NIPC Law

Interior of the Royal Courts of Justice Author Aurelien Guichard Licence Creative Commons Attribution Share Alike 2.0 Generic Source Wikipedi a Jane Lambert Just over 6 years ago the Patents County Court Small Claims Track was launched (see my article Soon there will be a Remedy if Someone steals your Idea   19 Sept 2012 NIPC Inventors Club). I was very enthusiastic about the new court and wrote a lot about it as you can see from the bibliography in Small IP Claims   31 Jan 2017 NIPC News).  The reason for my enthusiasm was that it seemed to make IP litigation affordable for thousands of start-ups and other small businesses that felt that the law provided no effective protection for their investments in branding, design, technology and creativity  because enforcement  of their rights was too expensive and too uncertain.  Before the Civil Procedure Rules came into force in 1999 claims often began with an application for inter...

As I mentioned in "Intellectual Property Litigation - the Funding Options"  10 April 2013, it was possible until the 31 March 2013 for a litigant to enter an agreement with his or her solicitors and counsel known as a  conditional fee agreement ( "CFA" ) whereby the lawyers would look to the other side for payment not only of their assessed costs but also of an uplift known as a success fee and the premium for insurance against their own and the other side's costs in case of failure known as  after-the-event ( "ATE" ) insurance if they won the case or obtained a satisfactory settlement. As I also mentioned in that article, it is still possible to enter a CFA but any success fee and ATE insurance premium must now be paid by the successful party - usually out of any damages or accountable profits he or she may receive. On 1 Oct 2010 CPR Parts 63  and 45  and the corresponding Practice Directions were amended for proceedings before the Patents County...

Two actions came before before Mr. Recorder Purvis in  Mainetti (UK) Ltd v Hangerlogic UK Limited [2012] EWPCC 42: a claim by Mainetti (UK) Limited ( "Mainetti" ) that Hangerlogic UK Limited ( "Hangerlogic" ) had infringed its three registered designs for various clothes hangers and a counterclaim by Hangerlogic for the revocation of those design registrations: and a. claim by Hangerlogic for a declaration that a modified range of garment hangers did not infringe Mainetti's registered designs and a counterclaim by Mainetti for infringement.of those registered designs. The recorder found for Mainetti in both sets of proceedings. The Registered Designs Mainetti's design registrations were as follows: Design number 2080944 for a garment hanger registered as of 5 Feb 1999: a 'clip hanger' used to suspend trousers, shorts and skirts from two clips ( "the clip design" ); Design number 2060713 for a garment hanger registered as o...

Following on from my article "Patents County Court - the New Small Claims Track Rules"  of 20 Sept I can now report that the Part 63 Practice Direction has been amended and that we now have a new "Guide to the Patents County Court Small Claims Track." A new paragraph 32 has been added to the Part 63 Practice Direction.   It provides as follows: " Small claims 32.1 This Practice Direction shall apply to a claim allocated to the small claims track in a patents county court to the extent provided by paragraphs 32.2 and 32.3. 32.2 The following paragraphs shall apply – (1) in Section II, 16.1, 17.1, 17.2, 19.1, 20.1, 21.1 to 21.5, 22.1, 23.1, 24.1; (2) in Section IV, 26.1, 26.2; (3) in Section V, 30.1, 31.1. 32.3 No other provision in this Practice Direction shall apply."   The Guide pretty well confirms what I had anticipated in my article of 20 Sept.  However, it contains two titbits of information that were new to me.   The first is that hearings...

I discussed HM Government's proposal to introduce a new small claims track for the Patents County Court from the beginning of October 2012 in "The New Small IP Claims Jurisdiction"  (5 March 2012) and "Small IP Claims"  (Chambers website 8 May 2012). We now have the rules for the new court. Overview Rule 10 of The Civil Procedure (Amendment No.2) Rules 2012 (S! 2012 No 2208) amends Part 63 of the Civil Procedure Rules as follows: "Amendments to the Civil Procedure Rules 1998 10. In Part 63— (a) In the table of contents, after the entry for rule 63.26, insert— 'Allocation to the small claims track ........... Rule 63.27 Extent to which rules in this Part apply to small claims ........... Rule 63.28;' (b) in rule 63.1 (3), for 'Claims', substitute 'Save as provided in rule 63.27, claims'; and (c) after rule 63.26 , insert— 'Allocation to the small claims track 63.27.—(1) A claim started in or transferred to a p...

