The obvious answer, of course, is that both have fallen foul of the tougher stance taken by the Courts following the Jackson procedural reforms. The relatively recent case of Andrew Mitchell MP -v- News Group Newspapers Ltd  EWCA Civ 1537, which has come to be known by the moniker ‘Mitchell’, has had an enormous impact on the way in which litigation is now pursued in the English Courts.
The appellant, Andrew Mitchell MP (“M”) (the claimant in separate defamation proceedings) appealed to the Court of Appeal against the decision of the High Court that a sanction be imposed for his failure to file his costs budget on time.
As part of the Jackson reforms, which came into effect in April 2013, parties in litigation are now required to file costs budgets with the court at an early stage in which that party’s estimated costs to trial are set out in a detailed spreadsheet with (hopefully) reasoned analysis. The Court may then approve or reject the costs budgets of the parties bearing in mind the need to conduct litigation efficiently and at proportionate cost. If a party is successful at trial in the litigation then, generally speaking, it may recover only the sums projected in its costs budget. The practical effect of this process is that increasingly the costs of litigation are front-loaded for a party and parties are discouraged from expending large sums on litigation.
In M’s case, his solicitors had lodged his costs budget after the deadline set out in Practice Direction 51D (which relates to defamation proceedings) to the Civil Procedure Rules, citing the pressures of work as their reason for non-compliance. The High Court observed that there was no specified sanction for non-compliance with Practice Direction 51D and so, by analogy, applied the sanction in Rule 3.14 which provides that where a party fails to file a costs budget when required to do so it is treated as having filed a budget comprising only the applicable Court fees. M appealed.
The Court of Appeal held that the High Court had been entitled to apply the sanction set out in Rule 3.14 and said that there was a shift away from focusing exclusively on doing justice in the individual case and that there was a need to enforce compliance with Court rules. The Court held that justice in an individual case was only achievable through the proper application of the Civil Procedure Rules and that the mere overlooking of a deadline, for whatever reason, was unlikely to justify relief.
The effect of this is that even if M is successful in his defamation claim he will not be able to recover any of the legal fees he has incurred, save the Court fees which will be comparatively small. This decision is therefore a clear sign that the Courts will no longer tolerate non-compliance with the Civil Procedure Rules or a casual disregard for time limits imposed by those rules or by the Court.
Since this decision there have been a number of further decisions which reinforce the message that the Court will no longer tolerate a party’s delay or failure.
These include the cases:
- Michael Burt v Linford Christie (No: 3BM90128)
- where the former international athlete failed to file his costs budget by the relevant time as his solicitors had miscalculated the deadline by one day with the consequence that he would be treated as having filed a budget comprising court fees only
- M A Lloyd and Sons Ltd (trading as KPM Marine) v PPC International Ltd (trading as Professional Powercraft)  EWHC 41 (QB)
- where the claimant failed to serve its witness statements in time and as a result was prevented from adducing any factual evidence at trial
- Thevarajah v Riordan and others  EWCA Civ 15
- , where the Court of Appeal overturned an order granting the defendants a second application for relief from sanctions arising from their failure to comply with an unless order which meant that the defendants were prevented from defending the claim.
‘Mitchell’ has therefore proven a clear demonstration that the Courts are taking a much tougher stance since the introduction of the Jackson reforms. It is also apparent that while this tougher direction is here for the long term, for the short term there will also be an increase in satellite litigation arguing about its exact ramifications.
The Uniform Rapid Suspension system (“URS”) is a rights protection mechanism which forms part of the ‘New gTLDs (generic Top Level Domains) Program’ of the Internet Corporation for Assigned Names and Numbers (“ICANN”) and is designed to provide rapid relief for trademark holders in the most clear-cut cases of infringement. It is intended to offer cheaper, faster responses than the existing Uniform Domain Name Dispute Resolution Policy.
Through the URS Procedure, ICANN aims to offer a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. A URS complaint must in the first instance be submitted directly to an approved URS provider.
The URS decision provided through the National Arbitration Forum (which is an approved URS provider) in favour of IBM (which was the Complainant) is the first ever decision under the URS. IBM filed a URS complaint on 5 February 2014 and the URS decision was completed on 12 February 2014.
The Respondent to the complaint had, on 31 January 2014, registered the two domain names ’ibm.guru’ and ‘ibm.ventures’ through GoDaddy and would have paid approximately $2,500 to register these domain names. The domain names as set up by the Respondent redirected to legitimate IBM websites.
The Complainant owns trademark registrations in 170 countries and has used the IBM mark for IT-related goods and serves for a hundred years. The URS decision notes that during the registration process the Respondent received a notification that the domain names matched a mark registered with the Trademark Clearinghouse and the Respondent was required to click on a notice which stated that he acknowledged the claim as part of the registration of the domains. The URS decision therefore found that, at the time of registration, the Respondent knew of the existence of the Complainant’s trademarks.
The URS decision also found that the activity for which the domains were established did not constitute a bona fide offering of goods or services or legitimate non-commercial fair use of the disputed domain name. In fact, the URS decision notes that by redirecting the disputed domain names to IBM websites, the Respondent had essentially acknowledged that the disputed domain names could only refer to the Complainant.
The URS decision found that the Complainant had established by clear and convincing evidence the necessary elements to obtain an order that the domain names should be suspended. These being that the registered domain names were identical or confusingly similar to a word mark (i) for which the Complainant holds a valid national or regional registration and that is in current use, (ii) that has been validated through court proceedings or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint was filed.
As such, it was determined that the domain names ‘ibm.guru’ and ‘ibm.ventures’ should be suspended for the duration of the registration.
This decision therefore shows that the URS system can offer a speedy resolution in certain instances of trademark infringement in domain registrations and also illustrates the possible benefit of submitting trademark details to the Trademark Clearinghouse which was the trigger for the registration notification which the URS decision held gave the Respondent knowledge of the Complainant’s trademark.