Case No: HC07C000110

Neutral Citation Number [2008] EWHC 2673 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

Royal Courts of justice
Strand
London
WC2A 2LL

Wednesday, 8th October 2008

Before:
THE CHANCELLOR 

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B E T W E E N:

CROCODILE INTERNATIONAL PRIVATE LTD

-v-

LA CHEMISE LACOSTE

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Transcript from a recording by Ubiqus
Cliffords Inn, Fetter Lane, London EC4A 1LD
Tel: +44 207 269 0370
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Micheal Edenborough (instructed by Lovells) appeared on behalf of the Claimant
Mr Andrew Norris (instructed by Laytons) appeared on behalf of the Respondent
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JUDGMENT
THE CHANCELLOR:
1.	This is an application by the claimant, Crocodile International Private Limited, a company incorporated in Singapore, for summary judgment on part of its claim for an order under Section 46(1)(a) of the Trademarks Act, 1994, revoking the registration in the name of the defendant, La Chemise Lacoste, a company incorporated in France, of the mark CROCODILE in class 25 for ‘Shirts but not including sport shirts’, on the grounds of non-use.
2.	Section 46(1)(a) provides as follows:  
(1)	The registration of a trade mark may be revoked on any of the following grounds – 
(a) 	that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use’.

3.	The contention of Crocodile International Private, has two limbs, namely that such use as there has been, which is admitted, was not (1) genuine or (2) in relation to the goods for which the mark was registered.  
4.	The application is made for summary judgment under Civil Procedure Rules, Rule 24.2.  There is no suggestion that there is any such compelling reason as is indicated in CPR Rule 24.2(b).  Accordingly the principles to be applied are those I summarised in my judgment in Celador Productions Ltd –v- Meville [2004] EWHC 2362 (CH), namely and I quote from paragraph seven;
	‘(a) it is for the applicant for summary judgment to demonstrate that the respondent has no real prospect of success in his claim or defence as the case may be; 

(b) a “real” prospect of success is one which is more than fanciful or merely arguable; 

(c) if it is clear beyond doubt that the respondent will not be able at trial to establish the facts on which he relies then his prospects of success are not real; but 

(d) the court is not entitled on an application for summary judgment to conduct a trial on documents without disclosure or cross-examination’.

5.	The facts in relation to this matter may be shortly stated.  They start with the Davis Cup Final of 1927, when the French team of which Mr René Lacoste was a member, beat the United States team.  On that occasion, the United States press gave Mr Lacoste a nickname variously translated in France as Crocodile or Alligator.  He designed the shirt now known as the L1212.  The nature and derivation of the L1212 is clearly summarised in the following passage from a publication entitled ‘Lacoste. The Legend’, at page 43 in these terms.  
	‘The 1212 was, indeed a revolution in design. First of all in the world of tennis which was its first target.  With its short sleeves, this garment even caused a scandal on court when it first appeared.  Up to then, all tennis players wore classical town shirts with long sleeves and warp and weft material. Sometimes a little heavy when the players were working hard and, above all, not very efficient in cooling the body and absorbing sweat.  His own comfort first and then, very quickly, increased comfort for all sportsmen - that was Rene Lacoste’s prime objective in launching the “1212”.  Still today, it is one of the key qualities of the brand. In many ways, it explains the success of the Lacoste shirt which has become one of the symbols of relaxed elegance’.

