The saga of Specsavers v Asda has been told thrice already on this weblog, once when it turned out that the defendant's lawyers couldn't prepare their client's case because they were busy filling their client's shelves (see here and here), once when the trial judge got it mainly wrong and once when the Court of Appeal got it more or less right and referred some questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling, to be on the safe side..
Now, bobbing up and down in the tide of litigation, Specsavers International Healthcare Ltd Specsavers BV Specsavers Optical Group Ltd Specsavers Optical Superstores Ltd v Asda Stores Ltd  EWCA Civ 494 has surfaced again since the Court of Appeal (Sir John Thomas, Lady Justice Black and Lord Justice Kitchin) found themselves facing some pressing submissions on the subject of costs (there was also some discussion over the scope of the injunction -- but that's not discussed in this note).
Having expended a good deal of money in seeking to enforce its trade marks against a defendant which was sailing too close to the wind and capsized, Specsavers wanted to see some of it come back in the form of costs. This didn't look as though it was about to happen in the immediate future since the case was still far from over. Apart from the reference of some questions to the CJEU for a preliminary ruling, which could be reckoned to add a couple more years to the final outcome if the action, Asda had also sought to appeal to the Supreme Court. The Court of Appeal refused permission to appeal, so Asda proposed to apply to the Supreme Court for leave to appeal to it.
The Court of Appeal took pity on Specsavers and decided that it could have some money on account. In particular, the court held that
- It was not appropriate to reserve all the costs pending Asda's application to the Supreme Court for permission to appeal. In this context, the general principles applicable to patent actions -- which occur far more frequently than trade mark actions and are therefore handy precedents -- were equally applicable to proceedings for infringement of registered trade marks, Under the circumstances, Specsavers was entitled to have its costs of the appeal, subject to a substantial discount to reflect the issues upon which it lost.
- What about the costs attributable to the issues referred to the CJEU? Well, said the Court of Appeal, they did have to be reserved.
- As for the costs that Specsavers was going to receive, a fair and proportionate result would be achieved by awarding them 40 per cent of their overall costs of the appeal. As for the costs of the trial at first instance, a fair and just result would be achieved by awarding Specsavers 50 per cent of their costs.
- The court had jurisdiction to order a payment on account even though the costs had not been assessed. On the facts here, it was appropriate to make an order for a payment on account of 50 per cent of the costs which S was entitled based on estimates of costs provided.