Design Image
Design Image
Design Image

Small claims track available for some IP

By Elizabeth Coulson.

Court proceedings are often a costly and time consuming aspect of defending and enforcing intellectual property (IP) and this usually discourages individuals and small companies from taking action against infringers.  

Following the publication of recommendations for streamlining the intellectual property litigation system and for reducing the costs of pursuing lower value claims, the Intellectual Property Enterprise Court (IPEC) (previously called the "Patents County Court") successfully introduced procedures to help it deal more efficiently with lower value and less complicated IP claims.

From 1 October 2012, changes to the UK legal system introduced a small claims track to the IPEC to make the court accessible for those wishing to take legal action in relation to lower value intellectual property disputes regarding trade marks, passing off, copyright, database rights and unregistered design right matters. The small claims track will not be available for claims relating to patents or registered designs.

What is classed as a “small claim” and how do cases get allocated to the small claims track?

A small claim is any claim where the amount in dispute (not including costs) is valued at £10,000 or less. The reforms introduce a quicker and easier route for such cases which is more proportionate to their value, acknowledging that the importance of a case may be high even though its financial value is small.

Even if a claim meets the above requirements regarding value, allocation of it to the small claims track is not automatic – and one party’s request to have the case heard by the small claims court can be disputed by the other and the court will then take account of the grounds of objection and determine allocation based on the complexity and value of the claim. 

Interim injunctions (which stop the offending action pending resolution of the full proceedings) will not be available via this route, but final injunctions will be.

The general principle that an unsuccessful party will pay the legal costs of a successful party does not apply to IPEC small claims track. In "small claims" there are only very limited circumstances in which the court will order one party to contribute to the costs of another

A restrictive costs regime is aimed at reducing the expense and risk of pursuing such claims. Typically each party will pay its own legal costs, but court fees, loss of earnings for a party and/or a witness of up to £90 per day and travel expenses can be recovered by the winning party. Legal fees of up to £260 and expert fees of up to £200 per expert may also be capable of recovery in certain cases.

If you would like further information about the above, or in relation to any aspect of intellectual property please contact us.

This news item may contain information of general interest about current legal issues, but does not contain legal advice.