The judgment of Miles J in DKH Retail Ltd & Ors v City Football Group Ltd [2024] EWHC 3231 (Ch) is an example of how the courts are getting tougher about imposing mediation.
The case was a trade mark dispute in which the core issue identified by the judge was whether promotional branding appearing on professional sports players’ kit was likely to be seen by the public as branding denoting the Superdry clothing brand or as branding denoting the defendant’s sponsor, Asahi Super Dry 0.0% lager. The words appearing on the relevant kit included the words “Super” and “Dry.” The question of mediation arose in the course of a pre-trial review.
The claimant applied for an order for compulsory mediation before trial, arguing that the court should exercise its power to do so on the basis that the dispute was capable of resolution: the case was not a particularly complicated one, and there were several variables in the dispute between the parties which might allow an out-of-court compromise and which might not be available in a judgment of the court. These included possible agreement about the form and size of any logo or lettering on the relevant sports kit, payment of money, and the timing of any changes to it. There had been no mediation to date.
Counsel for the claimant relied on the decision of the Court of Appeal in Churchill v Merthyr Tydfil County Borough Council and findings of the Civil Justice Council ADR Working Group showing that mediation had worked in complex and entrenched disputes, including where the ADR process appeared to have been unlikely to succeed and where one or other party had believed that they had a strong case. Counsel for the defendant submitted that, while there was no dispute about the power of the court to order mediation, it should only do so where there was a realistic prospect of success. He submitted that this was not such a case. The defendant wanted a judicial determination: even if the claimant were prepared to compromise, the defendant wanted to know once and for all whether it could use the Asahi branding on football kit and other clothing. He also relied on the imminence of trial, saying that it was very late in the day to seek an order for mediation, and noting that the parties had already spent hundreds of thousands of pounds in costs. He pointed out that his client had very limited availability for a mediation. “In short,” as Miles J summarised, “it is too late in the day; it is not a case where his client is being obstructive; mediation will fail; and this is a case where a ruling is needed.”
In spite of the obvious strength of the defendant’s submissions, Miles J made the order the claimant sought. Miles J was of the view that “A mediation of this case will be short and sharp, and the documents needed for it would be brief. The defendant did not suggest that mediation would significantly disrupt the parties’ preparations for trial.” He thought that they would be able to find a workable date. He ordered them to report the outcome of the mediation to the court as soon as possible after its completion.
The judge’s decision proved to be the right one. A postscript to his judgment records that “on 13 January 2025 the parties notified the court that they had settled their dispute.”
Whether this was just a decision in the particular circumstances of the case or a sign of a trend remains to be seen.
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