How to take proceedings in the IPEC Small Claims Track

Jane Lambert

IPEC stands for the Intellectual Property Enterprise Court. This is a specialist court within the Chancery Division of the High Court of Justice. It came into being on 1 Oct 2013 when it took over the functions of the Patents County Court after that court had been abolished by paragraph 30 (3) of Schedule 9 of the Crime and Courts Act 2013. Unlike the rest of the High Court it has a small claims track for certain types of intellectual property claim up to £10,000. The rest of this article will discuss this jurisdiction.

What Sort of Case Can be Brought in the IPEC Small Claims Track?
Just about any sort of intellectual property claim may be brought in the small claims track except one involving patents, registered or registered Community designs, semiconductor topographies or plant varieties so long as the claim does not exceed £10,000. Typical sort of cases would be claims for copyright infringement in photographs where the defendant has posted a photograph taken by the claimant to his website without the claimant's permission and simple trade mark cases or passing off cases where a small local shopkeeper or restaurateur adopts a name, logo or trading style similar to that of a well known brand. The small claims track could also resolve cases where a confidante fails to respect a non-disclosure agreement.

What Sort of Remedies are Available?
Everything! Injunctions, orders for delivery up and damages subject to two limitations. The first is that costs are limited to court fees, loss of earnings, travelling expenses, counsel or solicitors' fees up to £260 where an injunction is sought and experts' fees up to £750. The second is that the small claims track has no jurisdiction to award interim injunctions.

Who are the Judges?
There are three full time District Judges - Janet Lambert, Melissa Clarke and Charlotte Hart - and two deputy District Judges - Nicola Solomon and Richard Vary. They hear all trials and preliminary hearings.

Where does the Court sit?
The court is based in the Rolls Building in Fetter Lane with rest of the Chancery Division but hearings take place in the Royal Courts of Justice in The Strand. The court can sit elsewhere in England and Wales for the convenience of the parties and witnesses or in order to save costs.

Essential Reading
If you have never been anywhere near a court before you should download the following documents from HM Courts and Tribunal Service website and read them very carefully:

• EX301 I’m in a dispute - what can I do?
• EX302 How do I make a court claim?
• EX304 I’ve started a claim in court - what happens next?
• EX306 The small claims track in the civil courts
• EX50 Civil and Family Court Fees

In addition there are two documents that apply specifically to IPEC:

• The Intellectual Property Enterprise Court Guide
• Guide to the Parents County Court Small Claims Track.

Advice and Representation

This point is a good time to decide whether you really want to act for yourself or consult a lawyer or other professional. The advantage of calling in a lawyer or patent or trade mark attorney is that they can advise you of the strength of your case, do all the paperwork and go to court for you. The drawback is that lawyers and attorneys cost money and the most you can expect from the other side is £260 towards your costs and then only if you seek an injunction. You do not have to go to a specialist IP practitioner or even a lawyer but unless the person you consult knows at least some IP law you may well find that he or she can do the job no better than you.  You will find a lawyer specializing in IP from the IP Bar Association or the Intellectual Property Lawyers Association websites. Patent and trade mark attorneys are listed on the CIPA and ITMA sites respectively.

More Reading

If you do decide to act for yourself you should be aware that the civil courts in England and Wales are governed by the Civil Procedure Rules (CPR) which are divided into a number of Parts and supplemented by a series of Practice Directions (PD).  Individual rules are referred to by the initials CPR and then the number of the Part followed by the number of the rule.  Thus "CPR 63.17" is short for "rule 17 of Part 63 of the Civil Procedure Rules."    

CPR Part 27 governs proceedings in the small claims track generally and CPR Part 63 intellectual property proceedings including those in IPEC and IPEC's small claims track.  Before you do another thing read and digest the following Parts and Practice Directions:

• Practice Direction - Pre-Action Conduct
• CPR Part 27 - Small Claims Track
• PD Part 27 - Small Claims Track
• CPR Part 63 - Intellectual Property Claims and
• PD Part 63 - Intellectual Property Claims.

It is also worth taking a glance at the other Parts so that you understand their structure and what they cover because the court and other side are likely to refer to them from time to time.

What to do first?
The first thing you do is write a letter before claim in accordance with paragraph 2 of Annex A to the PD - Pre-Action Conduct and send it to the other side. The recipient is supposed to acknowledge your letter in accordance with paragraph 3 within 14 days and to respond in full within 28. If the other side takes no notice of your letter you can issue your claim without further notice. However, in many if not most cases, someone from the other side will call you which may lead eventually to settlement negotiations. There are also various mediation and other ADR schemes to facilitate dispute resolution.