6.	In 1933, the defendant, La Chemise Lacoste, a company founded in France by Mr René Lacoste to carry on business in relation to clothing, started to use the alligator mark and motif.  The disclosed use was in relation to a tennis shirt, designed by Mr Lacoste and called the 1212.  In 1947, the claimant Crocodile International Private, became involved in the business of the manufacture and marketing of clothing, from its premises in Singapore entitled Crocodile House, under the name or mark ‘Crocodile’.  On the 18th August 1981, the word mark ‘Crocodile’ was registered in the name of the defendant, La Chemise Lacoste, under number 1 159 672 as CROCODILE in relation to ‘shirts, not including sport shirts’.  
7.	The registration was duly advertised on the 1st of May 1985, and it is common ground, that the five-year period for the purposes of Section 46(1)(a) commenced on the next day and expired on the 1st of May 1990.  In August 2006, a firm called Amsel was commissioned by the claimant, to investigate the use of the mark CROCODILE by the defendant.  Their report dated the 18th of August 2006, revealed no relevant use.  So on the 19th of October 2006 solicitors for the claimant invited the defendant to produce any evidence in its possession of its use of the mark.  The defendant did not reply.  On the 18th of January 2007, the claim form was issued in respect of these proceedings seeking revocation of the registration with effect from the 19th of October 2006, or a declaration as to its invalidity.  I should add that the second claim is still live, but is not the subject matter of the application for summary judgment.  Indeed, the trial of this action is fixed for the 24th of November next.
8.	Through the original defence served on the 19th of March 2007, the disclosure by the defendant on the 6th of November 2008, and the witness statement made on behalf of the defendant by Monsieur Blanc on the 25th of September 2008 and the submissions of counsel made before me, the nature of the use now relied on by the defendant is clear.  
9.	The evidence before me consists of, in chronological order, the witness statement of Mr Coulstock, made on the 24th of January 2008 on behalf of the defendant, as to the sales of the garments alleged in the defence to which was attached a swing tag or label bearing the mark CROCODILE.  Second, the witness statement of Mr David Layton, a partner in the firm of solicitors acting for the claimant, made on the 21st of April 2008 in support of the application for summary judgment.  Third, a witness statement dated the 24th of June 2008 of Mr RJ Norris, the manager of the retail arm of KBL Ltd, the exclusive distributor in the United Kingdom of the products of the defendant concerning the white L1212, known as the crocodile shirt, and in particular, whether it is ‘a sports shirt’.  Fourth, the witness statement of Erin Arrowsmith head of store planning for the defendant, made on the 23rd of June 2008, concerning the defendant’s range of products and their display.  Fifth, the witness statement for the defendant of Monsieur Blanc, the intellectual property manager of the legal department of the defendant, made on the 25th of September 2008.  He deals extensively with the use of the mark in relation to the white L1212 and whether that garment can be regarded as a sports shirt.
10.	The uses on which the defendant now relies, are clearly set out in paragraph 31 of the witness statement of Monsieur Blanc.  He claims that such uses consist of four matters.  First, colloquial use of the words ‘crocodile shirt’ to denote the white L1212.  Second, the use of the word in the defendant’s bi-annual collection plans, produced by its manufacturer for the purpose of marketing the defendant’s product range by the defendant’s associated companies, licensees and independent distributors across the world.  Third, the use of the word by an associated company of the manufacturer, that is to say Montaigne in receipts or credit notes, rendered to KBL, the exclusive distributor of the defendant’s products in the United Kingdom and fourth, the use of the word on the swing tag or label, attached by the manufacturer to the L1212, before shipment to distributors and remaining so attached at least until the point of sale of the garment. 
11.	In addition, Monsieur Blanc contends that the L1212 is not marketed, sold or regarded or used by the public as a sports shirt.  For this purpose, he and other witnesses for the defendant, point to the marketing of the L1212 as part of the classic as opposed to the sport range of the defendant’s products, it’s display in the defendant’s boutiques separately from the sport range, and the public perception of the L1212 as casual, not sportswear.  
12.	The evidence contains much documentary material to support the general propositions on which Monsieur Blanc relies.  I shall refer to two specific aspects on which the claimant places reliance.  First, the L1212 is referred to from time to time, in various marketing documents as ‘Sportswear’.  Second, the instructions to boutique managers issued by the defendant, clearly requires them to ensure that in any boutique display of the L1212, the swing tag or label should be hidden.  In addition, the evidence of Mr Norris to which I have referred, indicated that he did not regard CROCODILE as a brand.  
13.	The case for the claimant may be summarised thus.  In relation to the first issue, namely genuine use, counsel for the claimant submits that the use of the word ‘crocodile’ by the defendant, which is admitted, is only relevant if it is genuine.  He submitted by reference to the decisions of the European Court of Justice in Ansul BV v Ajax Brandbeveiliging BV [2003] EMTR 85 and Laboratoire De La Mer Trade Mark (2004) FSR 38, and of the Court of Appeal in the latter case, that such use must be for the purpose of maintaining or creating a share of the market.  He contended that that condition is not satisfied, because first the swing tag is deliberately hidden before sale and second, the documents in which the word is used, are for internal use only.  
14.	In relation to the second point, namely whether the use, if genuine, was in relation to a sports shirt, and so outside the specification of the trademark registration, he contended that the use was so related, because the white L1212 was originally designed as, and is still known as a sports shirt.  He contended that the marketing by the defendant, or the incidental use of L1212 as a casual shirt, cannot alter its essential nature.  In summary, he submitted that any sports use is enough to exclude all use from being in relation to goods for which the mark is registered.
15.	This was not accepted by counsel for the defendant.  He pointed out that the claimant can only succeed if it establishes either that there has been no genuine use, or that the white L1212 is only a sports shirt.  In relation to the genuineness of the use, he contended that the evidence demonstrated that the mark was consistently used in relation to the L1212, from manufacture to sale.  He submitted that such use was use of the mark as a mark in relation to a substantial number of sales of the L1212 throughout the relevant period.  As such, the use was genuine.  He went on to submit that the evidence demonstrates that the defendant does not market or sell the white L1212 as a sports shirt so that, presumably, the public buys it otherwise than as a sports shirt.  If all else failed, he submitted that the court cannot determine on an interlocutory application, that the white L1212 is sold only as a sports shirt.  
16.	Council Directive 89/104 was promulgated to approximate the laws of member states related to trademarks.  Articles 10 and 12 provide as follows;
’10.1  If within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trademark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use’.  
I omit paragraphs two, three and four.

