Introduction of the Small Claims Track for Intellectual Property

October 2012 saw the introduction of the availability of a Small Claims Track for Intellectual Property cases in the Patents County Court, applying to cases where the value of the claim is £5,000 or less. This was the result of a combination of Lord Justice Jackson's drive to make otherwise costly litigation more accessible and the wish of HHJ Birss QC (the senior Judge of the Patents County Court) to make it easier for SME-sized businesses to enforce their Intellectual Property Rights (IPRs).

The new IP small-claims track in the PCC is available for claims involving copyright infringement, registered trade mark infringement, passing-off and unregistered design right, but is not available for claims involving patent infringement, registered design rights (both UK and Community rights) and more "specialist" IPR such as plant variety rights, where the evidential issues involved may be more complex.

It emulates many of the features of the existing civil Small Claims process, including a streamlined and more informal procedure, rules of evidence and approach to the final hearing, but the Judges will be Patents County Court judges, sitting in London, who are IP specialists and who, if the parties agree, may deal with matter purely "on paper" without a hearing. It should be noted, however, that the parties will still be expected to demonstrate that they have complied with the required pre-action behaviour in an attempt to avoid court altogether.

The remedies that will be available through this track are damages (or an account of profits) for past infringement, and a final injunction to prevent future infringement. Interim injunctions will not, however, be available through the PCC Small Claims track. However, with the general civil Small Claims threshold rising in April to £10,000 from £5,000 and with the likely costs of pursuing a claim through the Small Claims Route being considerably less than the fast or multi-track in the PCC or High Court, it may prove to be an attractive route for an SME client who recognises the value of their IPR, wants to get a final hearing and a final injunction as quickly and cheaply as possible, but only has a modest monetary claim (or indeed who is willing to limit their monetary claim to the Small Claims limit in order to benefit from the streamlined process).

As with the general Small Claims track, however, it should be noted that as a general rule, costs will not be recoverable against the "losing" party except for very limited fixed costs, court fees etc. Nonetheless, we have experience in the Small Claims Court where it has been possible to get an order for costs because of very unreasonable conduct by the other party in the conduct of the litigation, and there is no reason to think that this would not also be the case in the PCC, though such circumstances are certainly very rare.

As a general rule though, SMEs with a reasonably straightforward infringement claim in one of the IPRs covered by the new Small Claims track may also take the view that the considerably lower costs of Small Claims litigation, even if borne by themselves, would represent a worthwhile investment in securing a final order and (post April) damages of up to £10,000, particularly where the order itself serves as a "line in the sand" within their industry and enables them to publicise the fact that they do take action to protect their rights. Such "bragging rights" alone can have considerable value and "clout" in certain (especially brand-driven) sectors.

Posted on: 04/04/2013

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.

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