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The Intellectual Property Enterprise Court – another busy year

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17/12/2013

The Intellectual Property Enterprise Court – the fundamentals

The change of name to the Intellectual Property Enterprise Court (the Court) makes sense. The Court deals with intellectual property cases of all kinds, not simply patent cases, provided the value of the claim is not worth more than £500,000. By limiting the length of trial – often to just one day – and the amount of work done pre-trial, such as disclosure of documents and exchange of witness statements, costs of litigation in the Court are considerably less than they would be in the High Court.

The cap of £50,000 on the amount of costs which the losing party can be ordered to pay to the winner also substantially reduces the risk in relation to costs, when compared with litigation in the High Court. SMEs in particular have been deterred by the costs of going to court to defend their intellectual property rights, so the reduced risk of exposure on costs in the Court is a welcome shot in the arm for these businesses, who are no longer priced out of intellectual property litigation. However, the Court is not the exclusive preserve of smaller businesses – multinationals too may find that there are cases in which it makes economic sense to bring proceedings in the Court rather than in the High Court.

Since October 2012, the Court has operated a small claims track for cases worth up to £10,000. This covers trade mark, passing off, copyright and unregistered design right cases and uses an even simpler and more informal procedure. Generally, no costs will be awarded in small claims cases.

Colin Birss, who has guided the Court though the early years of its reincarnation since 2010 has been promoted to a High Court judge. His position as permanent presiding judge of the Court has been taken up by Richard Hacon, who assumed office on 3 December this year.

The year in review

The range of cases tackled by the Court in 2013 is impressive. As well as a plethora of trade mark and/or passing off cases, there have been copyright issues ranging from characters in a puppet show [1] to a singer’s performance rights [2], to the popstar Ke$ha [3], patent disputes ranging from baby buggies [4] to shoe-making equipment [5] and designs cases ranging from fruit punnets [6] to specialist bondage equipment [7].

The Court has, on several occasions, showed that it is no pushover. In Manvers Engineering Limited v Lubetech [8] Counsel had himself described one of his arguments as “faint”. This did not impress Mann J who made the point that the Court’s goal of quick and cheap dispute resolution would be frustrated if Counsel were to persist with arguments which had little prospect of success. The patent infringement case of Scopema SARL v Scot Seat Direct Limited [9] has demonstrated just how ruthless can be the costs capping regime in the Court. In this case, the successful defendant, which was clearly justified in defending the claim, ended up recovering substantially less than the £50,000 cap by virtue of the requirement to separate out its costs according to the Court’s procedural stages. In Dawe v IDG Communications Ltd [10] the Court disallowed the costs of a Part 20 claim where it appeared that the real purpose of the Part 20 claim had been to obtain information – which was not an appropriate use of the Part 20 procedure. In the same case the Court did not accept that it was necessary for a senior General Counsel, charged at £400 per hour, to defend a one-day trial with a quantum of £100,000 and reduced the rate claimed accordingly.

In Active Photonics AG v GB Solo Ltd [11] Birss J granted judgment for the claimant where the defendant had failed to comply with an unless order to serve its defence by a particular time. In refusing the defendant’s claim for relief, Birss J noted that that there had been no proper explanation for the defendant’s failure to comply with the order and that the case had already employed a disproportionately large part of the Court’s resources.

The Court is often described as dealing with less complex cases. Yet Xena Systems Ltd v Cantideck [12] involved the Court in the relatively rare requirement to inquire into damages in a patent case, and Environmental Recycling Technologies plc v Upcyle Holdings Ltd [13] concerned an omnibus claim to a patent process, which is even rarer. Walker Morris’s most recent appearance in the Court, in which we acted for the successful party (described here), was by no means a simple case. A considerable amount of evidence was adduced, and yet the matter was still disposed of by the Court within two days.

Despite its inherent frugality, the Court has in 2013 continued to prove itself a competent, accessible and forward thinking forum for resolution of IP disputes, popular with SMEs and multinationals alike, and not averse to handling complex or unprecedented cases.

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[1] Allen v Redshaw [2013] EWPCC B1
[2] Henderson v all Around the World Recordings Ltd [2013] EWPCC 7
[3] Sheldon v Daybrook House Promotions Ltd [2]13] EWPCC 26
[4] Phil & Ted’s Most Excellent Buggy Co Ltd v TFK Trends for Kids GmbH [2013] EWPCC 21
[5] WS Foster & Sons Ltd v Brooks Brothers [2013] EWPCC 18
[6] Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23
[7] Uwug Ltd v Derek Ball t/a RED [2013] EWPCC 35
[8] [2013] EWHC 3393 (IPEC)
[9] Scopema Sarl v Scot Seat Direct Ltd [2013] EWPCC 37
[10] [2013] EWPCC 33
[11] [2013] EWPCC 9
[12] [2013] EWPCC 1
[13] [2013] EWPCC 4