17.	Article 12 is headed ‘Grounds for Revocation’;
‘1. 	A trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;…’.

I need not refer to the remaining parts of Article 12.  
18.	Section 46(1) of the Trademark Act, 1994, which I have already quoted was enacted to give effect to those articles.  Accordingly, it is to be interpreted and applied in accordance with the proper interpretation of Articles 10 and 12.  Those Articles have been considered by the European Court of Justice in two cases, the first is Ansul BV v Ajax Brandbeveiliging BV [2003] ETMR 85.  That case concerned the use of a mark in relation to fire extinguishers by use in connection with associated components or substances.  In paragraphs 35 to 38 (both inclusive) the Court elaborated on the meaning of general use, as appearing in Articles 10 and 12 of the Directive to which I have referred.  The paragraphs to which I have referred are in the following terms;
’35.  Next, as Ansul argued, the eight recital in the preamble to the Directive states that trade marks “must actually be used or, if not used, be subject to revocation”.  “Genuine use” therefore means actual use of the mark.  That approach is confirmed, inter alia, by the Dutch version of the Directive, which uses in the eight recital the words “werkelijk wordt gebruikt” and by other language versions such as the Spanish (“uso efectivo”), Italian, (“uso effettivo”) and English, (“genuine use”). 

36. 	“Genuine use” must therefore be understood to denote use that is not merely token, serving solely to preserve the rights conferred by the mark.  Such use must be consistent with the essential function of a trademark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.  

37.	It follows that “genuine use” of the mark entails use of the mark on the market for the goods or services protected by that mark and not just internal use by the undertaker concerned.  The protection the mark confers and the consequences of registering it in terms of enforceability vis-à-vis third parties cannot continue to operate if the mark loses its commercial raison d’etre, which is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings. Use of the mark must therefore relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns.  Such use may be either by the trade mark proprietor or, as envisaged in Article 10(3) of the Directive, by a third party with authority to use the mark.  

38.	Finally, when assessing whether there has been genuine use of the trade mark, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark’.

