England: Brands Bulletin
This monthly bulletin from Ashfords' IP Team is a great summary of recent international Intellectual Property law changes and updates. The Intellectual Property Practice Group have members across the globe who will be happy to hear from you if you have an IP query. Their details can be found on the Practice Group page of our website.
Improved Justice for Brand Owners
Regular readers of this e-publication will recall that for the past two years the Patent County Court ("PCC") has been operating on a different procedural basis to the High Court. The intention behind the procedural changes was to make it cheaper, quicker and easier for IP owners to bring legal proceedings against infringers of their IP rights.
As far as brand owners are concerned, over the past few months there have been a number of developments which have improved the system further.
First, readers may recall that, save for in very limited circumstances, anyone who loses a case brought before the PCC cannot be ordered to pay legal costs to the other side of greater than £50,000, in respect of determining liability. Thus, both parties to the litigation have the comfort of knowing that their costs liability to the other side is capped. This is not the case in the High Court.
For some time, IP specialists have wondered what happens where an IP rights owner sues several defendants. If the IP rights owner wins, can it only claim in total, from the combined defendants, a maximum of £50,000 by way of its legal costs? If the IP rights owner loses, can the defendants between them only recover from the IP rights owner up to a maximum of £50,000 by way of their legal costs?
The recent cases of Gimex International Groupe Import Export v The Chill Bag Company Limited and Ors  EWPCC 34 and Barry Liversidge v Owen Mumford Limited and Anor  EWPCC 40, have confirmed that, regardless of how many people are being sued, the maximum amount that a successful party can recover is £50,000. Thus, the maximum amount that a successful claimant can recover by way of legal costs from all the defendants combined together is £50,000 and, vice versa, the maximum amount all the successful defendants together can recover from an unsuccessful claimant is £50,000.
Second, on 1 October 2012 changes were made to the Civil Procedural Rules, so as to enable claims for damages of not more than £5,000 for IP infringement to be allocated to a new small claims track. The effect of being allocated to the small claims track is that, in the vast majority of cases, neither party will be able to recover any legal costs from the other side (whether they win or lose). What this means in practice is that it should make it easier for smaller claims of IP infringement to be heard without the need to use lawyers - and without the fear of having to pay out a substantial sum by way of legal costs should a party lose the case.
Third, his Honour Judge Birss QC has handed down recently his second preliminary non-binding opinion on the merits of a case issued in the PCC. His willingness to do so demonstrates that he is actively managing cases from an early stage.
The idea behind the court expressing a non-binding opinion, especially at an early stage in the proceedings, is to assist the parties to focus on trying to settle the case before significant legal costs are incurred (which can often prove a barrier to settlement). The court will only issue a preliminary non-binding opinion if both parties are happy for it to do so. In the case in question, (Fayus Inc. and Anor v Flying Trade Group PLC  EWPCC 43) the Judge held that there was a strong case that the defendant's use of the mark in question amounted to passing-off. By expressing his view early in the case, hopefully the defendant will now think carefully as to whether it would be sensible to incur the cost and time of taking the case to trial.
Fourth, in BOS GmbH & Co KG v Cobra UK Automotive Products Division Limited  EWPCC 44, his Honour Judge Birss QC confirmed that in PCC cases he is willing to make orders for the dissemination, at the losing party's cost, of his judgments (e.g. in the relevant trade press and on the losing party's website). This is the case whether or not it is the IP rights owner that wins, or the defendant, provided that the party in question seeks an order for dissemination in their court pleadings and it would be fair and proportionate to make the order sought.
The four developments mentioned above are to be welcomed. They support the principle that the PCC should be there to assist IP rights owners to obtain affordable and timely justice, with the court adopting a 'common sense' approach to the resolution of IP disputes. The developments will only reinforce the view of many that the PCC is now the venue of choice for resolving IP disputes which do not involve complex issues of fact and/or law.
If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners - email@example.com
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