Massey (Child) v Dinamo Productions Ltd [2012] EWPCC 27 (13 June 2012) was an unusual case in that  the claimant was a minor when the claim began. He claimed £2 million for copyright infringement and appears to have acted for himself throughout the proceedings.  The claimant's complaint was that defendant television production company had appropriated his idea for a children's TV show to be called "The Wordles" which he offered to the BBC in July 2010. The defendant also developed a script for an episode of a children's TV show that was to be called "The Wordles" but that took place in 2009.  There was no direct contact between the parties until just before the claimant brought his action.  Their only point of contact was through a third party called Kavaleer. The defendant applied to strike out the claim on the grounds that  "it is without foundation and there is no real prospect of the case succeeding."  Mr. Recorder Campbell consider...

One the most surprising and in many ways depressing passages of the IPO's publication "From ideas to growth: Helping SMEs get value from their intellectual property" (April 2012) is the statement on page 17 that only 13 mediations have been conducted by the IPO in the past 5 years, and just one in the past year.  Because the usage is so low the IPO is thinking of discontinuing the service altogether unless it can be adapted.   The IPO has requested feedback on perceived awareness levels and how, if the service does continue, the IPO might increase its visibility. The IPO's mediation service is extraordinarily good value.   A full day mediation in Newport facilitated by a CEDR (Centre for Effective Dispute Resolution)  trained mediator with specialist knowledge and experience of intellectual property including accommodation costs £750.  The same mediator will come to the IPO's London premises for just another £250.   So why ...

The most remarkable aspect of Unilever Plc v S C Johnson & Son Inc [2012] EWPCC 19 (25 May 2012) is that this action took place in the Patents County Court rather than the Patents Court or before the Comptroller.  As the Patents County Court Guide notes at paragraph 1.3 "the Patents County Court was established to handle the smaller, shorter, less complex, less important, lower value actions and the procedures applicable in the court are designed particularly for cases of that kind. The court aims to provide cheaper, speedier and more informal procedures to ensure that small and medium sized enterprises, and private individuals, are not deterred from innovation by the potential cost of litigation to safeguard their rights." Judge Birss QC remarked at paragraph [4] of his judgment: "One might ask whether a case between two multinational corporations is suitable for the PCC. Since neither side suggested the matter should be transferred, the question did not arise. I c...

In  Stannard v Reay [1967] RPC 589, and Stacey v 2020 Communications [1991] FSR 49.it had been established that even very modest goodwill can support an action for passing off.  Just how modest such goodwill can be was tested in  Lumos Skincare Ltd v Sweet Squared Ltd and Others [2012] EWPCC 22 (10 May 2012). This was a claim by a skincare distributor which markets a  "pure redesnsifying serum" , a "pure regenerating serum" , a  "deep exfoliating mask"  and a "pure firming serum"  under the brand names "Lumos one" to "four" to beauty salons and through its online shop  against the manufacturer and distributor of a range of nail care products.   As Mr. Recorder Campbell noted at paragraph [35] of his judgment, the women's skincare market is huge. He referred to an undated article in The Times which stated that "sales of women's facial skincare products in Britain are expected to generate about £1 billion this ...

In  Sullivan v Bristol Film Studios Ltd     [2012] EWCA Civ 570 (3 May 2012) the Court of Appeal dismissed an appeal from a strike out of a claim for copyright, moral rights and performers' rights infringement and breach of contract under CPR 3.4 by the Chancery interim applications judge sitting in Bristol. The claim was struck out as an abuse of the process of the court not because it was bound to fail, but because even if it were to succeed the costs of fighting it would be out of all proportion to the amount that the claimant was likely to recover. The claim was brought by a hip hop artist who had contracted with the defendant film company to make a video. The film was to have been a joint venture.  The claimant, Tony Sullivan (also known as Rudey Soloman ( "Mr. Soloman" ), made the soundtrack and appeared in the film.  The film company made the film in return for a share of the sales or other revenues.   After the film had been made, it was up...