19.	In Laboratoire De La Mer Trade Mark (2004) FSR 38, the European Court of Justice, answered a reference in terms which showed that it considered that all the necessary legal guidance was contained and to be found in its judgment in Ansul.  Both judgments were considered at some length and applied by the Court of Appeal in England in La Mer Trade Mark (2006) FSR 49.  Counsel for the claimant, suggested the Court of Appeal in La Mer did not properly apply the principles laid down by the European Court of Justice in Ansul and La Mer and that I should follow the approach of Mr Justice Blackburne, whose decision the Court of Appeal reversed.  In oral argument he accepted that that approach was not open to either him or me in this Court.  Instead he submitted that I should not regard the application by the Court of Appeal of the principles established in Ansul to the facts of La Mer as indicative of the manner in which I should apply the same principles to the facts of this case.  That submission I accept.  But it is still necessary to ascertain whether the Court of Appeal added to or further explained, the principles established by the European Court of Justice in the two judgments to which I have referred.
20.	In that case, the use relied upon was the import of a small quantity of the relevant goods by five separate deliveries by the proprietors’ agent in Scotland.  After making some arrangements for the sale of those goods to private parties of the ‘Tupperware’ type the agent went out of business.   Mr Justice Blackburne considered that those facts did not constitute genuine use because there had been no exposure of the goods to the relevant market.  The Court of Appeal disagreed, and in paragraphs 32 and 34, Lord Justice Mummery stated his conclusions, having quoted all the relevant passages from the European Court of Justice judgments, in these terms.
21.	In paragraph 32 he said this;
	‘Blackburne J interpreted and applied the rulings of the Court of Justice as placing considerably more importance on the market in which the mark comes to the attention of consumers and end users of the goods than I think they in fact do.  I agree with Mr Tritton that the effect of Blackburne J’s judgment, was to erect a quantative and qualitative test for market use and market share which was not set by the Court of Justice in its rulings.  The Court of Justice did not rule that the retail or end user market is the only relevant market on which a mark is used  for the purpose of determining whether use of the mark is genuine’. 

And the second passage comes from the second part of paragraph 34 in these terms;
	‘The buying and selling of goods involving a foreign manufacturer and a UK importer is evidence of the existence of an economic market of some description for the goods delivered to the importer.  The mark registered for the goods was used on that market.  That was sufficient use for it to be genuine use on the market and in that market the mark was being used in accordance with its essential function.  The use was real, though modest, and did not cease to be real and genuine because the extinction of the importer as the single customer in the United Kingdom prevented the onward sale of the goods into, and the use of the mark further down, the supply chain in the retail market, in which the mark would come to the attention of consumers and end users’.  

22.	Lord Justice Neuberger likewise concluded that if the use was genuine, it did not also have to be significant or substantial; nor for the use to be genuine did it have to be such that the use was communicated to the ultimate consumer, use in respect of a wholesale market was enough.
23.	I turn then to the question whether the admitted use was ‘genuine’ within the meaning of that word in the context of Section 46(1)(a).  For that purpose, I must consider all the facts and circumstances (see Ansul paragraph 38) and seek to identify use consistent with the essential function of a trademark (Ansul paragraph 36) namely as denoting the origin of the goods (also Ansul paragraph 36).  In doing so, I must ignore use which is internal to the proprietor of the mark or his licensees (Ansul paragraph 37) or merely ‘token’ in the sense of serving only to protect the rights conferred by the mark (Ansul paragraph 36).
