M L Technology Limited & Anor v BEAT Sam Limited & Ors [2026] EWHC 2142 (Ch)

[2026] EWHC 2142 (Ch)Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLCLAIM NUMBER: IL-2021-000063Date 14 August 2026IN THE HIGH COURT OF JUSTICEBUSINESS AND PROPERTY COURTS OF ENGLAND AND WALESINTELLECTUAL PROPERTY LIST (ChD)
Before
MR DANIEL ALEXANDER KCSitting as a Deputy Judge of the Chancery DivisionB E T W E E N : -
Between
M L TECHNOLOGY LIMITEDClaimantNAUREX LIMITEDClaimantB.E.A.T. SAM LIMITED t/a NAUREX B.E.A.T. SAMDefendantTECHNI-TASK CONSULTING LIMITEDDefendantERGONOS CONSULTING SADefendantGROUPE CBV INGENIERIE SASDefendantCAPEFRONT S/A AGDefendantMR SYLESTRE BLAVETDefendantMR THOMAS DE VILLEMEURDefendantMR BERNARD ROZINTHEDefendantThomas Elias (instructed by Virtuoso Legal) for ClaimantsGregory Banner KC and Emily Gailey (instructed by Fladgate) for DefendantsHearing Hearing date: 21 July 2026APPROVED JUDGMENTThis judgment was handed down remotely by circulation to the parties' representatives by email. It will also be released for publication on BAILII and other websites. The date and time for hand-down is deemed to be 10.30 on 14 August 2026. I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.INTRODUCTION
[1]I gave judgment in this case on 18 June 2026 [2026] EWHC 1483 (Ch) (“the Main Judgment”), following extensive post-trial submissions from both sides in April and May 2026, focussed primarily on what had emerged as the main issue in the case (the period of reasonable notice of termination of implied licences).[2]Those submissions took account of recent Court of Appeal and Privy Council authority from 2026. It became clear, in the light of those submissions that, on one of the aspects of the case, further evidence was necessary to determine whether there was infringement of copyright, given the period of reasonable notice of termination and the lack of detail about the copyright works on the Naurex Website.[3]I therefore ordered a somewhat longer consequentials hearing than is common and gave permission to the parties to file further evidence on the substantive points and on other consequential matters.The following issues required determination although some of them fell away or were modified during the course of argument. The Marksa. When did BEAT stop using the Marks (the “cessation date”)?b. What (if any) use of the Marks prior to the cessation date amounted to infringement? The Website a. When did BEAT stop using the website (as above, the “cessation date”)? b. What use (if any) was there of the website prior to the cessation date which prima facie might have amounted to infringement?c. If there was such use, what copyright works to which MLT had title were reproduced prior to the cessation date? The Reliefd. Are the Claimants entitled to any injunctive and related relief?e. Are the Claimants entitled to any financial relief?f. Should financial relief for any infringing use of the Marks be determined summarily? i. If so, how, and in what amount? ii. If not, is MLT entitled to an enquiry or account (and if so with what directions)?g. Should any financial relief in respect of the Marks be stayed pending the outcome of the Swiss Proceedings? Costsh. Where does the incidence of costs fall?i. What, in light of the proper incidence, is the appropriate order as to costs?j. Should there be any interim payment as to costs and if so in what amount?k. What is the appropriate way to deal with the Claimants’ Costs Budget Variation Application? The consequentials hearing[4]The consequentials hearing was substantial. The evidence for it alone ran to some 1000 pages (including exhibits). Over 30 authorities were cited. The hearing lasted a (long) court day. I resolved the majority of the issues on the final order during the course of argument giving ex tempore rulings but indicating that, where appropriate, I would supplement reasons in writing. This judgment does that and indicates why certain issues raised do not fall for determination. One area where I was not able to reach a final view or give an immediate judgment was costs. The differences between the parties on costs were fundamental and, as matters developed, may be the most commercially significant issue in the case. Argument on those issues concluded towards the end of the court day and I therefore reserved judgment. Copyright in the Website works[5]On one issue, whether use of the Website works had ceased prior to the end of the period of reasonable notice, I was able to reach sufficiently clear conclusions based on the further evidence. I therefore gave an oral judgment at the hearing. The evaluation did not require analysis of authority or principle. In summary, I found that there had been no use of those copyright works to which MLT had title beyond the period of reasonable notice (which neither side ultimately suggested had been wrongly determined to the extent of wishing to press an appeal). Neither side suggested that further written reasons for these findings were required or that they wished to take that matter further. I have therefore not said more about that point here.[6]For completeness, I made a conditional finding that, if I was wrong that there had been no (or rather no relevant use) beyond the period of reasonable notice and the question of damages for use beyond that period arose(a) these should be assessed summarily (as to which both parties agreed) and(b) I would have assessed damages in the sum of £1000. That was a “broad axe” determination based on the evidence that the costs of commissioning an entirely new web site were said by MLT to be about £9000 (having regard to inflation) or about £17,000 (depending on whether the comparable taken was an inflation-increased fee for creation of the original website or the cost of producing the Claimants’ solicitors’ website).[7]I took account of the fact that the period of infringement would have involved considerably less use of the copyrights than a permanent licence for such use and that it did not appear that copyright was claimed in all of the aspects of the Website. This meant that this figure would have to be reduced considerably from those put forward as the costs of commissioning a new website. That approach was in line with that summarised by HHJ Hacon in Henderson v All Around the World Recordings Ltd [2014] EWHC 3087. It was not clear that the inflation adjustment was appropriate. However, it seemed that a licence fee of about 20% of the cost of the original website would be reasonable in all the circumstances. If it matters hereafter, the parties can refer to the exchanges in oral argument as to why I was not prepared to accept that the Claimants’ approach to quantification was correct and that the reasonable licence fee should be a relatively modest fraction of the original price of designing the relevant version of the Website.[8]I drew attention to unsatisfactory aspects of the way in which that part of the case had been advanced (reflecting points made in the main judgment) and that it was not clear, even after trial and judgment, that the works in respect of which a claim was made were those in respect of which title had been assigned. In the event, that point became academic. Given that this finding has no wider implications, it is not necessary to say more about it. Remaining issues[9]The main issues remaining were therefore:a. Financial relief for the trade mark claim.b. Disclosure.c. Injunction and stay.d. Publicity order.e. Costs. FINANCIAL RELIEF FOR THE TRADE MARK CLAIM Summary assessment of trade mark infringement damages vs inquiry

