on Wednesday 2 March 2011; The trial of the Claim shall take place on Tuesday 8 March 2011. The time allocated for the trial is 1 day; There shall be no permission to cross examine at the trial; Judgment in the action shall be handed down on Tuesday 22 March 2011. Costs The costs of the action prior to the transfer to the Patent County Court shall be reserved to the trial of the action. The costs of paragraph 1.2 of this order shall be reserved to the trial of the action. Save as aforesaid, costs shall be in the case. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII