Goliath v Goliath on the issue of trade mark costs

Samsung and Swatch Group have had a chequered past in the world of intellectual property litigation over the few years. With pun intended, Swatch Group has had its finger on the dial and Samsung’s time has come.

Things started in 2022 when the Swatch Group of watch makers (amongst others, Montres Breguet, Tissot, Hamilton International, Swatch and Omega) joined forces to issue trade mark infringement proceedings against Samsung for trade mark infringement. The crux of the case was that Samsung’s Galaxy App store was making watch face downloads available. These downloadable watch faces resembled those of the Swatch Group.

Swatch Group were successful at trial and in 2023 the Court of Appeal upheld the judgment. This left Samsung with an injunction against it in relation to a number of Swatch Group trade marks.

Between 26 July-15 August 2023, the UK Intellectual Property Office (“UKIPO”) heard a number of non-use revocation proceedings that were brought by Samsung against the owners of the trade marks that formed part of the injunction. Samsung contented that the relevant trade marks had not been used and so the injunction against it was based on overly broad specifications of the Swatch Group’s marks, for which there was no use.

In 13 separate hearings, the UKIPO either fully or partially revoked the trade marks for non-use although the Swatch Group’s trade marks remained registered for “watches” and so it can be said that each side had a measure of success.

The parties agreed that the costs of the revocation proceedings would be determined at the end of them. Decision O/0220/24 makes a good read as both sides claimed “off scale costs” (in UKIPO proceedings there is a set scale of cost that can be awarded unless there is unreasonable conduct).

Samsung’s requested costs amounted to £343,847.20 and the Swatch Group’s were £475.595.02. In the decision, the Hearing Officer found that he considered each side had engaged in “unhelpful” conduct, for example referencing the Swatch Group’s “voluminous and vague” evidence.

Ultimately after conducting an assessment, the Hearing Officer concluded that each side should bear their own costs.

So watchwhat does this mean, well simply it confirms the UKIPO’s ethos that the Trade Mark Tribunal is intended to be a relatively informal, low cost, easy access alternative and the principle of low cost remains relevant for all proceedings. It means that parties to trade mark proceedings can have a fairly good idea of the level of costs they will both be able to recover or be liable for and that these can often be predicted in advance.