FINANCIAL RELIEF FOR THE TRADE MARK CLAIM

[10]MLT contended that there should be an inquiry as to damages for which there should be further disclosure, expert evidence and another fully contested hearing. MLT’s solicitors had apparently identified an expert in intangible asset valuation who they wished to instruct. At the hearing, MLT confirmed that it would be seeking damages based on a reasonable licence fee. That seemed inevitable, since MLT is not trading under the mark Naurex (and never had been) and would have no claim for loss of its own profit. Accounts of profits are notoriously difficult to advance and involve multiple questions of causation and attribution. So, although this was potentially live before the hearing, there was no remaining question of election between damages and account.[11]BEAT’s position was that the court should make an immediate summary assessment and that any other course would be disproportionate. It contended that the court should also determine now whether any other alleged acts of continued infringement were infringing at all (such as those alleged with respect to use on LinkedIn) and feed that into the evaluation of relief. That gave rise to a complex set of submissions as to whether, after Capefront’s rebranding exercise, residual use of which MLT complained constituted trade mark infringement at all. The use in question was use on LinkedIn, the Naurex Domain name, the Capefront Website and the BEAT company name. Those arguments, developed at length in the Defendants’ skeleton for the hearing, involved new substantive determinations of whether (for these uses) there was liability at all.[12]On the assumption that the issue on an inquiry as to damages was what a reasonable licence fee would be for the right to extend the period of reasonable notice, it is unlikely to be necessary to decide any of these issues, some of which are not straightforward.[13]I have reservations, having considered the points made by the Defendants, as to whether the distinction they seek to make between use of the trade mark and the trade name are sufficient to avoid those further uses being infringements but for the licence. However, it is unlikely that any of those points are likely to matter for the now proposed approach to quantification of damage. On the assumption that BEAT was permitted to use the mark Naurex as a trade mark (in whatever way it wished) until the end of the period of reasonable notice, BEAT may be (or may have been) entitled to explain to customers and consultants that its previous brand was Naurex and that it was now trading under a new name. So, even if the uses in question were infringing uses, the practical difference between these uses and non-infringing uses may have been so slight as not to make a real difference to quantum, if assessed on the basis of a reasonable licence fee.[14]BEAT contended that relief in respect of any short period of infringement of the Marks should be assessed summarily at a licence fee which did not exceed £50,000. This figure was said to represent the “absolute maximum hypothetical licence fee which MLT would have been paid for the use of the Marks if it had licensed them to BEAT for the period between 24 January 2022 (the expiry of the implied licence) and 1 January 2024 (following the conclusion of the rebranding exercise), i.e. a period of approximately two years.” It was not clear on what basis this was calculated but, when pressed, BEAT’s counsel said that it represented a sum reflecting between about £10,000 and £20,000 p.a. for the relevant period. It remained unclear how this was evaluated.[15]BEAT submitted that the court “hypothesises that both parties were willing, assesses the royalty rate that they would have agreed based on all the relevant evidence available and calculates the sum that would have been paid by the defendant to carry out the infringing acts” (Airconco UK Ltd v DC Air Conditioning and Refrigeration Ltd [2026] EWHC 998 (Ch) at [22], summarising the conclusions of Lord Wilberforce in General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd [1975] 1 WLR 819 at pp.824-827). In reaching such a conclusion “The ultimate process is one of judicial estimation of the available indications” (General Tire at pp 827). None of that appeared in dispute.[16]BEAT contended that the following factors (at least) would go into such an evaluation:a. In 2022 BEAT already had the intention of transitioning away from the Naurex brand towards Capefront, such that it would not have required the licence for a significant further period and would not have been willing to pay a substantial sum to retain the right to use it;b. MLT would simultaneously have wished to license the Marks to Naurex Ltd (and possibly other Naurex Group companies remaining under Mr Machael’s control), such that any licence to BEAT would not be exclusive;c. BEAT had already generated most, if not all, of the goodwill in the name Naurex prior to 2022, as it had been trading under that brand since 2006 (i.e. before the Marks were registered), such that any value the Marks possessed was derived from BEAT’s own efforts; andd. This was not a scenario where a percentage of turnover would have been relevant – the majority of BEAT’s revenue in the relevant period was derived from retaining existing clients, which was a product of good client relationships and client management (not the use of a particular brand name).[17]BEAT also referred to the small trade mark licence fee contemplated as part of the negotiations following the SPA. It was envisaged at that time that there would be an assignment of the Marks from MLT to BEAT and then a licence back by BEAT to certain Naurex Group companies which had been retained by Mr Maechel. BEAT also contended that a relevant factor would have been the fact that there was a major - indeed fundamental - dispute as to whether MLT should have retained the right to the Marks at all which was to be determined by the Swiss court. That, it was said, would have a potential impact on the licence fee.[18]Those are all factors and the temptation to evaluate them and undertake a summary assessment without further ado is strong. However, perhaps surprisingly, MLT contended that these proceedings which have already consumed over £1 of the Claimants’ resources (and over £2 million of the Defendants’) should be further prolonged. That was so, even though it became clear during the hearing that MLT was unlikely to be in a very strong position even to pay its own lawyers to continue them further still less pay the Defendants’ costs should those require payment. There was no evidence that the Claimants were in a materially better position financially than they were in 2023 and would probably be in a worse position, as a result of their decision to press ahead with this litigation. A rational litigant would have wanted to bring this entire matter to an end as rapidly as possible, not to contemplate more expensive litigation. Moreover, BEAT had made an offer pre-trial of £100,000 and was prepared to have the damages valuation fixed at £50,000. The well-known authorities on trade mark licence fees do not suggest that large sums are awarded where a defendant has realistic options to continuing to use a mark. In those circumstances, one might have thought that MLT would be keen to accept a modest sum or at least agree to summary determination.[19]However, MLT’s position was that it had not come ready with sufficiently full evidence to undertake such an evaluation at this stage and that it would be unfair not to permit it to adduce further evidence and at least involve a fuller (if still summary) determination on the issue. MLT also appeared to be taking the position that a claim for a reasonable royalty might be a large sum, sufficient to merit instruction of experts. Approach[20]The correct approach to situations of this kind was set out in In Lifestyle Equities CV & Anor v Amazon UK Services Ltd & Ors [2022] EWCA Civ 552, where the Court of Appeal said (emphasis added):
“97. In intellectual property cases it is conventional for the claimant to claim an inquiry as to damages or account of profits, not damages or profits. The procedural consequence of this is the trial will be split: liability will be determined first and quantum second. Although the court has power to order a joint trial of liability and quantum, there is very rarely done outside the Intellectual Property Enterprise Court small claims track. Usually, if the claimant is successful, an inquiry or account will be ordered without argument at the claimant's election and at the claimant's risk as to costs. 98. In some cases, however, the defendant contends that, even though the claimant has succeeded on liability, no inquiry or account should be ordered either because the claimant has no real prospect of successfully claiming any financial relief beyond nominal damages or because the costs of an inquiry or account would be disproportionate to the claimant's likely recovery. 99. Faced with such a contention, the court must first decide whether the claimant has a real (as opposed to fanciful) prospect of successfully claiming any financial relief: see McDonald's Hamburgers Ltd v Burgerking (UK) Ltd [1987] FSR 112 at 118-119 (Fox LJ) and 121-122 (Kerr LJ), Brain v Ingledew Brown Bennison and Garrett [1997] FSR 511 at 527-528 (Laddie J) and Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40 at [162] (Jacob LJ). If the claimant has not adduced any evidence on this question (e.g. because it has obtained summary judgment on liability), it may be appropriate to give the claimant an opportunity to file such evidence: see Prince plc v Prince Sports Group Inc [1998] FSR 21 at 42 and Beautimatic International Ltd v Mitchell International Pharmaceutics Ltd [2000] FSR 267 at 284-285 (both Neuberger J). 100. If the claimant has no real prospect of successfully claiming financial relief, it should be confined to nominal damages. If the claimant has a real prospect of success, the court should consider whether the costs of an inquiry or account would be proportionate to the claimant's likely recovery. Unless the court concludes that the costs would be disproportionate, it should order an inquiry or account. If the court considers that a full-blown inquiry or account would be disproportionate, it may adopt one of two courses. The first, if there is adequate material already before the court to enable it to do so, is immediately to assess the damages or profits summarily: see e.g. my decision in Primary Group (UK) Ltd v Royal Bank of Scotland plc [2014] EWHC 1082 (Ch), [2014] RPC 26 at [203]-[205].The second course, if there is insufficient material which would enable the court immediately to assess the damages or profits summarily, so that it would be reduced to plucking a figure out of the air, is for the court to exercise its case management powers to determine damages or profits in a proportionate manner by a summary or streamlined process: see Reed v Reed at [164].”
[21]While I am doubtful that the ability of the court to evaluate the licence fee will be greatly improved by further evidence or a further hearing, I cannot at this stage be sure of this. Nor can I be sufficiently sure of the impact of evaluation of the infringement arguments as to the further uses. Ms Ward, a solicitor for the Claimants says in her witness statement on this issue that she is not in a position to comment on the precise level of damages at this stage but says that the Defendants’ use of the Naurex trade mark has been “extensive” and that the Defendants had a reluctance to rebrand away from this.[22]However, this is in tension with the Claimants’ closing skeleton at trial where it was said that the reasonable period of notice was 28 days on the basis that de-branding would be “simple” (See Claimants’ Closing Skeleton, paragraph 117). The evidence at the consequentials hearing from Mr Rozinthe was that it was always his intention that the business would operate under the Capefront name but he took a measured approach: a power-point presentation dated April 2021 showed a clear intention to transition to a Capefront-only brand by 2022.[23]If that was not achieved by that date, that may well not have been because of any real difficulty in doing so. Accordingly, had a demand been made for payment for the right to continue the use of the Naurex mark beyond the period of reasonable notice, there is a strong case for saying that Capefront and BEAT would simply have done what they were originally intending and implemented that more quickly. That is supported by the evidence of Mr Belhandouz who explains that rebranding is a delicate process and the rebranding was put into action in 2023 more gradually. However, this was accelerated as a result of the London and Geneva proceedings. Given the ill will between the parties at that stage, there is a strong ground for believing that BEAT (and Capefront) would have simply transitioned more quickly rather than for it to have been rational to agree to pay any significant sums by way of licence fee.[24]Moreover, I cannot tell at this stage what the impact was of Naurex Ltd itself continuing to use the Naurex mark (which may or may not have been appropriate). It is one thing to move away from a brand. It is another to move away from it when one knows that a rival is using the very brand, since that could then indicate to customers that the “real” Naurex was Naurex Ltd (or Naurex International) when the business that was continuing was in fact BEAT, trading under a different name. It is possible that the court will need to evaluate the licence fee on the basis that there was at least an issue as to whether Naurex Ltd was itself entitled to use the Naurex brand (and if so for what).[25]MLT has not, for this hearing, fully developed its position as to what licence fee would be appropriate as Mr Jonathan Kingsley Evans, the lead solicitor for the Defendants has explained in his evidence. As noted above, BEAT’s rationale for the £50,000 was also somewhat opaque. In particular, there is limited evidence upon which the court could make an evaluation of the costs of moving away from the Naurex mark sooner than BEAT did, which may be an important factor in evaluation. Although I have held that the period of reasonable notice was longer, if the Claimants’ position at trial was correct and that it would have been easy to change sooner, that may have a significant impact on the appropriate royalty – and could reduce it even below the £50,000 put forward by BEAT. But it could also be more. It is unlikely to be an order of magnitude more. The figures for turnover and net profit make it clear that the sum which MLT appears to have in mind for the monetary value of the claim (over £1 million) are wholly unrealistic. They would involve a licence fee larger than BEAT’s net profit made during the whole period since the SPA. I cannot see any basis upon which a court could conclude that a sum of close to that magnitude would represent the result of a negotiation between the parties.[26]However, given the approach suggested by the Court of Appeal in Lifestyle,I do not think it is appropriate here to “pluck a figure from the air” (to adopt the language of that case), without both sides being in a position to make evidence-based submissions on this issue. It is more appropriate in these circumstances not to attempt summary determination. In my view, the right course is for there to be a subsequent summary assessment.[27]While I do not confine the ways in which the parties wish to develop that case, it is unlikely to be proportionate to devote time working out whether certain uses did or did not involve trade mark infringement (or on what basis) if the real issue is what fee would have been reasonable chargeable for extension of the period of reasonable notice.[28]Such a summary determination is likely to be at MLT’s risk since, on the material currently before the court, there is a real argument that a reasonable licence fee for extending the prior of notice would not be more than about £50,000. I say this, in part because, of the outcome of other cases where damages have been assessed for trade mark infringement in circumstances where the infringer could have changed the brand in question relatively easily. For example, in 32Red Plc v WHG (International) Ltd& Ors [2013] EWHC 815 (Ch) Newey J (as he then was) said at [105] (emphases added):
“As I have already said, the fact that William Hill Online had the option of re-branding seems to me to be of central importance. Even so, I think it likely that William Hill Online would have been willing to pay somewhat more than the £50,000 suggested by Mr Boulton. William Hill Online would have needed to factor in, not only the cost and inconvenience attached to re-branding, but the risk that doing so would disrupt the existing carousel. While individual brands were not considered important to the carousel model, William Hill Online could still, I think, have been expected to prefer to continue with the 32Vegas name, not least in case changing it had unexpected consequences. The parties to the hypothetical negotiation are also to be assumed to have in mind that William Hill Online (a) stood to derive benefits from using the 32Vegas name for some time after the expiry of the seven-month hypothetical licence (see paragraph 52 above), (b) would enjoy de facto exclusivity (see paragraphs 53-55 above) and (c) would be free to use the terms and conditions it in fact used (see paragraph 58 above).”
[29]The court ultimately awarded £150,000, far removed from the £5 million sought by the claimants in that case. Having considered the matter in detail for the trial it seems to me that an award at or close to £50,000 is more realistic in this case than an award at or close to £1.6 million which the Claimants put forward as a settlement proposal before trial. In the circumstances (and even on one view on the Claimants’ own case as to ease of transition) a sum of that latter kind seems “out of all proportion to the benefit that the defendants derived from their infringement of [the] marks and to any loss that [MLT] could realistically be thought to have suffered” to adapt the language of 32Red at [108].[30]However, that is not the question for the court at this stage. The question now is whether I should effectively preclude MLT from contending for a larger figure than £50,000 or to prevent BEAT from contending for a smaller one. I do not believe it would be right to give in to the temptation to do so in the face of MLT’s opposition to this course.[31]I have gone into this issue in somewhat greater detail in order to assist the parties in their thinking, should they seek to resolve this issue by ADR or negotiation.

Procedure and Directions

[32]I make the following directions for summary determination having regard to the following. First, BEAT has not contended (at least not at this stage) that pursuit of a summary determination should be subject to MLT providing security for costs although it is unclear whether MLT would be able to pay even its own lawyers to pursue such a claim, let alone BEAT’s costs should the procedure result in an award no greater than (say) £50,000.[33]Second, the issue of what a reasonable licence fee is could readily be resolved in a day’s hearing or even on paper. The sum is not likely to be less than the small claims limit, but it is almost certainly likely to be less than the IPEC limit.[34]Third, further disclosure and expert evidence on this issue is unnecessary and disproportionate. Moreover, a good deal of the evidence and materials to determine the reasonable licence fee is already in.[35]I noted the evidence of Ms Ward that the Claimants “must have” the option of an expert witness on the subject of an account of profits or damages. In cases of this kind there is no question of “must”. Expert evidence is only permitted if it is necessary and proportionate. In this case, I cannot see any real value in it and it is likely to run up still further costs.[36]Fourth, whether payment of any award (and or costs related to it) should be stayed pending the conclusion of the Swiss Proceedings should be determined by the judge hearing the summary determination. Directionsa. There shall be a streamlined procedure for determining the reasonable licence fee for infringement of trade mark.b. The parties shall be entitled to rely on the evidence and disclosure from the trial and at the consequentials hearing.c. Each side shall have permission to serve a Statement of Case on damages of no more than 20 pages those Statements of Case to stand as evidence in the case in so far as verified by a statement of truth and in so far as they contain facts (in accordance with IPEC procedure) unless otherwise ordered.d. MLT shall serve its Statement of Case on or before 12 October 2026 and the Defendants shall serve their Statement of Case in response 28 days thereafter.e. Each side shall be entitled additionally to rely on no more than two further witness statements of fact supplementing any of the existing evidence to be served no less than 28 days before the date fixed for a hearing.f. There will be no further disclosure and no expert evidence.g. Each side shall serve and file skeleton arguments no less than 10 clear days before the hearing indicating whether they wish to cross-examine any of the witnesses and, if so, explaining why there is a need to do so.h. The issue of damages shall be decided at a hearing lasting no more than 1 day.i. If either side wishes to alter these directions such must be done by making an application on no less than 14 days notice giving reasons as to why (in so far as other steps are sought) such are appropriate and proportionate to the costs to be incurred in taking the step.j. The parties should endeavour to resolve the dispute either by agreement or ADR if it appears that such would have a reasonable prospect of avoiding further cost.

Stay of summary procedure for assessment pending ADR

[37]These proceedings have had a significant impact on both sides.[38]The Claimants had already exhausted their own resources in pursuing this case in June 2023 and had to resort to borrowing to finance it. It is plain that the proceesings are taking a toll on the two key individuals behind the Claimants, Mr Maechel and Ms Bootle. They have also had a significant impact on the Defendants who have had no choice but to defend them at considerable cost because, from the pre-trial offers, it would appear that the Claimants were determined to press them forward unless very significant payment was made.[39]According to the evidence of Mr Belhandouz for the Defendants, the impact of the legal costs of the proceedings for which provision had to be made was “huge”. That is supported by his evidence that, in 2024, BEAT. which had been modestly profitable in certain years before and since, had to made provision for legal costs driving it to a loss after operating costs and taxation of over €2 million despite an improvement in turnover over previous years.[40]A stay pending ADR can be a way forward. In this case I think it is sufficient if (as above) I provide that the directions for determination of the licence fee only start on 12 October 2026 leaving plenty of time to negotiate or undertake ADR before that or indeed after MLT has set out what it is claiming which so far it has not done.

DISCLOSURE

[41]The Claimants originally sought an order for Island Records disclosure in the following terms:
“Within 28 days of the date of this Order, the First and Third Defendants shall provide to the Claimants’ solicitors a witness statement or statements each verified by a statement of truth by a director, setting out for the period between 24 January 2022 and the date of this Order the following information (and attaching any relevant documents): 1. Full financial accounts, including profit and loss accounts; 2. The total sums paid to consultants over the relevant period, and the profit (in both absolute and percentage terms) made in respect of the recruitment of consultants; 3. The total sums paid to consultants recruited or retained by reference to the mark NAUREX over the relevant period, and the profit (in both absolute and percentage terms) made in respect of those consultants; 4. Copies of all advertisements seeking to recruit consultants, including but not limited to advertisements on web-pages and posts on social media (including LinkedIn); 5. The number of email addresses incorporating in any form the word “Naurex” that were in use by directors, officers, employees, contractors or any other connections of the First or Third Defendants on 1 February and 1 July in each year within the relevant period; 6. Any further categories of documents or information held by the First or Third Defendants that would assist the Court to determine the appropriate level of damages / profits.”
[42]That was said to be “essential” by the Claimants for two reasons: first, the conventional Island Records basis: to enable election to be made as to the relief sought Second, so that the Claimants could “take a view” as to the appropriate quantum of damages. That was said to be likely to facilitate ADR.[43]The first reason fell away during the hearing because MLT decided that it was not going to pursue an account of profits.[44]As to the second reason, no authority was cited to the effect that the court could (or generally should) order disclosure in order to facilitate ADR still less to “take a view” on the appropriate level of damages. While there may be good reasons for further information to be provided in certain cases, one of the purposes of ADR is to avoid the costs of further litigation and, in particular, disclosure.[45]Moreover, even with respect to conventional Island Records disclosure, the courts have rejected the view that all necessary information for the account or enquiry should be given, emphasising that all that was needed was enough information to make an informed election. That would only require approximate estimates. The courts have repeatedly disavowed the notion that an Island Records order amounted to a form of pre-action disclosure on the account or enquiry (see Vestergaard v Bestnet [2009] EWHC 2662 (Ch) at paragraph 16 (Lewison J) and Comic Enterprise v Twentieth Century Fox [2014] ETMR 51 at paragraph 48 (Roger Wyand QC)).[46]In my view, there is ample material already for the parties to engage in sensible ADR concerning quantum.[47]First, MLT appears to be contemplating a complex exercise of evaluation in which detailed information is required about the precise nature of the infringing acts and the exact revenues as a result. But the quantum evaluation in this case is likely to be a relatively simple one: what sum would MLT and BEAT have agreed (on the assumption that they were acting reasonably) for the period of time during which the Marks could be used to be extended (if necessary to cover all the uses which may be said to infringe). This is less complicated than licence fee evaluations in some cases because the starting point is that BEAT had the right to use the mark for a significant period.[48]Second, any such negotiation would take place against the background of the Swiss Proceedings in which the parties would know that the Swiss courts may hold that he mark should not have been owned by MLT at all at the date on which the licence was entered into. It would also take place against the background of BEAT moving away from use of the Naurex mark from about 2021 in any event. MLT would not have had significant negotiating leverage over BEAT if the question was how much should be charged for an extension of the transition period. Those are all questions of fact and do not require disclosure (or expert evidence) which, in this area, is not always of material incremental help in determining the sum in question.[49]Third, the witness statement of Mr Belhandouz already provides information about BEAT’s total turnover, profit after operating costs and tax, UK client turnover and EU client turnover for all the years 2019 to 2025. He says that the gross margin is generally around 12% to 15%. Information about uses of the mark beyond the period of reasonable notice is public and the Claimants’ evidence refers to much of it already.[50]Finally, the history of this case has already shown that disclosure has been costly with the parties having spent hundreds of thousands of pounds on it. In the case of some of the claims, that was clearly disproportionate. Requiring parties to undertake disclosure (and thereby run up further costs) may make a case harder to resolve not easier and therefore not facilitate ADR.[51]Accordingly, I refuse the application for disclosure.

INJUNCTION AND STAY

[52]I gave reasons orally for why an injunction was appropriate in this case. It is the normal remedy for infringement of IP rights and would usually only be withheld (subject to the case law on situations where there should be a different remedy altogether) if it was very clear that there was no risk of future use of them. However, in the light of the fact that the position for the future may look different after the Swiss Proceedings (see below) I will stay all of the related orders (Paragraphs 3 (2) to (4) of the List of Issues for the consequentials hearing, pending final determination in the Swiss Proceedings). This is on the basis that if the Swiss Proceedings determine that MLT should not have retained ownership of the Marks at all, it would not be appropriate for there to be transfer of the domain name, destruction of infringing articles or an order for deletion of the Naurex Group Linked In account. The background to this is given below.[53]I will provide for permission to apply to vary all of the orders in paragraph 3 of the List of Issues (including the injunction) following final determination of the Swiss Proceedings. That is on the following basis. Stay of relief pending Swiss Proceedings and permission to apply[54]The Claimants’ evidence contemplates the possibility that the Swiss Proceedings would result in an order requiring the transfer of the Marks. In a witness statement on the consequentials applications, Mr Boris Vittoz, of Niederer Kraft Frey Ltd, the lawyers acting for Mr Maechel in the Swiss proceedings, says:
“9. The First Claimant is not a party to the Swiss Proceedings, and the Tribunal therefore has no power to make any order against it. Should the Complainant succeed in the Swiss proceedings, the Tribunal may, however, order the Respondents in as far as they are able to do so, to take such steps as are necessary to procure the assignment of the trade marks, domain names, and other IP rights to the Complainant. However the only person who could take such steps is Mr Jean Francois Maechel who is 83 years old – he was 83 on 29 May of this year. As everyone knows, he has been quite ill with a heart condition. It is not beyond the realms of possibility that when this goes before a court in 2 years’ time that he is either not in a position to do this physically or mentally or even worse, no longer with us. 10. The Tribunal may, if it accepts jurisdiction in regard of the intellectual property rights, determine whether the registered trade marks (and other rights) should have been transferred to BEAT based on a contractual claim for the assignment. 11. Any decision by the Tribunal on the transfer of the Naurex trademark and related IP rights is not likely to occur before mid-2029 – this is the potential date of a final judgement by the Tribunal.”
[55]Mr Maechel, says in his evidence for these applications:
“The Defendants have also been unsuccessful at each stage of the Swiss proceedings to date, including in relation to security for costs, just as they were unsuccessful on that issue in these UK proceedings. In those circumstances, I do not understand how they can properly suggest that the Swiss proceedings provide a realistic route by which they would become entitled to the marks. They would not otherwise have access to the brand.”
[56]He goes on:
“By bringing the claim in Switzerland, the Defendants must have appreciated that there was no realistic prospect of the Swiss Court ordering the transfer of UK, EU, and Monaco trade marks owned by an entity which is not even a party to those proceedings.”
[57]However, first, the Swiss Proceedings have not yet had to consider whether Mr Maechel should have taken steps to transfer the trade marks and other rights: as to this critical issue, the Defendants have not been “unsuccessful”.[58]Mr Maechel appears to be proceeding on the basis that these High Court proceedings are the only (or even the primary) route by which the Defendants claimed that they were entitled to continue using the NAUREX mark. The evidence of Mr Maechel’s Swiss lawyer, to which I give particular weight on matters of Swiss law, shows that there is a realistic route by which Capefront would become entitled to the marks or at least an order that MLT should not retain them. That is consistent with the evidence from the Swiss lawyer, Mr Villa, acting for Capefront in the Swiss Proceedings to which I attach equal weight. Since Mr Maechel is a director of MLT and has the power to procure such assignment, it seems probable that, if the Swiss court made such an order, MLT would assign the registrations.[59]As Mr Villa says:
“If Capefront’s claim is successful, the Swiss Court will order the Respondents to cause the transfer of the Naurex trade mark and other intellectual property rights to BEAT…If Capefront’s claim fails and the Respondents counterclaim for the outstanding balance of the purchase price for BEAT under the SPA is successful, the Respondents will nonetheless be bound to transfer the trade marks and other intellectual property rights to BET as payment of the balance of the purchase price will trigger…the transfer of the intellectual property rights to BEAT”
[60]If the Swiss court considers it appropriate to order Mr Maechel to transfer the rights, that may have a significant impact on relief. There is (at its lowest) a reasonable argument that such an order may also be made by the Swiss court. Mr Vittoz’s evidence does not suggest that this is a remote prospect. It is therefore arguable that, as a matter of Swiss law, enforcement of the SPA in the manner sought in the Swiss courts has a reasonable prospect of resulting in the trade mark registrations (at least) being transferred by MLT at the conclusion of those proceedings. That would have an impact on appropriate remedies, injunctive and financial in a range of ways, some quite complex juridically.[61]If the Claimants are correct that the failure to pay the second and third tranches under SPA was unjustifiable, the Swiss court may also hold that these tranches should only be paid if there was transfer of the registrations beforehand. Since it is possible that Mr Maechel may (at that point) prefer to receive the second and third tranches, it is also possible that he would voluntarily arrange for the transfer of the registrations at that point. That is the effect of Mr Villa’s evidence. The consequence is that it is not possible, at the moment to tell in whose hands the trade mark registrations will vest at the conclusion of the Swiss Proceedings or the consequences for any relief which this court may grant.[62]This forms the basis for staying the positive (as opposed to negative) injunctive relief to the extent indicated.[63]As to the general injunction, this is a case in which allegations of impropriety and misconduct have been made by the Claimants and it is clear that there is a high level of emotion involved. I remind the parties that if there is (for example) an inadvertent breach of the injunction, the appropriate course in a case of this kind is very unlikely to be contempt proceedings but an attempt to resolve the issue in correspondence in a sensible way.[64]Finally, given that the sum agreed in respect of the Second Consultancy Contract is so small, I do not think it really matters whether it is stayed pending the Swiss Proceedings and think that this should be paid within 28 days.

