K11 GROUP LTD AND OTHERS v. OUJI SEKKEN (HONG KONG) CO LTD AND ANOTHER

HCIP 73/2022

[2023] HKCFI 2345

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

INTELLECTUAL PROPERTY PROCEEDINGS NO. 73 OF 2022

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SUMMARY ASSESSMENT OF COSTS

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1.  This is the summary assessment of costs pursuant to the consent order I made on 20 March 2023 (“the Order”). Under the Order, the parties agreed that:

(i)    there be no order as to costs of the original action incurred prior to 19 December 2022;

(ii)   costs of the original action incurred from 19 December 2022 to the date of the Order, all the costs of the counterclaim (including the Defence to Counterclaim filed on 30 December 2022 and the striking out summons filed on 5 January 2023 (“the Striking Out Summons”)) and the costs of the consent order application be paid by the Defendants to the Plaintiffs on an indemnity basis to be summarily assessed by the court.

2.  This is a high profile case involving a well-known trade mark and trade name in Hong Kong.  It started off with an interlocutory injunction application which came before me on 21 October 2022.  Instead of wasting time to argue on the interlocutory injunction application, I agreed to fix an early date for a 6-days trial in April 2023.  After that, the Defendants have taken a series of re-branding steps, and the Plaintiffs found it unnecessary to proceed with the original claim.   The Plaintiffs also took out the Striking Out Summons to strike out the Defendants’ counterclaim for “groundless threat”.  The case then came before me again on 27 January 2023.  I granted leave to the Plaintiffs to discontinue the claim and adjourned the Striking Out Summons (together with the Plaintiffs’ another summons for directions) for argument in April 2023.  The parties then settled the case resulting in the making of the Order.

3.  In the Statement of Costs, the Plaintiffs claim the costs in the total sum of $538,765.20.

4.  The Defendants do not challenge the counsel’s fees in the sum of $182,100.  However, the Defendants submit that, as most of the works were handled by counsel, the fees claimed for the professional services of the Plaintiffs’ solicitors are excessive.

5.  The main objections relate to the fees claimed under Section C for communication and Section D for professional works which include drafting legal documents and attending the court hearing on 27 January 2023.

6.  Having perused the Plaintiffs’ Statement of Costs and the Defendants’ List of Objections, I take the view that the costs claimed for communication under Section C are excessive.  In particular, the Striking Out Summons should not be a complicated application and the time involved in communication is excessive even taking into account that the costs are taxed on an indemnity basis.  I deduct $65,000 under Section C.  For Section D, I also take the view that the total sum claimed is on the high side.  I deduct a sum of $15,000 under Section D.   I also take the view that the fees claimed for the manual works under Section B are on the high side.  Adopting a broad brush approach, I deduct a sum of about $83,000 and summarily assess the Plaintiffs’ costs in the total sum of $455,000.