Threats
You should be aware that threatening certain people with certain types of IP proceedings can be risky. That us because the Copyright Designs and Patents Act 1988, Trade Marks Act 1994 and certain other statutes and statutory instruments provide a right of action against those who make groundless threats. The rationale behind this legislation is that IP proceedings can be horrendous - one great 19th century judge famously compared patent litigation to a killer flu virus - and the threat to bring such proceedings should not be made lightly.  If you want to know more about threats read my article "If you think someone has infringed your patent talk to a lawyer first" 11 July 2014 in the NIPC Inventors' Club blog.

The Claim Form
If the other side does not respond to your letter before claim or you are otherwise unable to resolve your claim you should download a claim form and notes on completing a claim form from HM Courts and Tribunal Service website. Study the notes very carefully and then fill in the form in accordance with the notes.

Particulars of Claim 
You will note that the claim form leaves space for Particulars of Claim.   Some claims are very simple and can be contained in that space.  Most intellectual property cases, however, are more complex and require several sheets of A4 paper to set out.  

The particulars of claim should identify your intellectual property right and explain how it has been infringed.  You must state your case in numbered paragraphs. If your claim is for infringement of copyright you should:

(1) identify the work in which you say copyright subsists
(2) explain how that copyright arises and how you own the copyright
(3) identify the alleged copy
(4) point out the similarities between your work and the alleged copy,
(5) explain thar the defendant had an opportunity to copy your work,
(6) set out the loss or damage that you have sustained as a result of the damage, and
(7) state the remedy you want and why you want it.

Your particulars of claim must also state that you have sent a letter before claim in accordance with Annex A of the PD - Pre-Action Conduct and that you want the action to proceed in the IPEC small claims track.

At the end of the numbered paragraphs you should write what is known as "the prayer".  That is the relief that you seek and it begins with the words "AND the Claimant claims" followed by an injunction, deliver up of infringing items, damages, interest and costs.

At the very end of the particulars you should fill in a statement of truth which states that you believe that the facts stated in the particulars of claim are true. If you are representing a company or other entity you should also state that you are duly authorized to sign the statement on behalf of the claimant. Make sure that everything in the statement is true to the best of your knowledge and belief.   If it is not you could be in contempt of court and punished with a fine or even prison.

There is also a statement of truth on the claim form. You must fill in that and sign  it too.

Issuing the Claim
Take or post your claim form and particulars of claim together with a copy for each defendant to the public counter of the Intellectual Property Enterprise Court at

The Rolls Building,
7 Rolls Building,
Fetter Lane,
London,
EC4A 1NL

You should then pay the appropriate fee which will depend on the amount of damages you are seeking and be sure to obtain a response pack for each defendant.   

Serving the Claim

It is your responsibility and not the court's to serve  each defendant with a copy of the claim form, particulars of claim and the response pack. Until you do that the proceedings cannot start and any judgment or order you get will be a nullity.   The safest course is to arrange for a process server to serve process on each defendant personally but process servers do cost money which you will not be able to recover from the other side if you win. Most claimants serve process by post or one of the other methods provided by CPR 6.3.

What Next?

If you have sent the other side a response pack they must acknowledge service and then file a defence with the court and send a copy to you. How long they get to file and serve their defence will depend on whether you have sent them a letter before claim that complies with Annex A of PD - Pre-Action Conduct. If you have they must reply in 42 days. If not they get 70 days. 

Often this is the point at which the defendant or his or her solicitor or other representative realizes that you are serious and will pick up the phone or write to you. if he or she spots a problem with your case your opponent will point it out to you in which case you have to decide whether to stop and maybe start again or proceed regardless. It is also possible that the defendant may propose terms of settlement or at least negotiations.

Counterclaim

It is also possible for the defendant to counterclaim against you. He or she may think your trade mark is invalid or should be revoked in which case he or she will seek a declaration of invalidity or the revocation of your mark. He or may think you have made an actionable threat. But the defendant's counterclaim can arise over anything and be quite unconnected with IP.  The defendant will make his or her counterclaim in a document called defence and counterclaim.  If the other side does counterclaim his or her counterclaim will be treated in the same way as your claim against him or her. You will have to respond to it which is usually done in a document called a reply and defence to counterclaim. Things tend to get a bit complicated when there is a counterclaim and it is at that point that you should reconsider your previous decision not to seek legal advice.