PUBLICITY ORDER

[65]The Claimants seek an order in the following terms:
“On each of 1 August 2026, 1 September 2026 and 1 October 2026, the First and Third Defendants shall take all steps within their power or control to post or cause to be posted (and not thereafter removed for a period of at least 1 month) the following notice on each and every social media account used by the First or Third Defendant (including, for the avoidance of doubt, the LinkedIn account in the name of Capefront Energies at https://www.linkedin.com/company/capefront-energies, and the LinkedIn account in the name of NAUREX at https://www.linkedin.com/company/naurexgroup/): “On 18 June 2026 the High Court of England and Wales handed down Judgment in the matter of ML Technology Limited and another v B.E.A.T. SAM and others [2026] EWHC 1483 (Ch). The Court has now determined that B.E.A.T. SAM and Ergonos Consulting SA (each part of the Capefront Energies group of companies) have infringed the registered trade marks owned by ML Technology Limited for the sign NAUREX. The full text of the Judgment can be accessed here: [Bailii address to be inserted when available].”
Principles “On 18 June 2026 the High Court of England and Wales handed down Judgment in the matter of ML Technology Limited and another v B.E.A.T. SAM and others [2026] EWHC 1483 (Ch). The Court has now determined that B.E.A.T. SAM and Ergonos Consulting SA (each part of the Capefront Energies group of companies) have infringed the registered trade marks owned by ML Technology Limited for the sign NAUREX. The full text of the Judgment can be accessed here: [Bailii address to be inserted when available].”[66]In Philip Warren & Son Ltd v Lidl Great Britain Ltd & Ors [2021] EWHC 2372 (Ch), I reviewed the authorities (including Apple v. Samsung)and summarised the principles relevant to whether a publicity order should be made as follows:
“Principles and factors 167. The relevant principles can therefore be summarised as follows: a. There is an equitable discretionary power under s.37 of the Senior Courts Act 1981 to make publicity orders in favour of a successful defendant when it is just and convenient to do so. b. Publicity orders should not be the norm and should only be granted when it is necessary and proportionate. c. The test in the case of an order sought with respect to a non-infringing product is whether there is a need to dispel commercial uncertainty in the marketplace. d. The purpose of such an order is not to punish a party, make it “grovel” or lose face. In particular, it is not right to condemn a party to public humiliation before it has had an opportunity to argue its case on appeal. e. Where the need to do so arises as a result of inaccurate reporting by journalists, a party will only be held responsible for such (and therefore liable to seek and pay for the publicity ordered to be provided) if it contributed to that inaccuracy by inaccurate statements and false innuendo. f. The effect of the authorities is that the court is also likely to take into account the following factors: i. The extent of publicity given to the case and its outcome, apart from the publicity order; ii. Whether any decision the subject of a publicity order may be subject to appeal; iii. The extent to which there is or may be a dispute or agreement over the terms in which any notice should appear; iv. Whether the order would involve more than a measured incursion into any publication’s freedom to decide what it publishes and does not publish, and is justified in pursuit of a legitimate aim. 168. Although not the subject of express prior guidance, in determining whether an order is necessary and proportionate, it seems to me appropriate to take into account at least the following further factors: i. Whether it is straightforward adequately to encapsulate the effect of a court decision in a brief notice or whether balance requires more by way of narrative; ii. The risk that the order may result in an inaccurate impression, including as to whether the court has endorsed or criticized the conduct of the parties or third parties; iii. The overall effectiveness and impact of a publicity order at remedying the matter said to require such an order; iv. Whether other practical and legal remedies are or may be available to address the issue; v. What impact a publicity order may have on third parties; vi. Whether a publicity order made at a given stage in the proceedings, if they have not reached finality, would risk creating a further issue which may make it harder for the parties to settle a case, especially if the parties have indicated a wish to do.” a. There is an equitable discretionary power under s.37 of the Senior Courts Act 1981 to make publicity orders in favour of a successful defendant when it is just and convenient to do so. b. Publicity orders should not be the norm and should only be granted when it is necessary and proportionate. c. The test in the case of an order sought with respect to a non-infringing product is whether there is a need to dispel commercial uncertainty in the marketplace. d. The purpose of such an order is not to punish a party, make it “grovel” or lose face. In particular, it is not right to condemn a party to public humiliation before it has had an opportunity to argue its case on appeal. e. Where the need to do so arises as a result of inaccurate reporting by journalists, a party will only be held responsible for such (and therefore liable to seek and pay for the publicity ordered to be provided) if it contributed to that inaccuracy by inaccurate statements and false innuendo. f. The effect of the authorities is that the court is also likely to take into account the following factors: i. The extent of publicity given to the case and its outcome, apart from the publicity order; ii. Whether any decision the subject of a publicity order may be subject to appeal; iii. The extent to which there is or may be a dispute or agreement over the terms in which any notice should appear; iv. Whether the order would involve more than a measured incursion into any publication’s freedom to decide what it publishes and does not publish, and is justified in pursuit of a legitimate aim. i. Whether it is straightforward adequately to encapsulate the effect of a court decision in a brief notice or whether balance requires more by way of narrative; ii. The risk that the order may result in an inaccurate impression, including as to whether the court has endorsed or criticized the conduct of the parties or third parties; iii. The overall effectiveness and impact of a publicity order at remedying the matter said to require such an order; iv. Whether other practical and legal remedies are or may be available to address the issue; v. What impact a publicity order may have on third parties; vi. Whether a publicity order made at a given stage in the proceedings, if they have not reached finality, would risk creating a further issue which may make it harder for the parties to settle a case, especially if the parties have indicated a wish to do.”
[67]In Salt Ship Design AS v Prysmian Powerlink SRL [2021] EWHC 3583 (Comm), Jacobs J questioned whether making a publicity order pursuant to paragraph (3) of the Regulation 18 of the Trade Secrets (Enforcement etc) Regulations 2018 required the court to be satisfied that it was “necessary” as well as proportionate and held that it did not. With respect, I agree. Warren v. Lidl was a case in which a publicity order was sought publicising a finding of non-liability rather than of liability in rather special circumstances in which there had been large-scale publicity of allegedly wrongful acts before judgment which found no liability. I think the test in a case of this kind is whether it is appropriate and proportionate.[68]I do not think this is a case in which a publicity order is appropriate. There is no sufficient evidence that it is required or would be of real utility in dispelling commercial uncertainty in the marketplace or dissuading potential infringers. Those are reasons which can found a publicity order.[69]The order sought would give the misleading impression that the court had held unequivocally that the relevant Defendants were in the wrong. The Main Judgment is more nuanced than that.[70]Any statement would have to reflect the fact that the relevant Defendants had not infringed, save in respect of use beyond the date at which reasonable notice expired and that the Claimants had been wrong to challenge this use before that date. It would also need to deal with the other aspects of the case where findings were made against the Claimants. As framed, it is entirely one-sided. Moreover, the reference to the judgment would not clear matters up for an average reader. As a result of the arguments run, the Main Judgment is so long that most (reasonable) people would have run out of any will to read it very early on. So the impression which would remain is that a substantial High Court judgment had held that the relevant Defendants were wrong and that there was nothing to be said for their position.[71]No alternative narrative statement was put forward. In order to give the full picture any such statement would need to refer to the Swiss Proceedings and the fact that in those proceedings it might be held that MLT ought to have transferred the trade marks over 5 years ago. That makes it particularly important not to make a publicity order which may give rise to the impression that this issue is closed.[72]Nor is this a case in which a narrative publicity order makes sense and the case law reviewed in Warren identifies the difficulties in doing so. Moreover, Mr Maechel has indicated that there are some 300 consultants and a number of energy industry companies. If he wishes, copies or summaries of the decision and this one (for completeness) can be sent to them without the need for a court order. In doing so, it would be necessary to make clear that the rights and obligations of the parties with respect to the Naurex remained to be finally determined. I doubt that energy industry engineers or companies would have much interest in these issues.[73]I therefore do not consider that there are sufficient grounds for making the publicity order sought and I decline to do so. COSTS 74. Amendments to costs budgets

