Small Claims Track IP Litigation in Bristol and Cardiff

Author Ham II Licence CC BY-SA 3.0 Source Wikipedia Cardiff Crown Court

Jane Lambert

One of the most interesting announcements of the new Intellectual Property Enterprise Court Guide is the decision to appoint from October 2019 district judges to hear small intellectual property claims in Bristol and Cardiff (see The New IPEC Guide 4 July 2019 NIPC News).

The cases that those district judges will be entitled to hear pursuant to CPR 63.27 will be claims for £10,000 or less for the infringement of intellectual property rights other than patents, registered and registered Community designs, semiconductor topographies and plant varieties. In Small IP Claims, I gave examples of cases that might be suitable for the small claims track and of others that would not.  The claimant must ask for the claim to be allocated to the small claims track in its particulars of claim and no objection should be raised by the defendant.   However, even if a case falls within the jurisdiction of the small claims track and the parties want it to stay there, the court may transfer it to the multitrack if it is likely to take more than a day to try or there is a difficult point of law or factual issue to decide.

Proceedings in the small claims track are governed by CPR Part 27 and the Part 27 Practice Direction as modified by CPR 63.27 and CPR 63.28 and paragraph 63.32 of the Part 63 Practice Direction.  Though successful claimants can obtain final injunctions and orders for delivery up of infringing materials as well as damages or accountable profits they cannot claim interim injunctions.  Liability and the amount of any damages or other pecuniary relief to be awarded are decided at the same time.  Directions are given automatically in accordance with Appendix B or C of the Part 27 Practice Direction after statements of case are exchanged and although the court has power under CPR 27.6 to hold preliminary hearings these are the exception rather than the rule. There is no provision for disclosure and the costs that may be recovered from an unsuccessful party are limited to court fees, £260 if an injunction is sought and a lawyer has been instructed, travelling expenses and loss of earnings up to £95 per witness and up to £750 in experts' fees.

The new IPEC guide indicates that those wishing to bring an IP case in the small claims track in Bristol or Cardiff should use the electronic filing system.

Anyone wishing to discuss this article or small claims track IP litigation generally should call me on 020 7404 5252 or send me a message through my contact page.

Better than the M4 - "The Judicial Superhighway"

Author John Grayson
Licence Creative Commons Attribution-Share Alike 2.0

Jane Lambert

The Chancery Division, Circuit Commercial and Technology and Construction Courts sitting in Bristol and Cardiff are now known as "the Business and Property Courts" and linked to the Rolls Building in London  (see The Business and Property Courts of England and Wales Advisory note 27 Sep 2017 Judiciary website). The link between the courts in Bristol and Cardiff and London has been described as a "judicial superhighway" (see The Business and Property Courts of England & Wales - An Explanatory Statement  18 May 2017 by Sir Geoffrey Vos and Sir Brian Leveson). The objective of the judicial superhighway is to enable any kind of case to proceed outside London.

It will be possible to bring cases in Bristol or Cardiff if:

• "one or more of the parties has an address or registered office in the circuit (particularly if the party is non-represented); 
• at least one or more of the witnesses is located in the circuit; 
• at least one of the witnesses expected to give oral evidence is located within the circuit 
• the dispute occurred in a location within the circuit; 
• the dispute concerns land, goods or other assets located in the circuit; or 
• the parties’ legal representatives are based in the circuit."

One of the lists of the Business and Property Courts is the Intellectual Property List which is itself subdivided into lists for the Patents Court, Intellectual Property Enterprise Court ("IPEC") and the Chancery Division. Cases relating to patents, registered and registered Community designs, semiconductor topographies and plant breeders' rights must proceed in the Patents Court or the IPEC multitrack. Both courts are based in the Rolls Building but the Patents Court and IPEC Guides state that the Patents and Enterprise Judges will sit outside London for the convenience of the parties or to save time or costs. All other IP cases - that is to say, those involving breaches of confidence, copyrights, database rights, passing off, rights in performances, trade marks, unregistered Community designs and unregistered design rights - can be issued out of the Bristol or Cardiff District Registries or IPEC. Claims that can be tried in 2 days or less where the amount in dispute is less than £500,000 should be issued out of IPEC. 

Claims issued out of the Business and Property Courts must be headed as follows:

"IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS IN BRISTOL
INTELLECTUAL PROPERTY LIST (ChD)"

or 

"IN THE HIGH COURT OF JUSTICE 

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES 

INTELLECTUAL PROPERTY LIST
PATENTS COURT (ChD)"

Claims in the Business and Property Courts that are issued after 2 Oct 2017 will be given a claim number with a prefix that reflects the Court, List or sub-list in which they are issued. The prefix for Patents Court claims is "HP", the prefix for IPEC claims is "IP" and the prefix for IP claims in the Chancery Division is "IL"

Anyone wishing to discuss this article or IP litigation generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.