24.	Counsel for the claimant sought to split up the train of distribution from the manufacturer to the ultimate consumer so as to persuade me to disregard as ‘internal’ the plain and substantial use of the word ‘crocodile’ in relation to the L1212, first, by the manufacturer Devanly in its collection plans and second the use by the associated company of the manufacturer, Montaigne, in the invoices or credit notes it rendered to KBL, the exclusive UK distributor for all the products of the defendant.  
25.	I doubt whether that approach is consistent with the decision of the Court of Appeal in La Mer, but I do not need to dwell on that point further because I am satisfied, that there is a real prospect that at the trial the defendant will succeed in establishing that the use of the mark ‘crocodile’ on the swing tag or label fixed to the L1212 and available for inspection by the ultimate consumer is a genuine use of the mark as a trademark.  The swing tag or label is fixed to the back of the collar of the garment by a plastic thread through the Lacoste label.  On one side it contains the legend L1212 followed by the digits 01 to indicate the colour white.  There are two bar charts followed in smaller, but still clearly legible, script the word ‘crocodile’ and a six digit manufacturer’s reference.  On the other side of the swing tag or label, is printed the Lacoste name and emblem and the indication in five languages, that the garment is sold exclusively through the Lacoste selective distribution network.  On one or other side of this swing tag or label, and it may not always be the same side, is attached a sticker indicating the retail price of the relevant garment.  
26.	Counsel of the claimant submits that this use is ‘token’.  He relies on the instructions contained in the Lacoste White Book on Merchandising, issued to the defendant’s boutique managers in 2006, which contains the direction ‘Remember to hide the label’ (p. 55) and ‘Labels and anti-theft devices hidden from view’ (p.72).  But, as the context to those passages shows, these directions are for the purpose of achieving a satisfactory shelf display of the relevant garment.  The fact remains that the label is there to be seen by the consumer.  Indeed, it is almost certain that he or she would examine it in order to ascertain the retail price of the article. 
27.	Likewise, the counsel for the claimant contended that because Mr Norris, the area manager for the retail arm of KBL, had never heard of the Lacoste brand under the name or mark of crocodile, the use of the word on the swing tag or label could not have been used in the relevant sense, that is as a trademark indicative of origin.  I do not accept that the un-cross-examined evidence of Mr Norris, is sufficient to dispel a clear indication given by the swing tag or label.  If there is a requirement that to be genuine the use should be substantial as well it is clearly satisfied in this case.  The unchallenged evidence of the defendant shows, that in the relevant five-year period, there were forward or additional orders for 106,776 white L1212 shirts.  At an approximate retail price of £50 the value of those orders is obviously considerable.
28.	I turn now to the second issue.  Given that the use of the mark crocodile in the relevant five-year period was genuine, was it ‘In relation to the goods...for which it is registered’?  Such goods are described in the registration as ‘Shirts but not including sport shirts’.  Those words must be interpreted as at the date of registration, that is to say in August 1981, in the light of how, as a practical matter, they would be understood for the purposes of trade.  See on both points, Kerly the Law of Trademarks and Trade Names, 14th Edition, paragraph 14-034.  Counsel for the claimant submits that the essentials of a sports shirt are those described by Monsieur Blanc, in paragraph 34 of his witness statement in these terms.
	‘For Lacoste, designing and marketing clothing for sports involves very different concepts and values to clothes intended for casual use.  For sports items, unlike casual wear items, particular emphasis has to be placed on the performance of fabrics, including their lightness and durability, their coolness and ability to draw perspiration away from the body and, ultimately, their comfort under sporting activity.  Sports wear products are designed accordingly with these requirements in mind.  Sports clothing is, accordingly, different to casual wear.  This distinction is unsurprising and is reflected not only in the different materials and construction but they are sold in different parts of the shop and are branded differently’.

