A new court system was introduced in the Patents County Court (PCC) at the end of 2012, focused on small disputes over certain types of intellectual property (IP) rights.
The small claims track for IP dispute resolution is a simplified proceeding to enable resolution of disputes for claims worth less than £5,000. Permitted claims include infringement of copyright, passing off, abuses of national and Community registered trademarks or abuses of unregistered national and Community design rights. Patent and registered design claims are not permitted.
Nature of the Small Claims Track for IP
According to the national Intellectual Property Office guidelines, disputes may be settled through an informal hearing where the court may adopt any method of proceeding that it considers to be fair.
Generally, strict rules of evidence do not apply, the court does not need to take evidence on oath, cross-examination may be limited, and the court decision must always provide reasoning. Furthermore, the court may, upon all parties’ agreement, deal with the claim without a hearing.
The claimant must state that it wishes to use the small claims track otherwise all claims addressed to the PCC are initially automatically allocated to the multi-track system, or brought to the High Court.
If the defendant raises and objection to the allocation to the small claims track, the court will consider the complexity of the case, the oral evidence required and the statements of the involved parties. The case will only then be allocated to the PCC small claims track if deemed suitable.
Restrictions on the Small Claims Track for IP
There are many restrictions to the small claim track, particularly regarding the remedies permitted. Only damages for infringement, an account of profits or a final injunction to inhibit future infringements will be granted. No interim injunctions, search and seizure or asset freezing orders are available.
The general principle in litigation where the unsuccessful party bears the burden of costs is not applicable in the small track claims and costs orders are limited. The PCC can order parties to pay a maximum of £50,000, whereas the High Court can order parties to pay unlimited costs. Even in the multi-track system there is a damages-cap limiting the claims in copyright and trade mark infringement cases to £500,000. Other restrictions also apply and are proportional to the nature of the dispute.
As legal representation is not required, small firms can present their own claim directly to the judge.
Conclusion
Without the need of overly complex and long lasting proceedings, the new system reduces significantly the costs, time and complexity of pursuing IP infringement cases making access to justice less expensive for intellectual property owners.
If you need help protecting your intellectual property or defending a claim made against you, Rollingsons has experienced lawyers who can assist you. For more information please contact James Crichton via e-mail jcrichton@rollingsons.co.uk or by telephone on 0207 611 4848.
