Small IP claims to be heard in the IPEC in Wales from October 2019

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What’s new?

The new Intellectual Property and Enterprise Court (“IPEC”) Guide issued last month confirmed that as of October 2019, IPEC’s district judges will be based in the six regional Business & Property Court centres, to include Cardiff.

In practical terms, this change means that it will become possible for the intellectual property-related claims suitable for allocation to the small claims track to be heard locally, rather than in London’s IPEC.

To make life even more convenient, IPEC’s electronic filing system will also be rolled out to cover filings related to any such claims issued in the regional centres.

Appeals from such claims will also be filed at the regional centre and they may be heard by an appropriate locally-based judge, subject to their availability.

What claims are suitable?

The procedure in IPEC’s small claims track is simplified and suitable for most straightforward intellectual property claims with a low financial value, to include copyright, UK and EU-registered trade marks, passing off and UK and EU-unregistered design rights.

The financial value of the claim allocated to the small claims track in IPEC can be up to £10,000 or less (this figure includes the amount in dispute and not costs), unless otherwise ordered by the court.

However, this track cannot be used for claims relating to patents, plant varieties and UK and EU-registered designs.

Parties’ potential liability for the legal costs is very limited since the general principle pursuant to which an unsuccessful party pays the proportion of the legal costs of a successful party is not applicable in IPEC small claims track claims, where majority of the costs are fixed.

In the IPEC small claims track there are only very limited circumstances in which the court will order one party to contribute to the costs of another.

Whether IPEC’s small claims track is suitable for a particular claim also depends on the type of remedy sought – for example, damages for infringement, an account of profits, delivery up or destruction of infringing items, or a final injunction preventing the future infringement are available in the small claims track. However, any interim remedies need to be sought via the multi-track instead.

Geldards’ Comment

This change is another welcome step in improving access to justice in commercial matters by bringing the courts and the judges closer to home. The door is now well and truly open for the parties to be able to have their IP disputes heard locally by the specialist judges – an opportunity that many businesses and legal professionals have been hoping to have for a long time.

The improved regional accessibility of IPEC’s small claims track is also expected to encourage many local businesses and entrepreneurs, in particular small to medium sized ones, to enforce their intellectual property rights, as the costs of doing so and the time involved will be significantly reduced.

We will continue to monitor the practical aspects of this change and provide you with further updates.

For any IP-related queries, please do not hesitate to contact our dedicated IP litigation team.

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