• Rosie Burbidge

When should a case be transferred to the IPEC?



The question of whether a trade mark infringement case should be transferred from or to the IP Enterprise Court (IPEC) remains a key question.

This case concerned a transfer from the High Court (Shorter Trials Scheme) to the IPEC (Lappet Manufacturing Company Ltd & Anor v Rassam & Ors).


The case concerns the alleged infringement of three trade marks for yashmaghs (head shawls). The claimants, Lappet and another company, brought the action in the High Court‘s new Shorter Trials Scheme.

The defendants: London Textile and two associated individuals, sought either a declaration rejecting the High Court’s jurisdiction over the case or to have it transferred.


The defendants are also seeking to revoke the trade marks at the UK IPO on the basis of non-use. This invalidity action is likely to be transferred to be dealt with alongside the infringement claim.


Jurisdiction

London Textile argued that the claim form did not state that the claim had a value of over £100,000, and the case therefore belonged in the County Court or IPEC.


But Adam Johnson J said that “the requirement positively to state in the Claim Form that the claim has a value of over £100,000 does apply only where the claim is a claim for money, and the parties are agreed that the present case is not a claim for money.”


When it comes to non-money claims, said the judge, the question of where the claim may be started in the High Court is “more nuanced” and requires a “more evaluative assessment.


In this case, the judge said the claim was properly issued in the High Court, despite the absence of a statement that the claim value exceeded £100,000.


Transfer

In seeking to transfer the case to the IPEC, London Textile argued that it was a low-value claim and likely to be straightforward. But Lappet said that the damages or lost profits might turn out to be substantial and there was potential for complexity.


The judge decided to dismiss the transfer application. While the value of the trade marks was unclear, the judge said the fact that London Textile was seeking to revoke them suggested they had some value. On complexity, things were fairly well balanced.


The determinative factor in refusing a stay was the parties’ resources. The judge concluded that the second and third defendants were individuals of at least reasonable financial means and could collectively afford the costs:


I am not persuaded that the Defendants can only afford to bring or defend the claim in the IPEC, or that they will be denied justice if the case proceeds in the High Court, Shorter Trials Scheme.

Analysis

In many IP cases, we are fortunate to have several options, including the Shorter Trials Scheme and the IPEC, to hear disputes. Not surprisingly, claimants and defendants are often at odds over the potential value/importance of a case and where it should be heard.


This judgment provides clarity about the interpretation of the £100,000 threshold in the High Court and also suggests that anyone seeking to challenge jurisdiction and/or seek a transfer needs to present good arguments, supported by evidence.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com


#IPEC #courts #HighCourt #jurisdiction #transfer



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