Judgment in Default

If the defendant does not acknowledge service or file and serve a defence within the specified time you can apply to the court for judgment in default. But be careful. Everything depends on your serving each defendant with a copy of the claim form, particulars of claim and response pack.  If you slip up on any of those points any judgment that you get may be set aside without more ado however much you time and money you have spent to get this far.

Similarly, if you do not file a reply and defence to counterclaim in time and in the correct manner the other side can get a default judgment on the counterclaim against you.

Case Management

If the other side acknowledges service and files and serves a defence or a defence and counterclaim a district judge will read and consider your particulars of claim. their defence or defence and counterclaim and any reply or reply and defence to counterclaim from you.   

If the case is straightforward and the other side agrees to the case proceeding in the small claims track the district judge will give directions for the trial of your claim and any counterclaim without a hearing. These directions will be standard directions in accordance with Appendix B to the Small Claims Practice Direction or one or more special directions in accordance with Appendix C .

Preliminary Hearing

If the district judge is minded to: 

• give special directions and wishes to make sure that all parties know what they have to do, 
• strike out a claim or defence on the ground that it fails to disclose a cause of action or defence or 
• give judgment on the ground that there is no real prospect of success 

he or she may order a preliminary hearing. This could take place in the judge#s room in the Royal Courts of Justice or in one of the court rooms.

Preparation for Trial

Make sure that you comply with all the district judge's directions within the time limits specified in his or her order. If you have any doubt as to what you have to do you should seek legal advice.

The Trial

This could take place in the district judge's room at the Royal Courts of Justice or in any of the court rooms. If both parties are legally represented the trial will take place like any other with an opening by the claimant's advocate, the calling of witnesses and their cross-examination and closing speeches from each side. The judge may deliver judgment extemporarily or reserve judgment. The judge has power to depart from the strict rules of evidence and proceed informally if one or more of the parties is unrepresented.

Appeal

Appeals from a final decision lie to the Court of Appeal and appeals from an interim decision to the Enterprise Judge who is presently Judge Hacon.  Permission must be sought from the judge who made the order or from the appeal court.

Further Information

If you want to discuss this article or small claims track proceedings in IPEC generally feel free to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through Facebook, G+, Linkedin, twitter or Xing.

Introduction to Trade Marks

Trade marks everywhere! But how to get one?    Photo Wikipedia

Jane Lambert

In "What is IP? Why do Folk want it? How do they get it? How to learn more?"  20 Aug 2013 I explained that

• IP (intellectual property) is the umbrella term for the bundle of laws that protect investment in intellectual assets,
• intellectual assets are things such as brands, design and technology that give one business a competitive advantage over other, 
• some IP rights ("IPR") such as copyrights and related rights and the right to bring a claim for passing off arise automatically while others such as registered trade marks have to be applied for.

Here I discuss trade marks, whether it is necessary to register a trade mark, where to register a trade mark, legislation, whether you need professional representation, costs, enforcement, revocation and invalidation and make some suggestions for further reading.

What is a Trade Mark?

The definition in s 1 (1) of the Trade Marks Act 1994 is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

Gobbledegook! 

Even for lawyers. 

Last Friday the highest court in England and Wales handed down judgment in two appeals on what constitutes a "sign" and what is meant by "capable of being represented graphically". One of them concerned chocolate so I analysed it for my patent attorney and specialist clients in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct NIPC Law.

Basically a "sign" can be more or less anything that can be seen or sensed and the Trade Marks Act 1994  gives a few examples: "words (including personal names), designs, letters, numerals or the shape of goods or their packaging."  

The words "capable of being represented graphically" mean that it must be possible to describe the trade mark in words, numbers or some other way. The case I mentioned discussed that point.

"Undertaking" is a high faluting Eurocrat term for a business or enterprise. Not necessarily to do with funerals though undertakers do have trade marks just like any other business. Last year I advised in a trade mark dispute between two firms of funeral directors.

The words "capable of distinguishing goods or services" are important. The sign must identify the goods or services of a business.  It can't do that if the mark is or could be used by everybody in the trade.   For example, "Bread" won't do for a bakery because all bakers bake bread but maybe the image of a loaf coupled with the baker's name might. Unless of course the baker is called Mr. Baker.  Also, a trade mark can't exist in a vacuum.  It must relate to the goods and services of a business.

So in everyday language a trade mark means any name, logo or other sign that can be described in writing which identifies a business's goods or services in the market place.

Registration

Trade marks may be registered or unregistered.

If a mark is registered the owner of the registered mark has the exclusive right to use the mark for the goods or services for which it is registered. "Use" for that purpose includes placing the mark on goods or their packaging and advertising, importing or exporting goods or services under the mark.