COSTS

[74]The Claimants originally sought an order seeking a further adjournment of its application to increase its costs budget to be dealt with at the same time as the detailed assessment of costs. The Defendants then withdrew their application to amend their costs budget altogether. In the light of that, the Claimants decided to adopt a more aggressive stance and invited me to make an order approving an increase in the Claimants’ costs budget for the disclosure phase in the sum of £259,069.67. If that was done, the Claimants indicated that they would not press the balance of the application for an increase in its costs budget. I declined to do so and these are my reasons.[75]The background to this is as follows. At the PTR, applications were made on both sides for significant increases to their costs budgets. I refused to make an order doing so at that stage for reasons given, in summary, annexed to my Order of 27 February 2025.[76]The main items related to increased sums spent on disclosure, although the Claimants also sought related increases in respect of the witness statements and trial preparation phases. By the time of the PTR, the parties did not oppose the increases in each other’s costs budgets at certain levels and provided a proposed agreed order. I was nonetheless not satisfied that it would be appropriate to approve these increases at that stage and considered that this should be addressed following trial. Neither party objected to that course, which the parties had themselves previously originally suggested.[77]The CCMC costs budgets provided for a Claimants’ total agreed/approved budgeted costs of £452,268. Among them, so far as relevant, were the following: Disclosure: £97,768.00; Witness statements: £66,500.00; Trial preparation: £118,500; ADR/settlement discussions: £5000. The total, including both incurred costs and estimated (budgeted) costs, at the CCMC was £716,239.24.[78]The Defendants’ total agreed/approved budgeted costs were £584,738. Among them, again so far as relevant, were: Disclosure: £135,000; ADR/Settlement discussions: £4,964. The total, including both incurred costs and estimated (budgeted) costs, at the CCMC was £840,229.20.[79]Accordingly, the total costs incurred and budgeted for this case (on both sides) in March 2024 already exceeded £1.5 million, with a small fraction of the costs devoted to efforts at resolving the dispute.

Increases in costs budget

[80]Claimants The Claimants applied on 14 November 2024 for approval of an increase to their costs budget due to allegedly significant developments which had occurred after the costs budget was approved at the CCMC.[81]The increases sought were £259,069.67 for the disclosure phase and £29,500 each for the witness statements and trial preparation phases. This represented a very significant increase in budgeted disclosure costs (more than triple) and significant costs increases for the other phases.[82]This was justified in the evidence on the basis that much more than anticipated work was required on disclosure including searching additional data sources and reviewing more of the Defendants’ disclosed documents, each of which was said to have an impact also on witness statements and pre-trial preparation. The total estimated Claimants’ costs (including incurred and budgeted costs) after the proposed variation were £1,034,308.91.[83]The Defendants agreed in principle to the increase for disclosure but not to the increases for the witness and pre-trial phases, accepting that the disclosure exercise had been more substantial than anticipated. That was perhaps not surprising since the Defendants themselves also sought substantial increases in their budget for disclosure.[84]Defendants The Defendants applied on 19 November 2024 for approval of an increase to their costs budget in the sum of £470,747.25 for the disclosure phase (also on the basis of significant developments since the CCMC). The evidence in support of this application said that the original budget assumed that up to 5000 documents would be disclosed and there ended up being 11,503 documents disclosed, after some 105,000 documents had been identified for review of which a very significant number (c. 50,000) had to be reviewed manually. The total estimated Defendants’ costs (including incurred and budgeted costs) after the proposed variation were £1,310, 976.35.[85]In contrast, as I noted, the Claimants’ Precedent T showed that no costs had been incurred on ADR or settlement discussions (or mediation) by the time of the CCMC and a comparatively small sum of £5000 was budgeted for this. The Defendants’ Precedent T indicates that £1535 had been incurred on ADR and settlement discussions by the time of the CCMC with a further small sum budgeted of £4694.25. That is despite the fact that the claim was originally issued in November 2021 with permission to serve out granted in April 2022 and the main pleadings (particulars of claim, defence and counterclaim, reply and defence to counterclaim) completed in October 2023.[86]On 19 February 2025 Deputy Master Dew directed that the applications be considered at the PTR unless time was insufficient or the judge considered it inappropriate. That was understandable in principle. However, having reviewed the documents, in my view there were good reasons for considering that any variation to costs budgets should be considered at a later stage notwithstanding the fact that the parties had reached a position of mutual acceptance of their respective variations. These were as follows.[87]First, the proposed variations were substantial in absolute and relative terms.[88]Control of costs is not only a matter between the parties (or for the parties to agree between themselves with the court merely rubber stamping them). The court must be satisfied that the budgets are appropriate even if the parties solicitors agree to each others’ increases. That is in part because spending more money on litigation imposes costs on third parties as well (such as the court needing to consider larger amounts of disclosure or devoting disproportionate time to minor claims). The more substantial the variation, the greater the justification required. The fact that the parties and their advisors are agreed that they would not (or not significantly) challenge each other’s proposed increased budgets can mean that the court needs to examine the basis for the variation with more rather than less intensity.[89]Second, given the nature of the dispute, the costs already incurred and budgeted for at that stage seemed high. The proposed increases would make them significantly higher. The case law emphasizes that not every development will be significant even if it has costs consequences and that the court needs to consider not only whether a development is significant but whether it warrants a revision to the costs budget (see for example Persimmon Homes v. Osborne Clark [2021] EWHC 831 at [97]). Stricter examination is also merited where variations are contemplated to an existing phase and, in particular, a mixed phase such as disclosure (cf Persimmon Homes at [117]).[90]Third, it was unclear what value to the dispute the additional disclosure either searched for or ultimately provided had.[91]It is not clear having heard the trial and having been required to consider a large volume of the disclosure documents what value much of it had in resolving the key issues between the parties. For example, if the parties had identified that the key issue was likely to be the length of period of reasonable notice and there was no need to go into all of the commercial issues and history (as they could have done) I doubt that much of this material would have been required. It is particularly unclear that further disclosure would have been required on the Claimants’ side. Many legal systems make do without disclosure of the kind contemplated by the CPR and are none the worse for it, sometimes sacrificing perfection for lower cost. Here, it was not clear that the additional disclosure said to justify the further sum was of real value even with hindsight. No attempt has been made to explain in evidence or argument specifically why it was of value (or why over £1/4 million more – roughly the price of an average UK house - needed to be spent on it).[92]In the context of a case in which the costs budgeted appear disproportionate, there is a heavy burden in a party seeking a retrospective increase in its cost budget. It is not close to being discharged in this case.[93]Fourth, I said at the PTR that the court may also need to consider (in the light of all of the information available whether the additional disclosure had been and could have been anticipated to be of material value – or not) whether applications to vary the costs budgets should have been made at an earlier stage, and, in particular, before they were incurred (cf Persimmon Homes at [100]-[103]) so that the court could have exercised proper control over whether the proposed costs were likely to be justified by the anticipated benefit.[94]Costs budgeting is intended to act as a constraint on future costs. That is in the interests of justice not least because the parties incurring increased costs at an earlier stage can hinder settlement and therefore result in still further costs in taking a case to trial. Costs budgeting has to take that into account and is not normally a vehicle for sanctioning costs already incurred. All those considerations apply with considerable force in this case.[95]Fifth, if it appears that insufficient time effort and cost had been devoted by the parties and their legal advisers to resolving the case at earlier stages, so avoiding further costs (whether on disclosure, witness statements or other work) such as by ADR/Mediation.[96]Limited provision was made for this and while I do not know what without prejudice discussions there have been no evidence has been provided that there were serious, third-party assisted attempts to resolve the case. I was unimpressed by the correspondence received since the hearing from Ms Bootle which (in so far as relevant at all) appeared to be no more than reminding the Defendants that litigation carried risk and they may wish to consider settling (see below). None of the material I have seen indicates that the Claimants had a reasonable approach to settling this case or that they were prepared to face the obvious fact that this litigation was not only unlikely ever to force payment of the second two tranches under the SPA but was also certain to create a multi-million pound costs liability that someone would have to pay.[97]Sixth, the court has the power to depart from a costs budget in any event, albeit in limited circumstances. In my view this would have been a case for doing so.[98]My view was then and remains now that, in the light of the applicable principles, this retrospective revision to the costs budgets should not be approved, even if it is not actively opposed by the Defendants. Costs of the action – general Principles[99]The parties agree as to the principles to be applied in determining costs but are far apart as to how they should be applied. Those principles are summarised in the Claimants’ skeleton substantially as follows.[100]The general rule under CPR r. 44.2(2)(a) is that the unsuccessful party will be ordered to pay the costs of the successful party. In deciding what order to make the court will have regard to all the circumstances including the matters set out at CPR r. 44.2(4) and (5). The approach to an order for costs in an IP context was considered in Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd [2023] EWHC 2923 (Ch); [2024] Costs LR 449 (at §35) Mellor J said “35. In IP cases, it is increasingly the standard practice to also consider an issue-based approach following on from this starting position, from Specsavers v Asda [2012] EWCA Civ 494 and Hospira v Novartis [2013] EWHC 886. This approach involves asking three questions:(a) Who is the overall winner? There is then the assumption that the overall costs should be awarded to the winner.(b) Are there any suitably circumscribed issues which it is appropriate in the circumstances for the winner to be deprived of their costs of?(c) Is it appropriate to go further and award the losing party their costs of that issue from the winning party? 36. The use of these questions and their application to costs in that sequence has now been applied over and again in case law (see e.g. Monsanto v Cargill [2007] EWHC 3113, [2008] FSR 16, Hospira v Cubist [2016] EWHC 2661 (Pat), Chugai v UCB Pharma [2018] EWHC 2705 (Pat), TQ Delta v ZyXEL [2019] EWHC 745 (Pat), Sky v Skykick [2020] EWHC 1735 (Ch) 37. Further guidance on the application of the three stage test, and what amounts to a “suitably circumscribed issue” is found in Unwired Planet v Huawei [2016] EWHC 410 (Pat) at [5] - in patent cases (of which that was one) the appropriate granularity is often at the level of individual items of cited prior art, but it may be possible for a sub-issue to be suitably circumscribed in a particular case. 38. In general, where there is a suitably circumscribed issue on which the overall winner has lost, the Court will be more ready to make a “no order as to costs” type order (Unwired Planet v Huawei at [9]) in relation to that issue. 39. Further, the approach to issue-based costs in general was set out helpfully in Pigot v Environment Agency [2020] Costs LR 825 at [6]:
“6. … (1) The mere fact that the successful party was not successful on every issue does not, of itself, justify an issue-based cost order… (2) Such an order may be appropriate if there is a discrete or distinct issue, the raising of which caused additional costs to be incurred. Such an order may also be appropriate if the overall costs were materially increased by the unreasonable raising of one or more issues on which the successful party failed. (3) Where there is a discrete issue which caused additional costs to be incurred, if the issue was raised reasonably, the successful party is likely to be deprived of its costs of the issue. If the issue was raised unreasonably, the successful party is likely also to be ordered to pay the costs of the issue incurred by the unsuccessful party… (4) Where an issue based costs order is appropriate, the court should attempt to reflect it by ordering payment of a proportion of the receiving party's costs if that is practicable. (5) An issue based costs order should reflect the extent to which the costs were increased by the raising of the issue; costs which would have been incurred even if the issue had not been raised should be paid by the unsuccessful party. (6) Before making an issue-based costs order, it is important to stand back and ask whether, applying the principles set out in CPR r.44.2, it is in all the circumstances of the case the right result. The aim must always be to make an order that reflects the overall justice of the case.” 40. In some of the earlier cases, the third question was phrased differently, and it is helpful to note how the phrasing of that question has changed as a result of further analysis in intervening cases. In Hospira UK Ltd v Novartis AG [2013] EWHC 886 (Pat) at [2]-[4], Arnold J (as he then was) set out the earlier version of the third question in this passage, along with some additional explanation, as follows: ‘2. The principles to be applied in these circumstances are familiar subject to one small qualification. The Court generally approaches the matter by asking itself three questions: first, who has won; secondly, has the winning party lost on an issue which is suitably circumscribed so as to deprive that party of the costs of that issue; and thirdly, are the circumstances (as it is sometimes put) suitably exceptional to justify the making of a costs order on that issue against the party that has won overall. … 4. The origin of the phrase ‘suitably exceptional’ is the judgment of Longmore J in Summit Property v Pitmans (a Firm) [2001] EWCA Civ 2020 … Longmore LJ was not intending when using the words ‘suitably exceptional’ in the particular circumstances in which he did to impose a specific requirement of exceptionality. The question rather is one of whether it is appropriate in all the circumstances of the individual case not merely to deprive the winning party of its costs on an issue in relation to which it has lost, but also to require it to pay the other side's costs.’ 41. To similar effect, in Hospira UK Limited -v- Cubist Pharmaceuticals LLC [2016] EWHC 2661 (Pat), Henry Carr J noted that there was a tension between the requirement, expressed in some judgments, for a “suitably exceptional” case before costs are ordered against a successful party, and the express rejection of such a requirement for issue-based costs orders generally in F&C Alternative Investment (Holdings) Ltd v Barthelmy [2012] EWCA Civ 843. Henry Carr J said, ‘In my view, this apparent dichotomy may be resolved by a proper understanding of the phrase "suitably exceptional". It is intended to indicate that if the unsuccessful party succeeds on a particular issue, that is not, on its own, sufficient to award costs against the successful party. There must be something which makes it appropriate and just to order not only that the successful party does not recover his costs, but also that it should pay the costs of the relevant issue. On the other hand, it is not intended to imply that such awards of costs will be extremely rare. Where there is a discrete issue, which required substantial expenditure of costs, it may be just in all the circumstances to order payment of costs.’” “6. … (1) The mere fact that the successful party was not successful on every issue does not, of itself, justify an issue-based cost order… (2) Such an order may be appropriate if there is a discrete or distinct issue, the raising of which caused additional costs to be incurred. Such an order may also be appropriate if the overall costs were materially increased by the unreasonable raising of one or more issues on which the successful party failed. (3) Where there is a discrete issue which caused additional costs to be incurred, if the issue was raised reasonably, the successful party is likely to be deprived of its costs of the issue. If the issue was raised unreasonably, the successful party is likely also to be ordered to pay the costs of the issue incurred by the unsuccessful party… (4) Where an issue based costs order is appropriate, the court should attempt to reflect it by ordering payment of a proportion of the receiving party's costs if that is practicable. (5) An issue based costs order should reflect the extent to which the costs were increased by the raising of the issue; costs which would have been incurred even if the issue had not been raised should be paid by the unsuccessful party. (6) Before making an issue-based costs order, it is important to stand back and ask whether, applying the principles set out in CPR r.44.2, it is in all the circumstances of the case the right result. The aim must always be to make an order that reflects the overall justice of the case.” ‘2. The principles to be applied in these circumstances are familiar subject to one small qualification. The Court generally approaches the matter by asking itself three questions: first, who has won; secondly, has the winning party lost on an issue which is suitably circumscribed so as to deprive that party of the costs of that issue; and thirdly, are the circumstances (as it is sometimes put) suitably exceptional to justify the making of a costs order on that issue against the party that has won overall. … 4. The origin of the phrase ‘suitably exceptional’ is the judgment of Longmore J in Summit Property v Pitmans (a Firm) [2001] EWCA Civ 2020 … Longmore LJ was not intending when using the words ‘suitably exceptional’ in the particular circumstances in which he did to impose a specific requirement of exceptionality. The question rather is one of whether it is appropriate in all the circumstances of the individual case not merely to deprive the winning party of its costs on an issue in relation to which it has lost, but also to require it to pay the other side's costs.’ ‘In my view, this apparent dichotomy may be resolved by a proper understanding of the phrase "suitably exceptional". It is intended to indicate that if the unsuccessful party succeeds on a particular issue, that is not, on its own, sufficient to award costs against the successful party. There must be something which makes it appropriate and just to order not only that the successful party does not recover his costs, but also that it should pay the costs of the relevant issue. On the other hand, it is not intended to imply that such awards of costs will be extremely rare. Where there is a discrete issue, which required substantial expenditure of costs, it may be just in all the circumstances to order payment of costs.’”

