In October 2018, we wrote about our “BIG win for thebigword” following a record-breaking award of damages, in excess of £140,000; in the IPEC – more than double the amount sought. Please see our blog here.
A few weeks later we reported that, on the same case, for the very first time, the Intellectual Property Enterprise Court disapplied the usual costs cap of £25,000 and awarded thebigword the sum of £98,000 because of unreasonable behaviour of Language Empire and Yasar Zaman, the defendants in this case. Please see our blog here.
On the 10th of October 2018, Language Empire and Yasar Zaman sought to appeal HHJ Clarke’s decision on the basis that Judge Clarke had: “erred in law in finding that the Defendants had abused the Court’s process”, which had led to the above.
On 22 May 2019, Virtuoso Legal’s IP Protect litigation team, led by Philip Partington were informed that the Defendants’ appeal had been refused permission by the Court of Appeal.
Virtuoso Legal’s client, Link Up Mitaka Ltd. (trading as thebigword) are a Leeds-based translation and transcription business with a global reach. thebigword brought a claim against Rochdale-based competitor Language Empire Limited and company director Yasar Zaman for use of its registered trade marks on a series of web domains and passing off in relation to online activity dating back to 2010.
In February 2017, thebigword (the Claimant) alleged that Language Empire and its director Yasar Zaman had operated and maintained two websites (“the Websites”) which both infringed the Claimant’s registered trade marks and amounted to passing off.
The Domains were registered in August 2010, and held a holding page until launched in May 2014. The landing pages of the Websites were shown to display the sign “Big Word Translation” and a logo containing the same, as well as a number of written uses of the mark in website copy and a copyright notice at the bottom of the page, asserting copyright on behalf of thebigword.
Upon receipt of the pre-action correspondence from the Claimant, the Defendants failed to reply. However, the websites were taken down shortly after this letter was received – this was later confirmed to be upon the Yasar Zaman’s instruction.
Following this, our Mr Partington prepared and served Particulars of Claim in March 2017 which alleged that the Defendants’ creation and maintenance of the Websites had deliberately infringed thebigword’s trade marks and as such passed off the websites as belonging to the Claimant – in order to divert prospective customers from thebigword to Language Empire. thebigword successfully obtained judgment on infringement in May 2017 and the parties then fought about the question of damages.
Judge Clarke’s Decision
Her Honour Judge Clarke found against the Defendants; and in doing so sought to identify the “sum of money which will put him (the Claimant) in the same position he would have been if he had not sustained the wrong.” In total, Judge Clarke awarded damages of £142,044 – including an uplift of 33% as a result of an undervaluation of the value of lost sales to thebigword as a consequence of the infringing websites.
Further to damages awarded by the courts in relation to this case, it is notable that Judge Clarke took a view upon lifting the costs cap within the IPEC, as the nature of the case fits within the scope of such cases where this has been seen in the IPEC before. The normal cap for the inquiry stage of IPEC proceedings is £25, 000. There is little to no guidance in respect of lifting that cap, save that it is only possible in “truly exceptional” cases. The judge’s thought process is best highlighted by the following paragraph:
I did not make this decision lightly. I accept and understand that the costs cap is a key feature and benefit of litigation in IPEC, and that certainty about the application of the Scale Costs Scheme is extremely important to facilitate access to justice for litigants in lower value intellectual property claims. However, where there is an abuse of the processes of the court, as Lord Diplock guides us, the court has a duty to identify it. If the court does not protect the integrity of the court processes to ensure that it meets the overriding objective to deal with cases justly and at proportionate cost, who will?”
(at paragraph 24)
Litigants in IPEC must understand that conduct which amounts to an abuse of the processes of the court will cause them to lose the benefit of the protection that the Scale Costs Scheme gives them.”
(at paragraph 25).– Her Honour Judge Clarke
The Appeal: thebigword v. Language Empire Limited
In late 2018, Language Empire and Yasar Zaman appealed HHJ Clarke’s decision to the Court of Appeal on the basis that she had “erred in law in finding that the Defendants [had] abused the Court’s process”.
On 22 May 2019, Virtuoso Legal were notified that the Right Honourable Lord Justice Floyd, sitting in the Court of Appeal, had refused Language Empire’s appeal on both grounds. In particular:
Ground 1 – the judge correctly directed herself as to the ingredients of an abuse of process and made properly reasoned conclusions as to why the applicants’ conduct had been one. She made findings in the course of her main judgment that, quite apart from giving dishonest evidence, Mr Zaman had gone to extreme lengths to hide the extent of the infringement. This court would have no basis for interfering with the judge’s factual conclusions and therefore with her conclusion on costs.
Ground 2 – This is an attempt to ask this court to re-evaluate the evidence heard by the judge without the benefit of hearing the witnesses. The judge was faced with the difficult task of attempting to assess damages in the face of the deliberate obfuscation of the applicants. It is inevitable that she will have done so liberally and by making use of inferences open to her on the evidence.”– The Right Honourable Lord Justice Floyd
As a result, “the appeal would not have a real prospect of success and there is no compelling reason for the court to hear it.”
Philip Partington, Director and head of IP Protect, Virtuoso Legal’s litigation team stated:
In the face of highly uncooperative defendants, missing and/or obfuscated evidence, the team had to strategise in a way that maximised the chances of a substantial damages award while minimising risk of being left with a nominal damages award and a large bill of costs to the client. My team has done this extremely successfully, setting precedent in the IPEC not only in relation to the damages achieved by the Claimant, but also in relation to the costs they were entitled to over and above the usual caps. It can only be described as a great result for our client!”– Philip Partington, Head of IP Protect, Virtuoso Legal
Commenting on the decision, CEO of thebigword, Nihat Arkan, said:
At thebigword we are proud of the work we do to deliver the best-in-class language services to our clients. We are passionate professionals and truly believe in the power of breaking down barriers to connect, inspire and educate. thebigword cares greatly about our clients and their ambitions and collaborate with them to support their goals and best interests.
Unfortunately, not all companies in our industry are able to reach these high standards. We are pleased with the Judge’s decision and will continue to provide the respected service for which we have become known.
In the original decision the judge awarded substantial damages and in her findings said the defendants had chosen to obfuscate and hide the true numbers of enquiries.
The judge found that the defendant’s case consisted of “a tangled mass of contradictions, inconsistencies, unlikelihoods, implausibilities and untruths.””– Nihat Arkan, CEO of thebigword
Chairman of thebigword, Larry Gould stated:
We are trusted around the world and the integrity of our brand remains intact. We are, of course, deeply disappointed and concerned at the impact that this potentially had on our business and the reputation of our industry.”– Larry Gould, Chairman, thebigword