29.	Counsel for the claimant contends that the evidence shows that all these characteristics, except perhaps that of durability, are possessed by the L1212.  For that purpose, he relies on the passages in the publication to which I have already referred, namely Lacoste: The Legend.  He contends that throughout the relevant period the L1212 was clearly identified by the consuming public as a sports shirt, even though it might also have been used as casual wear.  
30.	In my view, this issue is essentially one of fact to be determined at trial.  There is no doubt, that over the last 30 years or so, clothing originally designed for use by those participating in a game, has been manufactured and marketed as casual wear for the spectator and others.  An obvious contemporary example is the football strip or shirt, bearing the name or number of a well-known professional footballer, commonly worn by men long past the age of participation on the pitch.  This issue will require an examination of how far that process had gone in 1981 in order to identify the essential nature of the L1212 at that time.  That process will resolve the question of interpretation with the exclusion from the description of the goods to which the mark is registered.  But that is not the end of the matter.
31.	Having so determined the meaning of the registration it is then necessary to determine the goods in relation to which the word ‘crocodile’ was used in the relevant period, that is 1985 to 1990.  The description of the L1212 as ‘Sportswear’ is by no means conclusive of the question whether in the relevant period the L1212 was a sports shirt.  The meaning of the words might have changed by then with the change of use.  For example, the evidence of Monsieur Blanc, demonstrates that the word sportswear now, is indicative of casual wear.  The defendant uses the word ‘sport’ to denote garments to be worn by participants in the relevant game.  How far had that process gone in the five years, 1985 to 1990?  
32.	Counsel for the claimant contends that if any use of the mark was in relation to the L1212 when used as a sports shirt then there can be no relevant use of the mark even though there may have been substantial and genuine use in relation to garments made and marketed for casual wear.  I do not accept that proposition as a matter of law.  I can see no good reason why if the L1212 is marketed in one shop for wearing on the tennis court and in another as casual wear, the use of the mark in relation to the former should preclude consideration of the use of the mark in relation to the latter for the purposes of s.46(1)(a).  I was not shown any reported case which deals with this point.
33.	There is clear evidence that the swing tag or label has been extensively used on L1212s marketed and sold as casual wear both in and after the relevant period.  In my judgment, the consequence of the existence of this evidence, is that the defendant has a real prospect of demonstrating at the trial, that there was genuine and substantial use of the mark in relation to the range of goods for which the mark ‘crocodile’ was registered.  
34.	Counsel for the defendant summarised the question on this part of the action as “whether there had been in the relevant period genuine use of the L1212 otherwise than as a sports shirt”.  Though it can be misleading to conflate separate issues in this way, in this case I find it helpful.  For the purposes of this application the question is whether the defendant has a real prospect at the trial of establishing that the answer to that question is in the affirmative.  For all the reasons I have given, in my judgment, it is.  It follows, that I dismiss this application. 
	THE CHANCELLOR:  Yes Mr Norris.
MR NORRIS:  My Lord, there are two points [inaudible] one of which for the trial would be the preparation between [inaudible] and trial.  The second matter is costs.  Can I deal with the evidence point first of all.  We had previously suggested through my instructing solicitors, exchanging this [inaudible].  I was going to suggest maybe sometime early next week but time is very short My Lord.
THE CHANCELLOR:  Well can you not agree the directions?
MR NORRIS:  Well we actually wrote a letter many weeks ago, I am afraid we have not had a response.
THE CHANCELLOR:  Why not Mr Edenborough?
MR EDENBOROUGH:  My Lord what we were doing [inaudible] –
THE CHANCELLOR:  Well I really do not want to take up a lot of time in dealing with directions as to evidence, I shall be here until 4.15pm and I will expect you to have agreed the directions, and if you do not, then I will come at four o’clock and make them, but I am not going to deal with it now.  
MR NORRIS:  My Lord, the second matter is costs.  May I hand up our costs schedule for the application?  My Lord, my client is a French company, and that is why there is no VAT included on the schedule.
THE CHANCELLOR:  What are you asking me for?
MR NORRIS:  We are asking for an order of costs in our favour, that costs of the application be payable by the claimant applicant.  
THE CHANCELLOR:  Yes, and a summary assessment.
MR NORRIS:  And a summary assessment for payment on account.  Sorry My Lord, I did not hear that.
THE CHANCELLOR:  Summary assessment or payment of account?
MR NORRIS:  Yes, My Lord, we would seek a summary assessment today.
THE CHANCELLOR:  Yes.
MR NORRIS:  The [inaudible] we are seeking My Lord, is that attached to the second page of the schedule.  Those represent the costs of this application My Lord.  We have already prepared witness statements for the trial, so we have the costs of before Your Honour, on the schedule My Lord, relevant to costs of taking this in evidence and developing for the purpose of this application, as well as the advice to my client and the fees incurred yesterday.