The “overall winner” - principles

[101]In Roache v News Group Newspapers Ltd [1998] EMLR 161, pp.168-169 Bingham MR said:
“The judge must look closely at the facts of the particular case before him and ask: who, as a matter of substance and reality has won?”
[102]In commercial proceedings, as held by Longmore LJ in AL Barnes v Time Talk (UK) Ltd [2003] EWCA Civ 402 (at §28):
“In deciding who is the successful party the most important thing is to identify the party who is to pay money to the other. That is the surest indication of success and failure.”
[103]In Fox v Foundation Piling Ltd [2011] EWCA Civ 790, [2011] 6 Costs LR 961, Jackson LJ (with whom Moore-Bick LJ and Ward LJ agreed) held that even if a party recovers much less than originally claimed, that party is still the successful party (at [58]-[59]). A defendant’s remedy is to make an early Part 36 to meet the value of the claim: “If the defendant fails to make a sufficient Part 36 offer at the first opportunity, it cannot expect to secure costs protection” (at [62]).[104]However, where claims for non-pecuniary relief are overtaken by circumstances and only damages are awarded, the court may nevertheless revert to the starting point in AL Barnes. In Illumina INC v Premaitha Health Plc [2018] EWHC 180 (Pat), where a patent was due to expire imminently, and injunctive relief was not available, Henry Carr J decided that the claimant had succeeded overall on the basis that “the defendants should pay money to [the claimant]” (at [14]).[105]In Illumina, Henry Carr J also said (emphasis added): “On the other hand, I have been referred by the defendants to the case of Omnipharm v Merial, where the Court of Appeal applied the observation of Lord Bingham, that it was necessary to consider where the claimant has won something of value which it could not have won without fighting the action through to a finish, but also whether the defendant has substantially denied the claimant the prize which the claimant fought the action to win. Floyd J (as he then was) sitting at first instance in Omnipharm v Merial [2012] EWHC 172 said at paragraph [19]: "Where so much can be said on both sides for the fact that they have achieved a commercial victory, I think there is a danger, at least in some cases, in the court starting from the standpoint that one party and not the other was the winner. Mr. Carr very properly reminded me that there are some cases, of which AEI v PPL is one example, where the court has come to the conclusion somewhere on the spectrum of possible results between the two extremes contended for by the parties, where the court has recognised that there is no overall winner."[106]Caution must be applied in too readily adopting an approach of making no order as to costs on the basis that the court has made a finding somewhere between the parties’ positions or relying on that being a common approach in Copyright Tribunal proceedings: those are different in character from ordinary commercial proceedings. However, it can be an appropriate order to make if the circumstances warrant it. In Easygroup Ltd v Easy Live (Services) Ltd & Ors [2023] EWHC 240, Sir Anthony Mann considered doing so, saying that, but for certain offers, the just result might be no order as to costs. Sir Anthony was referred to Rotam Agrochemical Company Ltd & Anor v GAT Microencapsulation GmbH [2018] EWHC 3006, where Butcher J considered the case law. The cases do not all point in the same direction as to result which is explicable on the basis that the facts were very different in the different cases. However, they illustrate the point that the fact that a party has won something does not mean that they will automatically be regarded as the overall winner.[107]Butcher J reviewed the authorities as follows: “Authorities referred to by the parties 6. The parties are at one in contending that the first matter which I should consider is which was the "successful party". In support of their differing contentions as to which was the successful party they rely, however, on two different strands of authority. 7. Thus, GAT contends that the correct approach is to identify who, in the words of Sir Thomas Bingham MR in Roache v News Group Newspapers Ltd [1998] EMLR 161, "as a matter of substance and reality has won". It contends that this will involve asking, to quote further from Sir Thomas Bingham's judgment: "Has the plaintiff won anything of value which he could not have won without fighting the action through to the finish? Has the defendant substantially denied the plaintiff the prize which the plaintiff fought the action to win?" 8. GAT further relied on the decision of the majority of the Court of Appeal in Medway Primary Care Trust v Marcus [2011] 5 Costs LR 808, which it described as "the leading authority" in the area. In that case, the claimant had sought £525,000 in respect of an allegedly negligent amputation, but had lost on the issue of causation, and been awarded only £2000 for pain and suffering in relation to admitted breaches of duty. The trial judge had awarded the claimant 50% of his costs. The majority of the Court of Appeal found that this was an error of principle, and substituted an order that the claimant pay 75% of the defendant's costs. 9. GAT referred to the fact that in Medway v Marcus the majority had placed reliance on the earlier case of Oksuzoglu v Kay [1998] 2 All ER 361, where the plaintiff had claimed that the amputation of his leg was due to negligence on the part of his medical practitioners. He had failed on causation, but been awarded some £5000 for pain and suffering and various expenses. The Court of Appeal had ordered that the defendants should recover 90% of their costs of the trial of the issues of liability and causation. The majority of the Court of Appeal in Medway v Marcus had referred to and relied on a passage of Brooke LJ's judgment in Oksuzoglu v Kay in which, after considering a number of other authorities, he had said (at paragraph [58]): "In this line of cases, where the plaintiff only recovers between 1% and 3% of his original claim (sometimes, but not always, after a late amendment) the court is entitled to ask itself: 'Who was essentially the winning party?' It will not be distracted from making a just order as to costs by the absence of a payment into court which the plaintiff would obviously not have accepted … or where the defendants did not have a proper opportunity to make a payment into court which obviously would not have been accepted … Although all these cases are different, in the present case the substantive lis between the parties on the trial of the preliminary issues related to the big claim on which the plaintiff wholly failed." 10. GAT further particularly relied upon the judgment of Tomlinson LJ, especially at paragraphs [47] and [49-51]. In paragraph [47] Tomlinson LJ had stated that, given that the claimant had only recovered £2000 and had not recovered compensation for the loss of his lower leg, it was "beyond argument" that the defendant "substantially denied the claimant … the prize for which he fought the action to win". In paragraphs [49-51] Tomlinson LJ had said that it would not have been possible for the defendant to make a Part 36 offer in anticipation of an award of some £2000 without incurring a liability in costs wholly disproportionate to that outcome; and further that such an offer would not have been accepted, would have been "a mere matter of ritual", and that "no weight should be attached to a party's failure to make such a ritual act". 11. GAT's contention was that the approach of the majority of the Court of Appeal in Medway v Marcus remained the correct approach, notwithstanding the dissent, in that case, of Jackson LJ, and the decision of the Court of Appeal in Fox v Foundation Piling Ltd [2011] EWCA Civ 790, in which Jackson LJ gave the leading judgment. In support of this contention, GAT relied upon the decision of Briggs J in Magical Marking Ltd v Ware & Kay LLP [2013] EWHC 636 (Ch), [2013] 4 Costs LR 535. In that case, the claimant had succeeded in recovering some £28,000, but its claim had been for £10 million. Briggs J had awarded the defendant 85% of its costs. Briggs J considered Medway v Marcus and Fox v Foundation Piling and said that the former was, but the latter was not concerned with who was the successful party, because in Fox v Foundation Piling the issue of which was the successful party had become common ground before the Court of Appeal. 12. For their part, Rotam rely on a line of authorities which emphasise that the primary indicator of which is the successful party is which party is awarded a sum of money. They refer to this having been stated by Longmore LJ in AL Barnes Ltd v Time Talk (UK) Ltd [2003] EWCA Civ 402, in particular at paragraph [28]. They contend that this approach gains further support from the decision of the Court of Appeal in Day v Day [2006] EWCA Civ 415. At paragraph [17] Ward LJ referred to the question of who was the unsuccessful party being easily determined in a case such as that "by deciding who has to write the cheque at the end of the case". 13. Furthermore, a week after the decision in Medway v Marcus, in which Jackson LJ had dissented, the Court of Appeal delivered judgments in Fox v Foundation Piling. It is the case that, in the Court of Appeal, the defendant had conceded that the claimant was the successful party. The decision in the case concerned whether the circumstances of the case and the claimant's conduct justified a departure from the general rule. Rotam relied, however, on the fact that, in the course of his judgment, Jackson LJ said this: "[46] A not uncommon scenario is that both parties turn out to have been over-optimistic in their Part 36 offers. The claimant recovers more than the defendant has previously offered to pay, but less than the claimant has previously offered to accept. In such a case the claimant should normally be regarded as 'the successful party' within rule 44.3(2). The claimant has been forced to bring proceedings in order to recover the sum awarded. He has done so and his claim has been vindicated to that extent. … [62] There has been a growing and unwelcome tendency by first instance courts and, dare I say it, this court as well to depart from the starting point set out in rule 44.3(2)(a) too far and too often. Such an approach may strive for perfect justice in the individual case, but at huge additional cost to the parties and at huge costs to other litigants because of the uncertainty which such an approach generates. … [63] … In the context of personal injury litigation where the claimant has a strong case on liability but quantum is inflated, the defendant's remedy is to make a modest Part 36 offer. If the defendant fails to make a sufficient Part 36 offer at the first opportunity, it cannot expect to secure costs protection. …" 14. Rotam also drew my attention to the decision of Patterson J in Cutting v Islam [2014] EWHC 1515 (QB), [2014] 4 Costs LO 652. There the claimant had recovered only just over 3% of her original claim. Patterson J found that nevertheless the claimant was the successful party. 15. In Northampton Regional Livestock Centre Company Ltd v Cowling and Lawrence [2015] EWCA Civ 651, [2015] 4 Costs LO 477, Tomlinson LJ referred (at [110]) to the statement of Longmore LJ in AL Barnes v Time Talk as to the surest indication of success being who has to pay money, with approval, though it is right to say that the issue facing the Court of Appeal was not the same as that which arises in this case. 16. Finally, Rotam drew my attention to Cook on Costs 2018, and to Civil Procedure 2018 at paragraph 44.2.13. In the former, at paragraph 22.7 the authors state, after referring to the authorities, many of which I have referred to above: "For our part we prefer the AL Barnes, Day and Fox approach. At a time when the court has no desire or resource for further rounds of the 'costs wars' it has the virtue of clarity and simplicity. Concerns over conduct, partial success etc can be addressed in any event when looking at whether there are reasons to depart from this starting point…"[108]Some authorities referred to in Rotam were ones in which a party which had won a small amount (such as a few percent of the claimed amount) was to be regarded as the successful party. Others show that even where a party has recovered a small percentage of the claimed sum that party was not treated as the successful party and an adverse costs order was made. The position therefore is that the court adopts a nuanced approach to determining who in substance is the successful party which may not be reflected only in whether that party has an order for the payment of some sum in its favour. It is too crude to say, as the Claimants submit, that in every case what matters is who is writing the cheque, in particular where the cheque is for a tiny fraction of the claimed amount.[109]The position is moreover complicated in many intellectual property cases where the fundamental aim may not be to secure payment of money but to prevent the other party from using rights or to establish freedom to do so. The present case is unusual in that, for the reasons given in the Main Judgment, I formed the view that the main object of these proceedings was to try to use the threat of BEAT not being able to use the Naurex mark and the other rights as a means of putting pressure on BEAT to pay the remaining tranches pursuant to the SPA. Accordingly, the concept of “success” must be evaluated with that in mind. Is there a commercial winner or a sufficiently clearly “unsuccessful party” here?[110]In this case, both parties claim (in large measure) to have been the commercial winner. The Claimants contend that they have been successful because they have obtained an order for an injunction and some monetary relief that goes beyond de minimis and, in relation to the trade mark claim, have a reasonable prospect of obtaining (on BEAT’s case) about £50,000 in addition to the £4,000 on the Second Consultancy Contract copyright claim. They also say that they have beaten off BEAT’s claim to be entitled to the trade marks or copyrights on any of their theories of entitlement. The Claimants’ primary position as expressed in their skeleton for the hearing was that they should have all of their costs of the claims as a result and a substantial interim payment.[111]The Defendants against whom the joint tortfeasorship claims were asserted on the other hand contend that they are to be regarded as wholly successful and that the picture on the other claims is sufficiently in their favour that they should have half of their budgeted costs.[112]In my view, however, this is a case in which neither party can be said to be the “overall winner”.[113]First, MLT was successful on the trade mark infringement claim but for a period of use considerably shorter than that for which they were contending. The Claimants’ claim was brought at a time when BEAT was still wanting to use the Naurex mark but the relevant Defendants had started to consider rebranding in 2021 and could have rebranded sooner. Had this claim been decided very shortly after it was brought, the parties would have known that BEAT had a considerable time in which to rebrand which was not what the Claimants were seeking. So while it is true that the claim may have had an impact in somewhat accelerating the re-branding – and there is some evidence that it did (see above) - it was not causing BEAT to do something that it was not (for a large part of these proceedings) already intending to do (and actively implementing). Moreover, the claim has not been (and was never likely to be) an effective vehicle for forcing payment of the bulk of the disputed sums under the SPA and, after long litigation, has not in fact achieved that result. It is more realistic to say that the conclusion I reached as to reasonable notice was somewhere between “very short” and “for practical purposes perpetual” which were (in substance) the rival contentions.