First claimant being famous pop star – Order for costs – Payment on account – Injunction – Infringement of intellectual property rights

Fenty and others v Arcadia Group and another: Chancery Division: 25 September 2013

In an earlier judgment (see [2013] All ER (D) 410 (Jul)), it was held that Topshop’s sale of t-shirts with an image of a pop star known as ‘Rihanna’ on them, without her approval, was an act of passing off. In the instant proceedings, consideration was given to the appropriate costs and to any further orders to be applied in the light of that judgment.

The claimants sought their costs in the case and payment on account of costs. They further sought an injunction on any future wrong use of the image in question by the defendants. The claimants had earlier in the proceedings submitted an estimate of costs of around £308,000. In the instant application, an estimate of costs was in the region of £919,000. Consideration was given to the fact that there had been a split trial and to whether, as submitted by the defendants, any order for costs should reflect the fact that certain evidence, which had been called by the claimants at pre-trial applications, had been ruled inadmissible.

The defendants submitted, amongst other things, that the claimants’ costs for obtaining, preparing and filing of three witness statements should be disallowed where the evidence of one of those witnesses had been ruled inadmissible and where the court had placed no reliance on that evidence.

The court ruled: In the instant case, the claimants were entitled to costs. The correct course was to order the defendants to pay the claimants’ costs subject to a detailed assessment. It followed that general costs would be ordered to go the general way. However, the court was satisfied that the order proposed by the defendants, that the claimants’ costs for obtaining, preparing and filing of the three witness statements should be disallowed, was appropriate and fair in the circumstances. The claimants had incurred costs and it was appropriate, in the circumstances to order interim payment on account of costs.

However, the court was not satisfied that it could safely use the figure of £919,000 because it was so much higher than the estimate given earlier in the proceedings. The increase in the estimate of costs, without explanation, was startling. The only safe basis that the court was able to make an order for payment on account of costs was to use the earlier estimate provided in the course of the proceedings. Further, it was right and fair that an injunction be granted to prevent any future similar wrong use of Rihanna’s image by the defendants.

The claimants would be awarded their costs subject to the reduction indicated in respect of the pre-trial applications. The defendants would be ordered to make a payment on account of costs of £200,000, to be paid within 14 days.

Martin Howe QC and Andrew Norris (instructed by Reed Smith) for the claimants; Geoffrey Hobbs QC and Hugo Cuddigan (instructed by Mishcon de Reya) for the defendants.