Until recently most intellectual property claims were brought at great expense and ended inconclusively in the Chancery Division. There was the Patents County Court in London but that was almost as expensive as the High Court and for a long time its jurisdiction was confined to patents and designs. There were also the county courts in Manchester, Leeds, Liverpool, Preston, Newcastle, Bristol, Birmingham, Cardiff, Mold and Caernarfon but cases in those courts had to take their place in very long queues to come on eventually before a judge or recorder who was unlikely to have done much intellectual property work either on the bench or in practice. As a result, intellectual property rights have been widely ignored because infringers calculate that the owners of those rights cannot afford to sue or that the cost of enforcement is greater than the value of the likely remedy.
Now those calculations will have to change because there is now an affordable and virtually risk free forum for the enforcement of most intellectual property rights. Claims for injunctions for infringement of copyrights, design rights and trade marks, passing off, breach of confidence and indeed all intellectual property claims except those involving patents, registered designs, registered Community designs, semiconductor topographies and plant breeders’ rights can now be brought in the small claims track of the Patents County Court provided that the claim for damages does not exceed £5,000. Since the relief that most intellectual property owners want when their rights are infringed is not compensation for past wrongdoing but a stop to future wrongdoing that is good enough for most intellectual property owners.
Sceptical? Well test my proposition this way. Most disputes are settled through correspondence. Even in cases where proceedings are issued, most are settled at an early stage – either through mediation or direct negotiation or because the claimant gets or is refused an interim injunction. Very few of those settlements require the defendant to pay more than £5,000 in damages and even where the claim goes to trial it is rare for a successful claimant to insist on an account of profits or inquiry as to damages.
So how do you use the new court? Well the first thing you have to decide is how to use your lawyer because most of the fees that he or she will charge will be irrecoverable. The most that you can expect from the other side is £260 if you seek an injunction, the fee you paid to the court to issue the claim plus compensation for loss of earnings and travelling expenses if you have to attend a hearing. The small claims track procedure is designed to enable you to proceed without a lawyer or patent or trade mark attorney and anyone can present your case on your behalf at a hearing so long as you are also present.
However, that does not mean that you can do without a lawyer altogether. Intellectual property is a very complex area of the law and contains many pitfalls. For instance, if you threaten to sue someone for infringing a patent, registered or registered Community design, unregistered design right or trade mark and your threat turns out to be groundless you (the injured party) can be on the receiving end of a claim for an injunction and damages. The rules governing proceedings in the small claims track require you to write to the other side advising them of your right and how you believe they have infringed it before you issue proceedings but unless you get the wording right you risk a threats action or other unwelcome consequences. I have set out some guidance as to what you need to say in your letter before claim in my note “Why sending a US style ‘Cease and Desist Letter’ or old style ‘Letter before Action’ may not be a good idea” 13 Jan 2012 and I have written a model letter before claim for a design right dispute (JD Supra 3 Oct 2012). If you are not sure what to do in your particular dispute I shall be happy to draft a letter before claim for you or your solicitor or patent or trade mark attorney for a fixed fee. Also, a letter before claim is much more likely to be taken seriously if it appears on the stationery of a solicitor or patent or trade mark attorney than it will if it is written on your own notepaper unless you are a very large company. If you do not have a solicitor or patent attorney I have made arrangements with several firms which will send a letter before claim that I have drafted for a fixed fee.
If the case does not settle at this stage you will have to issue a claim form out of the public counter of the Rolls Building at the following address: 7 Rolls Building, Fetter Lane, London, EC4A 1NL. A fee is payable to the Courts and Tribunals Service at this point which will vary from £35 to £120 depending on the amount of damages you claim. The claim form must be accompanied by particulars of claim which set out your case in detail and a response pack. If you forget to send either of those things the case will not proceed or, if by some mischance it does proceed, any judgment that you obtain may be overturned. Again this is something for which you may need a lawyer since the particulars of claim must be in a prescribed form and contain certain information. Once again, I can draft the particulars of claim for you or your solicitor or patent or trade mark attorney for a fixed fee.
The other side has a fixed time to lodge a defence and any counterclaim the duration of which will depend on whether you sent a letter before claim in the prescribed form and mentioned that you had sent such a letter in your particulars. If the defendant responds within that time the court will give directions which may include fixing a date for a final or preliminary hearing. If it does not respond, you can apply to the district judge for an injunction, damages and any other relief to which you may be entitled and that will probably require a hearing.
All hearings will take place in the Thomas Moore Building in the Royal Courts of Justice in the Strand. The judges who will decide cases in the small claims track will be District Judges Janet Lambert, Melissa Clarke and Charlotte Hart and Deputy District Judges Nicola Solomon and Richard Vary. All of those judges have qualified as solicitors and most have been partners of big London law firms.
I have uploaded a presentation on IP litigation in the small track to Slideshare and written an article on the topic with a bibliography in my IP/IT Update blog. Should you require further information, you may call me on 0800 862 0055 or contact me through Facebook, Linkedin, twitter or Xing, or through my contact page.