Kerry Underwood


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Link Up Mitaka Limited trading as Thebigword v Language Empire Limited and Anor [2018] EWHC 2728 (IPEC)

the Intellectual Property Enterprise Court, Her Honour Judge Melissa Clarke, disapplied the IPEC’s capped costs scheme stating:

“Litigants in IPEC must understand that conduct which amounts to an abuse of the processes of the court will cause them to lose the benefit of the protection that the Scale Costs Scheme gives them.”

This appears to be only the second occasion in IPEC where scale costs have been disapplied.

The IPEC scale costs scheme is set out at Part 45, Section IV of the Civil Procedure Rules and CPR 45.30 reads:


(1) Subject to paragraph (2), this Section applies to proceedings in the Intellectual Property Enterprise Court.

(2) This Section does not apply where –

  1. a) the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process;
  2. b) the claim concerns the infringement or revocation of a patent or registered design or registered trade mark the validity of which [has been previously certified]

(3) The court will make a summary assessment of the costs of the party in whose favour any order for costs is made. Rules 44.2(8), 44.7(b) and Part 47 do not apply to this Section.

(4) “Scale costs” means the costs set out in Table A and Table B of the Practice Direction supplementing this Part.”

The mandatory application of the Scale Costs Scheme is subject to the court’s discretion to award additional amounts where a party has behaved unreasonably (CPR 45.32) and where the Scale Costs Scheme does not apply then the general costs rules in CPR 44 apply.

Here IPEC found that the court has a general discretion, and although that discretion should only be exercised in exceptional circumstances, it is not confined to cases where the behaviour amounts to an abuse within CPR 45.30(2)(a).

On the facts here the judge found that the defendants’ conduct was an abuse and thus the mandatory disapplication of scale costs applied.


A pragmatic and sensible decision, as always by this particular judge.

The issue of what does, or does not, lead to the potential disapplication of capped, scale or fixed costs will become of much greater importance as Lord Justice Jackson’s proposals to extend fixed costs to all civil claims of £100,000 or less are implemented, probably in 2020.

The voluntary capped costs pilot scheme in the Business and Property Courts in Leeds, Manchester and London, covering claims up to £250,000 is due to start this month, that is January 2019.


Written by kerryunderwood

January 8, 2019 at 8:30 am

Posted in Uncategorized

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