| The UK courts have
acquired a reputation over several centuries for a sense
of fair play and for the quality of their judiciary.
Consequently, many disputes across a range of legal
disciplines are resolved in the UK between parties with
no obvious connection with this country, perhaps because
of an appropriate law and jurisdiction clause or an
arbitration clause.
Infringement of Intellectual Property Rights (IPRs)
is, of course, a tort, so unless a licence (that is,
contract) is involved, the jurisdiction of the UK courts
over disputes concerning IPRs will largely depend on
whether an infringing act is taking place in the UK
in connection with the IPR concerned.
Given that many overseas companies are proprietors of
UK IPRs, either directly or through UK subsidiaries,
the UK courts are well used to presiding over disputes
for overseas companies/parents in this area. For example,
Minnesota Mining, a famous US corporate, has been a
frequent visitor to the UK courts on intellectual property
matters.
As the importance of IPRs is only likely to increase
over the next few decades – as First World economies
look to differentiate themselves from the lower costs
bases of emerging countries by reference to technical
excellence, innovation and branding – it is likely
that the courts in the UK, and indeed other European
jurisdictions, are going to be busier still.
UK court structure
Nicholas Briggs, Putsman
WLC |
Disputes involving IPRs will be listed before a judge
sitting in a specialist court. For patents and designs,
this will be the Patents Court, (which is part of the
High Court), for more complex and/or financially significant
disputes, or the Patents County Court (PCC) for smaller
or simpler cases.
Although the rules of procedure are largely identical,
it is generally true that a quicker and cheaper result
can be obtained before the PCC. Disputes involving the
wider range of IPRs, such as trade marks and copyright,
will be listed before a judge in the Chancery Division
of the High Court, usually before a judge with suitable
experience. Curiously, the PCC does not yet have jurisdiction
over trade mark disputes, although this seems something
of an anomaly. Appeals lie to the Court of Appeal, where
an IPR specialist law lord, Sir Robin Jacob, will sit
on a panel of three and will usually deliver the lead
judgment.
Remedies
Remedies are, of course, of principle interest to the
client, however tempting it may be for lawyers to focus
on the intricacies of infringement of rights and their
validity. Obviously, one follows from the other, but
in the event of success, a proprietor of an IPR can
expect to secure an injunction preventing further infringement,
damages to compensate for loss of profit or an account
of the infringer’s ill-gotten gains, and delivery
up or destruction of infringing material; such destruction,
if carried out by the infringer, to be confirmed on
oath. It is worth noting that although it may be possible
to secure punitive damages in the US, “treble
damages”, over and beyond loss of profits and
other ancillary headings, punitive damages are not recognised
in the UK except in very limited circumstances. Unlike
the position in the US, UK law also allows a victor
to recover the substantial part of his or her costs,
although the precise amount is dependent on the issues
fought and who won or lost on them. A typical amount
would be between 2/3 and 3/4.
Further useful remedies may be granted. For example,
a successful IPR proprietor can obtain disclosure on
affidavit of third parties whom the infringer has supplied
or from whom he has sourced. If trade marks are involved,
a proprietor may also wish to seek an order for assignment
of an offending domain name.
Enforcement
There are well-established rules for enforcement of
UK judgments within the UK, to the extent that there
is contempt of a Court Order. This could mean a prison
sentence, fine or both for directors of companies knowingly
ignoring the consequences of a court ruling.
The position is necessarily more complex when it comes
to enforcing UK judgments against overseas companies.
The Brussels Convention, a treaty to which the majority
of European countries are signatories, allows reciprocal
enforcement of judgments between member states. Importantly,
there is no comparable treaty between the UK and the
US for court judgments, although the New York Convention
does allow for reciprocal enforcement of arbitration
awards, but these rarely concern IPRs. A successful
litigant wishing to enforce a judgment in the US will
need to take advice from local US lawyers in the state
where the defendant US company resides and it is quite
possible that effective enforcement could be a long
and drawn-out affair in such circumstances.
Procedure
Like the US, the UK courts have long adopted an adversarial
approach to the resolution of disputes, with cross-examination
of witnesses and competing submissions to the bench.
Unlike the US, the determiner of the issues raised is
a judge, not a jury and, consequently, IPR disputes
in the UK can be quite “dry”. That is fine
for the technically minded, but it is unlikely to secure
much coverage on LA Law!
UK procedure allows for:
- Disclosure of relevant papers between the parties,
although the scope of this has been curtailed where
validity of patents and designs is concerned, in order
to reduce cost
- Exchange of statement evidence for factual witnesses
- Exchange of expert evidence, which is “opinion”
rather than “fact”, particularly in patent
cases where the court will need to be educated in
the technical field concerned, as at the relevant
dates
- Experiments in patent cases, though with leave of
the court
- Trial, sometimes within a year of issuing proceedings,
or even quicker, but generally not longer than 18
months from issue
- Appeal, although no longer as of right.
There are several points to develop here. A potential
claimant, typically in a patent case, may wish to seek
a Court Order preserving evidence or allowing inspection
of an allegedly infringing process at a defendant’s
premises. Appropriate Orders can be sought in these
areas, provided certain conditions designed to safeguard
the interests of a defendant are met.
One may also wish to secure evidence from other European
countries, and this too is possible – for example,
the saisie contrefaçon in France is a useful
tool.
Cost
It is probably fair to say the UK has a reputation for
quality rather than price. However, this has been recognised
by the judiciary, which has recently introduced a “streamlined
procedure” that may be used to limit some or all
of the procedural steps mentioned earlier.
The extent to which litigants may wish to adopt this,
given that it may restrict their ability to locate evidence
or cross examine witnesses, is obviously a matter for
discussion with their legal advisers. Nevertheless,
it is a welcome recognition that sometimes parties are
happy not to have “Rolls Royce” justice,
but nevertheless would like adjudication. It is worth
noting the court may impose some or all of the streamlined
procedure of its own volition, depending on the case,
so careful analysis is still required to determine whether
or not it may be suitable.
Conclusion
The UK has a mature and sophisticated court system for
the resolution of disputes involving IPRs that is increasingly
offering more flexibility on cost. There is a growing
range of firms of solicitors that have specialist departments
in this area – which used to be the preserve of
a handful of London firms – and this in itself
is testament to the fact that the UK legal profession
thinks IPR can only grow in importance in the 21st century.
For more information, contact:
Nicholas Briggs, Partner,
Head of Intellectual Property Group
Putsman WLC Solicitors
Britannia House
50 Great Charles Street
Birmingham
B3 2LT
Tel: +44 (0) 121 237 3057
E-mail: nicholas.briggs@pwlc.co.uk
Website: www.pwlc.co.uk
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