[114]It is fair to say that the claim probably required more examination of the disclosure aspects and history than other claims but it is difficult to disentangle these from the chronology which would have been relevant more broadly including in respect of claims which were unsuccessful or only to a more minor extent. I am unimpressed by the point that the Defendants could have protected themselves by making an offer. They did make a substantial offer before trial and the Claimants’ offer made it clear that they were seeking sums far in excess of that. I do not see how the Defendants could have protected themselves save by making an offer far above that which is likely to be reasonable for this claim.[115]Second, the web-site copyright claim failed and the Second Consultancy Contract Claim only succeeded in achieving payment of a sum lower than the small claims limit: £4,000 was agreed not on the basis that this was the right amount but rather that it was not worth arguing about whether it should be lower.[116]Third, the claim in joint tort-feasorship failed entirely as did the claim in passing off. It is said that the claim in passing off failed on a non-pleaded basis – and therefore is to be treated somewhat like a claim based on a late amendment - but that is not correct. It would have been necessary to evaluate the nature of the goodwill even if goodwill was admitted. That is what the Main Judgment does. The point is not that BEAT had a greater goodwill than Naurex Ltd in the mark Naurex. The key issue was that BEAT had developed its own goodwill as the head trading company at least with energy companies and Naurex Ltd (as the UK payroll company) had no goodwill with energy customers. However, this whole issue was pursued through to the trial and the evidence and disclosure went to it. This was not a costless incremental issue. I do not think this case comes close to engaging the principles in Beoco v. Alfa Laval [1995] QB 137.[117]Fourth, there can be cases, of which this is one, where it is appropriate to consider what has been won against the background of the costs required to achieve it. The total costs on the Claimants’ side alone have been over £1 million to achieve payment of a modest sum in respect of a draft contract of a kind which could probably be readily generated by AI and a potential claim for a licence fee to extend the period of reasonable notice in respect of a mark which was being phased out. There is another factor in play as well. Pursuit of this litigation has not only required the Defendants to incur costs of over £2 million, but those costs are now sought to be recovered in the Swiss Proceedings.[118]The upshot is that the Claimants have, in a real sense, got nothing – and possibly ultimately less than nothing - out of this litigation, notwithstanding the finding of liability on the limited basis. Mr Maechel has not forced payment from the Defendants but created a potential liability. In my view where such victory as there has been is (or may well be) Pyrrhic, as here, it can be right to say that one who wins to some extent in part is not the overall commercial winner. Put shortly, the Claimants here have not won anything of significant value which could not have been won without fighting the action through to the finish.[119]That which has been won as regards branding would have happened by now anyway and could easily have been sorted out sooner in a spirit of reasonable co-operation if there had been a sensible discussion about it. Conversely, the Defendants have, to this extent, denied the Claimants a prize which they fought the action to win. However, they have not “won” either (see below).[120]I also bear in mind that had the SPA been properly performed on both sides, MLT would not have been the owner of the trade marks and so, in one sense, the Claimants have not obtained something which (had all gone to plan) they wanted to secure. There is also positive evidence from the open offer made before trial (for £1.6m plus all their costs) that there was no realistic prospect of the Claimants accepting the result actually achieved. That provides a benchmark against which victory can be evaluated and the Claimants have fallen well short of that.[121]Finally, I bear in mind that, in achieving the modest successes they have, they have imposed significant costs on the Defendants and on the court. Again, these are out of proportion to the benefit obtained. It is not always right to view victory as receiving a modest benefit for themselves (itself at great cost) while at the same time also subjecting others to large costs in doing so. In this case, the Defendants have been subjected to costs of over £2 million which is (on any view) out of proportion to any small benefit obtained by the Claimants from this litigation.[122]I therefore reject the submission that the Claimants are the overall winners.[123]The next question is whether the Defendants can be regarded as the overall winners. It is true that the Defendants against whom the joint torfeasorship claim was made won outright.[124]The main problem in treating the Defendants as the overall winners is that the Defendants were seeking declarations that BEAT was the owner of the rights in question and that all Defendants had an unequivocal unlimited right to use those rights on the basis of complex arguments of agency. That claim, which was the largest part of their defence and counterclaims failed. Moreover, ultimately, because of the decision on the period of reasonable notice, BEAT has been held liable for trade mark infringement for a period after expiry of that time.[125]In those circumstances, I think it is not realistic to say that the Defendants were the overall winners on any of the bases put forward in their arguments even though some of the Defendants were successful in whole. It does not appear that the Defendants other than BEAT incurred significant incremental costs (see the references to the provision for costs in BEAT’s accounts above) and the real issues on the Defendants’ side were the “title” and “licence” points. I add that the Defendants did not invite me to make a finer grained award in favour of given individual Defendants and I do not think this would have been realistic. They were (correctly for this purpose) treated together.[126]I also add to this that the Defendants made an open offer to pay £100,000 and no order as to costs before the trial (in February 2025 around the time of the PTR) but, like the Claimants’ offer, this was at a time when a significant proportion of the costs had already been incurred so it was not an offer which would have prevented incurring those costs.[127]The more accurate, if less precise evaluation, is that neither side was the overall commercial winner although each side won something (or things) smaller than that which they fought the claim to achieve. This extent of the parties’ successes must also be seen against the background of the significant costs incurred and imposed on the other side to reach the modest degrees of success each achieved. That reinforces the sense that neither side can be seen as having won. That suggests that there should be no order as to costs.[128]To cross-check this thinking to the extent that it is possible to do so, I have also considered this issue from the perspective of assuming that one or other side were “winners” and then making appropriate percentage issue-based deductions. The difficulty in that task here is twofold.[129]First on issues such as passing off, the evidence and argument was closely bound up with the other issues of title and that issue is not clearly circumscribed. On the issues of title, it was necessary to explore the chronology in some detail in any event. Even the issue of joint tortfeasorship is not easy to unravel from the other issues because of the basis on which it was decided.[130]Second, neither side has done a full analysis of what costs were devoted to each issue. Counsel for the Defendants said that the Defendants’ solicitors had estimated that about 20-25% of the total costs were devoted to joint tortfeasorship but this was not based on any evidence and was said at the first time at the hearing. A similar position obtained on the Claimants’ side where no real attempt was made, save ultimately in response to questions from me, to evaluate on the basis of evidence, the proportion of costs devoted to each issue. The Claimants’ position in written argument was (unrealistically) that they were entitled to all of their costs with no deductions although in oral argument they put forward a modest softening of that position while still claiming the vast bulk of the budgeted costs.[131]This did not seem to recognise the extent to which there was an asymmetry in the level of costs devoted by both sides to given issues or the extent to which costs would have had to be incurred on claims on which they were unsuccessful. I reached the conclusion that if the court was to adopt that approach, treating either side as the commercial winner would inevitably involve making significant percentage deductions in the costs to which they were entitled. But neither side had provided a sufficiently solid basis for that to be done and it would be artificial. The underlying issue here is that making an order that the Defendants should have (say) 50% of their costs (as the Defendants urge) would be as arbitrary as making an order that the Claimants should have 50% of their costs. In those circumstances, this provides an additional reason for making no order as to costs of the trial.[132]Finally, I have in mind the recommendation that the courts should not depart too readily from the starting point in these evaluations namely to try to identify an overall winner and take the analysis from there. Normally that is possible and desirable even where one side has won much less than what was originally claimed. But where, on both sides, what they have achieved is significantly removed from what they wanted and has come at such a heavy price (including in the costs burden imposed on the other side in making or resisting claims) there can be a proper basis for departing from that approach and for making a different order. In some cases (see above), where a party has had a modest victory courts have made adverse costs awards against that party despite that.[133]My approach in this case is more conservative and takes account of the fact that the case law also cautions against courts artificially trying to identify an overall “winner” where that is unrealistic. As noted above, I have also considered the offers made at the time of the PTR but they were made so late and were of such a kind that they cannot affect the costs position in the way that offers did in Easy Group.[134]I have summarised above the reasons why I am exercising discretion to make no order as to costs in the circumstances of this case. However, in reaching this conclusion I have also stepped back and reviewed again the extensive arguments and evidence discussed in the Main Judgment to evaluate whether such an order would be “just” (cf CPR Rule 1) in all the circumstances, having regard to the balance of merit of the arguments and the likely costs of litigating them. I do not repeat those points here. They will be evident from reading that judgment. However, the fact that, at a finer level of grain, there was (very rough) parity of victory and defeat on each side on the numerous issues but with no clear overall winner at the end of the day, underlines the appropriateness of making no order as to costs.[135]Finally, although reference is primarily made in these situations to CPR 44.2(2), I bear in mind that, under CPR 44.2 (1), the court has a discretion as to whether costs are payable by one party to another at all. This rule does not mandate the making of a costs order but provides that if the court decides to make an order about costs,(a) the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party; but(b) the court may make a different order.[136]Moreover, in Rotam, Butcher J said that, even he had been persuaded that, by reason of the fact that they were recipients of a sum of money Rotam were to be regarded as the successful party, he would nevertheless not have made an order that Rotam was to have their costs, or a substantial proportion of their costs, under CPR 44.2(2)(a). He would have made a "different order" under CPR 44.4(2)(a).[137]I too conclude that a different order would have been - or would be - appropriate (namely no order) for the reasons identified above. However, I prefer to rest this decision primarily on the basis that it is not possible here to identify an “unsuccessful party” within the meaning of CPR 44.2 with sufficient clarity and that, because of that, it just in all the circumstances not to make an order as to costs.[138]I therefore make no order as to costs: each side must bear its own costs of these proceedings.[139]Whether any part of the Defendants’ costs can be claimed in the Swiss Proceedings is not a matter for this court and I express no view on it. Moreover, the costs of the summary procedure for evaluating damages are a different matter and will be for determination by whichever judge considers that. The Defendants can protect themselves in the usual ways with respect to that procedure if so advised. Interim payment[140]In those circumstances, the question of interim payment on account of costs does not arise. However, in case this matter goes further, I make the following observations. Where costs have been budgeted and a percentage deduction is made, a rule of thumb may be to award, by way of interim payment, 90% of the remaining percentage of budgeted costs and 75% of that percentage of incurred costs if there is no apparent issue as to their proportionality (see, for example, Irwell Riverside Developments Ltd v Arcadis Consulting (UK) Ltd [2024] EWHC 2110). In this case, however, if it were to have been appropriate to make any order it would have been necessary to be more conservative. The total costs incurred in these proceedings (taking account of both sides) are now about £4 million of which a portion are budgeted.[141]There is a real prospect that, on assessment, it will be determined that a greater proportion of the costs incurred (and also some budgeted) in respect of aspects of the proceedings at least were not recoverable, including on the footing that they were disproportionate. To take an example, as advanced by the Claimants, one copyright claim was ultimately said to be worth some £17,000 (at maximum), the other some £4,000. Even if as little as 1% of the total costs expended on this case by both parties had been incurred in respect of the copyright claims, that would exceed the value of those claims. As can be seen from the Main Judgment, the costs relating to those claims are likely to have been a higher proportion than that. Moreover, it was the Claimants’ case that it would have been easy for the Defendants to change both the Naurex Website and the Second Consultancy Contract. Indeed, on the basis of the likely irrecoverable costs alone, it would have been less expensive for the Claimants to buy the Defendants a new website and new consultancy contracts than to pay their English lawyers to try to force the Defendants to change theirs.[142]It is not easy to disentangle the costs attributable to these claims but it is not possible to say that as much as 60% of the incurred costs represents the irreducible minimum likely to be recovered in respect of these claims. Had I treated the Claimants as the overall winners, I would not have made an interim payment award of more than 50% of the budgeted and incurred costs in these circumstances and probably less. Since this does not arise. It may even have been one of those cases in which no interim payment was appropriate in all the circumstances.

