The issue in this case was whether the claimants had paid the correct court fee when issuing their claim against the defendants.

For a claim for damages (i.e. to “recover a sum of money”) over £200,000, the current fee payable at issue would be £10,000 (5% of the damages claimed). Plus, if there is a claim for an injunction (i.e. a “non-monetary claim”) it would currently cost £528 to issue in the High Court (at the time of this case, the fee for a “non-monetary claim” used to be £480).

In this case when issuing the claim form for registered trade mark infringement and/or inducement of breach of contract, the claimants paid £480, the amount payable for a “non-monetary claim” as they were not claiming damages. They paid £480 on the basis that in a IP case, they could pay the non-monetary issue fee of £480 and then if liability was established and they elected for an inquiry as to damages, they could pay the monetary element of the court fee depending on the level of damages as at the time of issuing, they were unable to quantify their damages, but believed them to be ‘substantial’. They also assumed that as they elected for an account of profits instead of inquiry as to damages, no further fee would be payable because Page v Hewetts Solicitors [2013] EWHC 2845, held that an account of profits was a “non-monetary claim”.

In the claim form the claimants also gave a specific undertaking that they will pay an appropriate fee if ordered by the court to do so if an inquiry as to damages was eventually elected by the claimants.

The claimants claimed that they had paid the correct fee of £480 and no more was payable, however, the defendants made an application to stay the claims against them until the claimants paid the appropriate court fee.

The Judge held that in this case as the claimants were claiming an account of profits in relation to the trade mark infringement claim and an inquiry into damages for the breach of contract, the claimants’ whole claim is not a “non-monetary claim” and therefore the correct court fees had not been paid. The claimants would need to pay 5% of the damages amount they were intending to claim in relation to the breach of contract claim.

However, the Judge did consider the position had this claim been for trade mark infringement only claiming an account of profits. She confirmed the position in Page v Hewetts Solicitors, that an account of profits claim was a “non-monetary claim” and it is not until a claimant elects for an inquiry (which it may not do) that it can be said that its claim is to recover money and therefore the monetary court fee is payable.

In relation to the split nature of IP claims, the claimant would not elect to pursue an inquiry as to damages until liability is established, therefore if a claimant paid the injunction fee of £528 at issue and stated in their claim form they are electing an account of profits, the the correct fee would have been paid, i.e. the “non-monetary claim”. Until the claimant elects to pursue an inquiry as to damages, no claim to recover money is bought and therefore the higher court fee (5% of the damages) is not payable.

Link to Judgment

Judgment Date: 11 AUGUST 2016