March 12, 2024

The case concerned a claim against our client for alleged infringement of the claimant’s international registered trademark for a pharmaceutical preparation. The preparation was sold under one name in the Member State of the European Union from which it was imported and under another in the United Kingdom. Our client repackaged the product using the UK name. The trade mark proprietor objected on a number of grounds, including accusing our client of having misled the regulator in granting the necessary parallel import licence. The case was listed for a four day trial. With extensive witness statements and expert evidence, the case was ready for trial when, only days ahead of trial, the claimant served a notice of discontinuance. In its own right, the case threw up an exceptional number of challenges in the confluence of regulatory law, intellectual property rights and the freedom of movement provisions in European treaty law.

Those streams of challenge apart, the case also presented a peculiar problem in costs law. There were, prior to the discontinuance, already pending applications for the revision of both parties’ costs budgets, largely due to the claimant expanding the issues in the case at a late stage. The effect of the discontinuance was that the outstanding revisions to the parties’ costs budgets would not be heard at the commencement of any trial, when it was anticipated that issue would be adjudicated. In the light of the discontinuance, we requested the court to deal with the proposed revisions to our client’s costs budget even though the case had come to an end. The claimant argued that the court no longer had jurisdiction to consider those revisions after proceedings had been discontinued.

The issue was significant in the light of the consequences of discontinuance, namely that the claimant would automatically be liable to pay our clients’ costs. Accordingly, a hotly contested hearing as to whether the court had jurisdiction to consider revisions after discontinuance resulted in judgment in our client’s favour. The unsuccessful claimant did not appeal against the judgement at first instance.