Case No: A3/2013/1736/1737/1737(Y)
Neutral Citation Number: [2014] EWCA Civ 1448

IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
The Hon Mr Justice Arnold
[2013] EWHC 1291 (Ch)
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 12/11/2014
Before:

LORD JUSTICE PATTEN
LORD JUSTICE KITCHIN

and
SIR COLIN RIMER
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Between:

	(1) Interflora Inc
(a company incorporated under the laws of
Michigan, United States)
(2)	Interflora British Unit
	Claimants/Respond-ents	
	- and -
		
	Marks and Spencer plc	Defendant/Appellant	
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Mr Geoffrey Hobbs QC and Miss Emma Himsworth QC
 (instructed by Bristows LLP) for the Appellant
Mr Michael Silverleaf QC and Mr Simon Malynicz
 (instructed by Pinsent Masons LLP) for the Respondents

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Judgment
Judgment on Form of Order
Lord Justice Kitchin: 
1.	This is the judgment of the Court. We have given careful consideration to all of the submissions and materials filed by the parties in connection with the form of order.
2.	The order to be made will follow the form of order proposed by M & S (“the draft order”) to the extent (and subject to the modifications) set out below.
3.	We will make an order in terms of paragraphs 1 to 3 of the draft order.
4.	As for paragraph 4 of the draft order, we consider that the question whether an injunction should be granted pending the retrial and the terms of any such injunction should be considered by a judge of the Chancery Division of the High Court upon an application made for that purpose by Interflora. Accordingly, we will make an order in terms of paragraph 4 of the draft order but do so entirely without prejudice to any such application which Interflora may choose to make. We express no view about the merits of any such application.
5.	Paragraphs 5 and 6 of the draft order have given rise to three areas of dispute. The first concerns the issues to be remitted for retrial. We are satisfied that the issues to be remitted are correctly identified in our judgment, that is to say the claims for infringement under section 10(1) of the Trade Marks Act 1994 and Article 9(1)(a) of the Community Trade Mark Regulation. Judgment was entered for M & S upon the other claims for infringement by the order of Arnold J dated 23 May 2013 and 12 June 2013, against which there was no cross-appeal. Nor did Interflora file a respondent’s notice in relation to the appeal by M & S.
6.	The second concerns the identity of the judge. In light of all the circumstances and the submissions of the parties we have come to the conclusion that the case must be remitted for retrial before a different judge of the Chancery Division of the High Court. 
7.	The third concerns the form of the retrial. We do not believe it would be appropriate for this court to give directions as to the form of the retrial beyond the particular matters to which we have referred. Directions for the retrial must be given by a judge of the Chancery Division of the High Court upon an application made for that purpose.
8.	We will therefore make an order in terms of paragraphs 5 and 6 of the draft order.
9.	We do not understand there to be any substantive objection to paragraphs 7 and 8 of the draft order. There is a significant dispute between the parties as to the terms of paragraph 9, however. The parties have broken the costs down into various categories and we shall do the same.
10.	First, as for the pre-trial costs, we agree with the parties that these should be reserved to the judge hearing the retrial.
11.	Second, as for the trial costs, we are persuaded that these costs should also be reserved to the judge hearing the retrial. That judge will be in the best position to determine which side should bear them and this order will preserve the positions of the parties in the meantime.
12.	Third, we consider the costs of and occasioned by the implementation and operation of the provisions of paragraphs 1 to 11 of the said order of Arnold J should likewise be reserved to the judge hearing the retrial. 
13.	Fourth, as for the costs of the appeals, we are satisfied that this is not a case in which we should adopt an issue based approach. We have decided that M & S is entitled to its costs of appeals A3/2013/1737 and A3/2013/1737Y (including the costs of the permission application). But so also, Interflora are entitled to their costs of appeal A3/2013/1736. These sets of costs are to be assessed and the one set off against the other in the usual way.
14.	In the circumstances, paragraph 10 of the draft order is not appropriate.
15.	Paragraph 11 of the draft order is agreed and we will make an order in those terms.
16.	As for paragraph 12 of the draft order, we are satisfied that M & S is entitled to a payment of a reasonable sum on account of the costs it will recover under the terms of the order we will make. In the circumstances of this case we are satisfied that a reasonable sum is £160,000, and payment is to be made within 21 days.
17.	In light of the foregoing we are also satisfied that M & S is entitled to repayment of the sum of £1,100,000 which it was required to pay by paragraph 5 of the order of Arnold J and accordingly we will make an order in terms of paragraph 13 of the draft order save that payment is to be made within 21 days.
18.	Paragraph 14 of the draft order is agreed and we will make an order in those terms.
19.	We are satisfied it is appropriate to make an order in terms of paragraph 15 of the draft order. However, we express no view as to the merits of any such application. The judge to whom any such application is made may decide it should not proceed pending the retrial or give such other directions as he or she may consider appropriate.  
20.	M & S is directed to produce a revised draft order in light of these rulings and to provide it to Interflora. The parties are directed to use their best endeavours to agree and sign a draft order and lodge it with the court before close of business on Tuesday 18 November 2014.