FINAL ORDER

[143]The remaining aspects of the final order were considered and determined at the hearing, including whether declarations were necessary and in what form and a few subsidiary matters. Neither side has suggested that supplementary reasons are necessary for these.[144]The parties should endeavour to agree a draft order as soon as possible. If any disputes remain on wording or on the timetable/procedure for summary determination, I will resolve those on paper if an order is submitted indicating points of disagreement and the reasons for them. If there are applications arising out of this judgment, I will resolve those on paper as well.

Postscript

[145]At the consequentials hearing, Mr Maechel and Ms Bootle sat towards the back of the court. Long legal argument was played out in front of them while more costs racked up. After the hearing, Ms Bootle sent the court a copy of a communication from late 2024 to one of those on the Defendants’ side. By that time, the Defendants had incurred over £1m in costs and the Claimants probably not much less. Ms Bootle’s e-mail was designed to encourage the Defendants to settle the case and referred to the fact that the recipient would be “vigorously cross-examined”. Part of it read as follows:
“I also do not know if your present lawyers have explained to you in detail what going to Court will mean and the huge stress and additional costs involved. In addition, no lawyer, whatever he tells you, can be certain that a claim will be successful. One thing which is certain however and that is the lawyers will benefit hugely from it and they are the ones who cannot lose.”
[146]As to this, at least, she was right: almost all involved with this case have suffered from its pursuit. Observing the courtroom prompted sympathy for those to whom this case has provided such little value at such high cost. But with sympathy comes reality. The litigation was commenced and pursued on the instructions of the Claimants with Ms Bootle doubtless heavily involved. It was unsurprising that the Defendants took the position: quand on l’attaque, il se defend.[147]This case should, if possible, be brought to a conclusion.