A mark that is unregistered may still be protected in the United Kingdom by the law of passing off.  That is a judge made law that forbids traders from leading the public to believe that their goods or services as those of another trader by, for example, using the same or similar trade mark or style of packaging.  In many other legal systems there is a similar doctrine known as the law of "unfair competition".

Why bother to register a Trade Mark if it can be protected by the Law of Passing off?

There are two important advantages of registration.

The first is that it is a lot cheaper and easier to prove trade mark infringement than passing off.  In an action  for passing off a claimant has to prove that his or her trade mark is recognized in the market place which is usually done by producing sales figures, advertising and marketing expenditure and samples of advertising which can be expensive and time consuming to assemble.  Then he or she has to show that the defendant has misled or mislead the public by the use of the same or similar trade mark or in some other way. If the defendant disputes that the public has been misled the claimant may have to call witnesses who have been misled or even commission market surveys.  Finally, the claimant has to show that he or she has suffered loss or damage as a result of the defendant's activity such as loss of sales.  In an action for trade mark infringement the claimant has only to point to his or her registration and produce evidence of the defendant's use of the same or similar mark.

The second important advantage of registration is that the exclusive right is backdated to his or her application. The owner of a registered mark who is known as "the registered proprietor" does not have to prove that he or she has started to use the mark in the first 5 years after that application whereas in an action for passing off the owner does for he or she cannot otherwise prove that he or she is known in the market.

Registration of a trade mark does not affect the right to bring a claim for passing off.  The two rights are different though there is a lot of overlap. There are circumstances where it is possible for a claim for passing off to succeed and a claim for trade mark infringement to fail and vice versa.   Often a claim for trade mark infringement and passing off are brought in the same action.

Where to register a Trade Mark

If you want a trade mark for the UK alone you should apply to the Intellectual Property Office ("IPO") in Newport.

If you want to register a mark for the whole European Union including the UK you should apply to OHIM (Office of Harmonization in the Internal Market (Trade Marks and Designs)) in Alicante.

If you need a trade mark for any other country you should apply to the intellectual property office for the country or group of countries concerned.  The World Intellectual Property Organization (the UN agency for intellectual property) publishes a directory of intellectual property offices.  If you want to apply for trade marks in several countries at the same time the British government is party to an international agreement known as the Madrid Protocol that allows you to do so.

Applicable Laws

The basic legislation for the UK is the Trade Marks Act 1994 which has been amended several times.  The IPO publishes a useful unofficial consolidation of the latest version of the Act.  The Act is implemented by The Trade Mark Rules 2008.

In order to create a level playing field for businesses throughout the EU the national governments and European Parliament have adopted Directive 2008/95/EC known as the Trade Marks Directive which requires all national trade mark laws to be substantially the same.  Our Act and Rules have to comply with that directive.

Trade marks granted by OHIM are known as Community trade marks ("CTMs") and the legislation providing for CTMs is called the Community trade mark or CTM regulation (Regulation (EC) 207/2009). The basic provisions of the CTM regulation are very similar to the Trade Marks Directive.

Professional Representation

It is not compulsory to instruct a professional representative to apply for a trade mark and many business people have registered trade marks without any difficulty.  Applications in the UK and many other countries can be made on-line and the IPO, OHIM, WIPO and national intellectual property offices provides lots of useful information.

However, I would nevertheless strongly advise business owners and managers to consider seeking professional advice.   Their priority is to launch or manage their businesses and the time they spend on looking up the law, making searches and drafting and filing an application has to be taken into account. Trade mark attorneys have spent many years studying and practising trade mark law and know it inside out. They can make searches, form judgments as to what signs will or will not be accepted for registration and draft specifications and file them in a fraction of the time that it would take most businessmen or women to do the same and attirneys are much more likely to be right first time. They are also regulated by the Intellectual Property Regulation Board ("IPReg") and are insured against professional negligence.   The few hundred pounds that a trade mark attorney would charge for such work is likely to be money well spent.

The professional body for trade mark attorneys (who are also called "trade mark agents") is The Institute of Trade Mark Attorneys ("ITMA").  ITMA has a searchable database of trade mark attorneys with their websites and contact details.  Also, we have worked with many trade mark agents throughout the UK over many years and if you want a recommendation our clerks will gladly give you 2 or 3 names of firms who have done a good job in the past.  Call them on 020 7404 5252 during normal office hours or use their contact form.

How much will it cost?

If you make your own application on-line for a range of goods or services in the same class in the UK the IPO will charge you £170.

