Quick Guide to the Intellectual Property Enterprise Court

The Intellectual Property Enterprise Court (“IPEC”) is a specialised court dealing exclusively with intellectual property (“IP”) issues such as patents, copyright, designs, confidential information and trademark disputes.

Previously called the Patents County Court, it was reformulated and renamed in 2010 to streamline the procedure and reduce the cost of IP litigation. Its primary aim is to facilitate access to the courts for small and medium sized firms who may have limited financial resources.

The IPEC forms part of the Chancery Division of the High Court and is situated in the Rolls Building on Fetter Lane in London.

Characteristics of the IP Enterprise Court

The IP Enterprise Court does not impose the same rigid procedural requirements required by the High Court. The Court can offer more tailor made solutions to IP disputes rather than adopting a one size fits all model. Each individual case is treated on its own merits in light of the complexity of the facts and the value of the claim.

There are two alternative procedures for making a claim in the IPEC, a multi-track and a small claims track. The small claims track is for claims with a value of up to £10,000. The ability to recover costs on the small claims track is highly restricted. Higher value claims must be issued on the multi-track, which imposes a limit of £500,000 on the damages recoverable. Costs on the multi-track, which must be proportionate to the nature of the dispute, are subject to a cap of £50,000.

Trials in the IPEC are generally limited to no more than two days. This requires extensive case management, with the trial judge taking on a much more active role in the proceedings.  Some forms of evidence, including expert testimony are only permitted if expressly approved by the judge.

Cases at the IPEC can be argued by solicitors or patent attorneys, rather than having to be presented by separate qualified barristers.

Another unique element adopted by the IP Enterprise Court is the ‘preliminary opinion’. This is a non-binding recommendation by the court as to the merits of a particular intellectual property claim. The aim of this procedure is to encourage the amicable settlement of intellectual property disputes where possible.

Comparison of the IP Enterprise Court with the High Court

Bocacina Ltd v Boca Cafes Ltd [2010] was the first judgment of the remodelled IP Enterprise Court. The case illustrates the different approach adopted by IP Enterprise Court compared to the more traditional High Court.

The case itself involved a passing off claim made by restaurant-bar operator, Bocacina, which ran the well-known ‘Bocabar’ and other food establishments called ‘Bocanova ‘ and ‘Bocacina’ in Bristol. The defendants had opened a nearby café called ‘Boca Bistro Café’.

One of the requisite elements of a passing off claim is evidence of confusion in the mind of the customer and the claimants had put forward a number of examples of consumer confusion.

While the High Court would ordinarily allow for cross-examination of each of these individuals to ascertain whether or not there had been ‘confusion’, the IP Enterprise Court suggested that such an approach was disproportionate to the dispute in question and did not order any cross-examination or request any further information from them.

The claimants ultimately succeeded in establishing passing off, but the IPEC held that the claimant would only be entitled to damages or an account for a loss of profits if it could show that the amount of money lost justified a remedy of this nature. Additionally, the claimant was only awarded a proportion of their costs so as to reflect the fact that the defendants had made settlement offers early on in the proceedings. The case amply demonstrates that the IPEC will deviate from High Court practices where it is appropriate to do so.

Conclusion

The IPEC is a particularly favourable forum for small and medium sized businesses facing intellectual property disputes. The Bocacina case is a good example of how the Court is actively engaged in reducing the costs of litigation to facilitate access to efficient dispute resolution.

For specialist advice regarding intellectual property protection, intellectual property disputes, or making or defending a claim in the IP Enterprise Court, contact Leigh Ellis on 020 7353 1770.