THE CHANCELLOR:  Well I have not seen it before, I will go through it.  
MR NORRIS:  Of course, My Lord.
THE CHANCELLOR:  Yes.
MR NORRIS:  By way of comparison My Lord, may I hand up the claimant’s schedule of costs.  Thank you very much.
THE CHANCELLOR:  Yes.
MR NORRIS:  My Lord, and then obviously the headline I am trying to [inaudible] is that our fees are outline as headline fees.  There are two other points that flow from that.  If Your Lordship quickly tots up the amount of time spent by the claimant’s lawyer, it comes to about 100 hours, and if you tot up our hours My Lord, it comes to about 50 or 60 hours.  I just quickly [inaudible].  So we spent actually less time on this, and if Your Lordship will recall the evidence, the only evidence put forward by the claimant was the short statement of Mr Lakeman[?] included in the exhibits, and the rest of the bundles are all ours.  So in fact, it is my instructing solicitors who have done the bulk of the work, and in those circumstances My Lord, I submit that the costs [inaudible].
THE CHANCELLOR:  Yes Mr Edenborough.
MR EDENBOROUGH:  My Lord, that is not entirely right.  With respect to the five-day period, there was an awful lot of work that my instructing solicitors had to do.  Because My Lord, what we did is we requested that they told us what the date was when the mark was registered, and we got silence from that.  And so therefore, we had to go off and explore the matter with the UK IPO, and that required quite a lot of work.  Secondly, also we were the protagonists in this case and therefore we did all the running.
THE CHANCELLOR: Sorry, I cannot hear you.
MR EDENBOROUGH:  I am sorry My Lord, we were the protagonists in this case.  And so therefore, it was for us to make the running.  And even though the burden in respect of showing use is upon the defendant in this case, Section 100 of the Trademarks Act, a lot of the stuff they produced was clearly material that just came off the computer.  The whole of volume C for example, are just invoices.  And so therefore, I do not accept that they did all the work and we did a lot less, quite the contrary.
THE CHANCELLOR:  Yes.  Well there are two points of that.  First of all, do you resist the claim of the costs of the application?
MR EDENBOROUGH:  As a matter of principle, no My Lord.
THE CHANCELLOR:  No.  So I will order your client to pay the defendant’s costs of this application.
MR EDENBOROUGH:  My Lord.
THE CHANCELLOR:  So then there is the question of assessment.
MR EDENBOROUGH:  My Lord.
THE CHANCELLOR:  The bill submitted by Mr Norris, is £24,615.  The fee-rate is substantially less than yours.  Is there anything in this bill that you think or suggest is untoward?
MR EDENBOROUGH:  My Lord, one is always faced with the problem that I cannot answer that expressly because without any further detail, one does not know whether anything in particular – there is so much work being done in it.  So My Lord, one can only make a general submission that normally if there is a bill that is presented, eventually it is taxed down when somebody looks at it in detail.  But without the detail, I can only [inaudible]. I know My Lord.
THE CHANCELLOR:  That used to be the conventional view but I am not sure that it is now, because the costs judges perhaps are a little more generous than they used to be in what work is required and at what level.
MR EDENBOROUGH:  Well My Lord in that situation, the logic of that is, is the defendant can place whatever bill they like before Your Lordship, and I have no arguments against it.
THE CHANCELLOR:  Sometimes it fits the impression that they do.  I mean I do not, if you do not have any particular objection to any particular item, I am not sure I am entitled so say that where on an assessment, you will only get two-thirds.
MR EDENBOROUGH:  No My Lord.
THE CHANCELLOR:  That may have been the case in the past.
MR EDENBOROUGH:  My Lord therefore, as a matter of principle, because neither I can make any proper founding criticism, nor in my submission can you My Lord, make any criticism or acceptance of that bill.  Then it is inappropriate to summarily assess it.  What you can do though, is order some money account, and as for the rest to be scrutinised.  And so in my submission My Lord, that is the only proper [inaudible].
THE CHANCELLOR:  So you accept that I can make an order for payment on account, but you want a detailed assessment.
MR EDENBOROUGH:  My Lord, yes.  And that must be right, because if you have a bill My Lord, in your experience you would have a feeling for so to speak an irreducible minimum.  And that is a sum that could be ordered on account at a matter of great principle.  And then to defend and protect the defendant, sorry My Lord, the losing party in this case, the excess above that can be subject to somewhat of an analysis, a proper analysis, as opposed to mere speculation on either part.
THE CHANCELLOR:  Well I can see the force of that, but it is inconsistent of the Rules.  Because if that right is true in every case, then one would therefore render the rule requiring summary assessments, in certain cases a nullity.
MR EDENBOROUGH:  In my submission, it is consistent.  Because there will be cases where the rules with respect to summary assessment can be more clear with greater degree of certainty [inaudible].  In particular, in a case where the bill is smaller and the case is much simpler.  Here, there has clearly been a large number of issues and a large amount of work has been done, and so therefore, Your Lordship’s degree of confidence [inaudible].
