Reinforcing the principles of fairness and proportionality in the assessment of costs in UK trade mark Law

In the recent case of Unicorn Studio Inc v Veronese (Société par Actions Simplifiée), the High Court delivered a significant ruling on the issue of costs in a trade mark dispute. This case involved Unicorn Studio Inc, the appellant, who had applied for a UK registered trade mark for a device mark incorporating the word “Veronese” in a fancy script, combined with an image of a unicorn. The dispute arose from opposition proceedings initiated by Veronese (Société par Actions Simplifiée), which led to a decision by the hearing officer on behalf of the Registrar of Trade Marks.

The High Court’s decision, delivered on 21 June 2024, focused on the costs associated with the appeal. The court ruled in favour of Unicorn Studio Inc, awarding them their costs without deductions for points on which they had lost or for lack of proportionality. This decision was made in recognition of the importance of the case to the appellant. The court’s approach to assessing costs summarily in accordance with CPR 44, and the decision not to apply deductions, underscores the court’s acknowledgment of the significant financial implications for the appellant.

The legal reasoning behind the court’s decision is rooted in the principles of fairness and proportionality. The court noted the substantial discrepancy between the costs recoverable under the regime used for opposition proceedings in the Trade Marks Registry and those under the CPR in the High Court. By awarding costs without deductions, the court aimed to ensure that the appellant was not unduly burdened by the financial costs of pursuing their legitimate trade mark rights.

This case has broader implications for trade mark law and practise in the UK. It highlights the importance of the courts’ role in ensuring fair and equitable treatment of parties in trade mark disputes, particularly in relation to costs. The decision also serves as a reminder of the potential financial risks involved in trade mark litigation and the need for parties to be prepared for the costs associated with such proceedings.

In the context of UK trade mark law, this case is significant as it reinforces the principles of fairness and proportionality in the assessment of costs. It also underscores the importance of the courts’ role in balancing the interests of the parties involved in trade mark disputes. For trade mark proprietors and legal practitioners, this case serves as a valuable precedent in understanding the potential financial implications of trade mark litigation and the importance of strategic planning in managing these risks.

In conclusion, the High Court’s decision in Unicorn Studio Inc v Veronese (Société par Actions Simplifiée) is a noteworthy development in UK trade mark law. It highlights the court’s commitment to ensuring fair and equitable treatment of parties in trade mark disputes and provides valuable insights into the assessment of costs in such cases. This case serves as a reminder of the importance of strategic planning and preparedness in managing the financial risks associated with trade mark litigation.