Xcelom Ltd v BGI-Hongkong Co Ltd (No. 2)

Court of First Instance
High Court Action No. 3089 of 2015
Deputy Judge Kenneth Kwok SC
9 December 2016

Costs – patent infringement – unmeritorious interlocutory application – modern approach to costs

In intellectual property proceedings for an interlocutory injunction, the Judge held that Ps were guilty of inordinate delay in making the application and there was clear evidence of a lack of irreparable damage. He then made an order nisi for Ds’ costs to be taxed (if not agreed) and paid by Ps to Ds, with certificate for two counsel (the “Order”). Ps applied for a variation of the Order seeking “the costs of the application be costs in the cause to be taxed if not agreed …”. Ds sought a variation such that their costs to “be paid by Ps forthwith to be taxed if not agreed.”

Held, dismissing P’s application with costs to Ds, to be paid forthwith to be taxed if not agreed, that:

  • On an interlocutory application, an unsuccessful party could be penalised in costs in very special circumstances.
  • There was no necessary correlation between the success of an interlocutory application and success at trial. There was no reason why the costs of an interlocutory application should invariably be made to follow the event at trial or why payment of such costs should invariably wait until after trial.
  • Ps should never have made the application, given particularly absence of irreparable damage. They had wasted Ds’ costs and time and the Court’s time. An immediate costs order should be and was made against Ps.
  • As for the variation of the Order sought by Ds, as the word “forthwith” was not necessary. Ds were entitled to immediate taxation and payment of their costs and the Order had the effect intended. Although unnecessary, the variation was granted given Ps’ lack of objection.

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