THE CHANCELLOR:  Which is the Rule that deals with summary assessment?  It is 44-something.
MR EDENBOROUGH:  The general principles My Lord, are in Rule 44.
THE CHANCELLOR:  Which is the one that deals with summary assessment?
MR EDENBOROUGH:  Yes My Lord.  My Lord, my learned friend has found it.  It is practice directions Part 44, details on page 1194.  Oh sorry, that is the old provision, sorry.   My Lord, it is page 1182 of the 2008 White Book.  Is that right?  Oh no, my apologies My Lord, sorry it is 1173, I am sorry.  It is the practice direction to Part 44, paragraph seven, page 1173.
THE CHANCELLOR:  That is what I thought, 13.2 ‘The general Rule is the Court should make summary assessment if it is fast track’...‘Less than one day hearing’.  Well unless you can find any other provision, it appears to me that 13.2 requires me to make a summary assessment in the case of a hearing lasting less than a day, and that unless you have got some good ground to suggest otherwise, that is what I should do.
MR EDENBOROUGH:  My Lord, might I just direct Your Lordship’s attention although to page 1175.
THE CHANCELLOR:  Yes.
MR EDENBOROUGH:  It is paragraph 13.13, and in particular, paragraph (b).
THE CHANCELLOR:  Yes.
MR EDENBOROUGH:  That does not undo My Lord, the fact that you should make a summary assessment.  But what it does do My Lord, is to stilt with you the ability to look at the bill independently of any particular attack on any individual item My Lord.
THE CHANCELLOR:  And on what basis am I meant to do that?
MR EDENBOROUGH:  Well My Lord, the contrary.  Well see My Lord, I do not want to make a submission before you My Lord, that any particular item is wrong, because to be quite frank that would be mere speculation on my part.
THE CHANCELLOR:  Quite.
MR EDENBOROUGH:  And I am not prepared to do that.  I am prepared to make you know, submissions on things that might be weak, but not upon things that are pure speculation.  
THE CHANCELLOR:  Okay.
MR EDENBOROUGH:  So My Lord –
THE CHANCELLOR:  I mean on the face of it, given that I know about this case, the time spent is not unreasonable.  The fee rate of the three individuals involved is well within the limits that are allowed by the court, and conventionally by the costs judge.  I do not think I have any reason for suggesting that counsel’s fees were excessive.  There is no VAT anyway.
MR EDENBOROUGH:  No.
THE CHANCELLOR:  So what is wrong with it?
MR EDENBOROUGH:  My Lord, I cannot make any submission against that, but I have made my points My Lord.  I am grateful for My Lord giving me the time [inaudible] My Lord.
THE CHANCELLOR:  I will dismiss the application with costs.  I will as apparently required by Part 44 PD paragraph 13.2, summarily assess the costs of today’s hearing.  The skeleton bill indicates a total of £24,615.90.  This is substantially less than the bill submitted by the other side.  There is nothing in it that counsel for the claimant has thought fit to challenge, and there is nothing in it that I can see which suggests that it is in any way excessive, either by reference to the hourly rate or the time taken, or the quantum of counsel’s fees.  In those circumstances, I will summary assess the costs at £24,615.90.
	I think normally, there is a requirement for payment within 14 days.
MR NORRIS:  My Lord, yes.
THE CHANCELLOR:  Do you want more time?
MR EDENBOROUGH:  My Lord, might I ask for 21, on the grounds that I am dealing with a [inaudible] foreign company.  It is just a matter of logistics.
THE CHANCELLOR:  With 21 days to pay.
MR NORRIS:  My Lord, I am grateful.  
MR EDENBOROUGH:  My Lord, there is one other matter and that is permission to appeal.
THE CHANCELLOR:  Yes.
MR EDENBOROUGH:  I need to ask for it My Lord, because I need to take instructions.
THE CHANCELLOR:  Okay.
MR EDENBOROUGH:  So therefore, My Lord, I ask for permission to appeal.  In essence on the grounds with respect to the sport shirt point, there is a point of law there.  You said that it is a matter of law, and that my submissions to you were wrong.  And in respect to the earlier point, in respect of non-use, sorry genuineness of use, My Lord there is an issue there whether exclusive distributors and what have you, fall within internal or external.  Without letting part of your judgment My Lord, the other part with respect to swing tags, and I basically ask for that as a sweep-up, because otherwise I have not covered all the basis.  My Lord, I do not wish to trespass on My Lord’s time any more than that.
THE CHANCELLOR:  Yes, do you want to say anything about that Mr Norris?
MR NORRIS:  [Inaudible] matter of discretion My Lord.
THE CHANCELLOR:  Yes.  I refuse permission to appeal on two grounds.  First, I do not think there is a real prospect of success on either of the points suggested by counsel.  Secondly, if there is to be an appeal at this stage, it seems inevitable that the trial date will go off again.  I seems to me to be better that the whole issue should be dealt with on appeal after the trial, in the light of all relevant facts and all the other points that may arise.  It would be wrong to expect the Court of Appeal or this Court, to adjust its time limit to take account of an appeal in between.  
MR EDENBOROUGH:  My Lord.  
THE CHANCELLOR:  Would you now both try to agree with reference as to evidence, and if you would hand to me and I will initial them if you agree them.  And if you could both do that and come back before we close at 4.15pm.
Court rises