Goods and services are grouped in classes according to a treaty known as the Nice Agreement. If you want to register your mark for goods and services in more than one class the IPO will charge you £50 for each additional class.

To those basic filing fees you must add attorneys' or other professionals' fees or your own time for carrying out searches, drafting specifications and filing the application.   It is worth shopping around but it should be possible to find an attorney who is prepared to do all those things including on-line filing for around £500 plus VAT.

If the IPO or a third party objects to, or opposes, your application you may have to argue your case before an official known as "a hearing officer". An unsuccessful party made be ordered to pay some costs to the successful party but these are usually a fraction of the amount the successful party will have incurred in presenting a case to the hearing officer.  These costs could amount to several or even tens of thousands of pounds depending on the nature of the case and the representation. There is also the possibility of an appeal to the court or an independent lawyer known as "the Appointed Person."

If your application is successful and you are granted a trade mark you may have to sue infringers in the Chancery Division or a county court which could cost you tens or even hundreds of thousands of pounds. Unless you have, or your business has, plenty of resources you should consider taking out insurance against the cost of suing third parties and indeed the cost of third parties suing you for revocation or invalidation of your mark.

There are of course different costs for searches of, applications to, and proceedings in OHIM and foreign intellectual property offices. Information about those costs can be obtained from their websites or from your trade mark attorney.

Enforcement

You must sue for infringement of a British or Community trade mark in the High Court or in a county court that is attached to a chancery district registry.  As there are no chancery district registries in South East England your nearest court is the High Court of Justice in London.

If you claim is relatively straightforward, you seek damages limited to £500,000 and the case can be disposed of at a trial lasting no more than 2 days you can bring your claim in the Intellectual Property Enterprise Court ("IPEC").  On 1 Oct 2013 IPEC replaced a specialist jurisdiction of the Central London County Court known as the Patents County Court and has inherited most of its rules and practice.   If you sue in IPEC you will usually be allowed to recover more than £50,000 in costs from the other side if you win but, by the same token, they cannot recover more than £50,000 from you.

The IPEC also has a small claims track for injunctions and claims for up to £10,000 where recoverable costs (and the risk of adverse costs) are limited to a few hundred pounds.  I have written a lot of articles and given a presentation on the small claims track which are listed in "Patents County Court - the New Small Claims Track Rules" 20 Sep 2012 NIPC Law.  I shall also give a talk on the small claims track to ITMA over the internet on 12 Nov 2013 between 12:00 and 13:00.

If your claim falls outside IPEC's jurisdiction you have to sue in the Chancery Division.  There your liability for costs and that of the other side is unlimited.

As trade mark law is not straightforward be use to instruct litigators and counsel with expertise in IP law.   Though there are plenty of other good law firms with knowledge and experience of IP you are assured of such expertise if you instruct solicitors who are members of the Intellectual Property Lawyers Association. There are also a number of patent and trade mark attorneys who are accredited to conduct litigation in the High Court.

Similarly, if you instruct counsel or a solicitor or a patent or trade mark attorney advocate make sure that he or she has the necessary expertise.  Most barristers specializing in IP law are members of the Intellectual Property Bar Association.

If you try to enforce your rights without a specialist lawyer you could find yourself in serious trouble. For instance, s.21 of the Trade Marks Act 1994 provides a right of action against persons who threaten others with trade mark infringement proceedings without justification. Anybody making such threats can be sued for declarations, injunctions, damages and costs which can amount to many thousands of pounds.

Revocation and Invalidation

You should be aware that your trade mark can be taken away from you after it has been granted for a number of reasons.  For example, it may be revoked if you never use it or suspend your use for up to 5 years for no good reason. You could also lose it if becomes the common name in the trade for a product or service for which it is registered.  It may be that a judge or the IPO decides that you should never have been granted the trade mark in the first place in which case the court or IPO will invalidate your registration.

Applications for revocation or invalidation of a registered trade mark may be made to the IPO or court. You should not be surprised if a defendant to an infringement action counterclaims against you for revocation or invalidation of your registration.

"Trade Marks" or "Trademarks"

"Trademark" is the American spelling and "trade mark" is the spelling used in the UK, EU and much of the Commonwealth.  However, nobody in the UK will complain too much if you use the US spelling here.

Further Information

I gave a presentation on the law of branding which covered trade mark law and passing off on 25 Sept 2013. You can download myt slides and notes which provide links and make suggestions for further reading from Slideshare.

This article plus my presentation will be a foundation for further talks and articles on different aspects of trade mark law.

If you have any questions about this article or trade mark law generally, call me on 020 7404 5252 during office hours or use my contact form.