Call for evidence outcome

Accessibility and effectiveness of judicial processes

Updated 1 July 2021

1. Accessibility and effectiveness of judicial processes

1.1 Experience of the judicial system

We want to hear about your experiences when using the IP framework to protect your IP. We also want to hear about your experiences when defending yourself from an allegation of IP infringement.

There are various routes to enforcing your rights through the UK judicial system. We want to hear about your experiences of using the UK judicial system to enforce your IP rights. We are particularly interested to find out how accessible it is for small businesses and individuals. We want to make sure users have access to the route that is most appropriate for their case. For example, if your case of alleged infringement concerns two IP rights, it is possible that one IP right may fall into the remit of the small claims track. The other may fall into the remit of the Intellectual Property Enterprise Court (IPEC) multi-track.

We are keen to gather evidence from users of the judicial process, in particular small businesses. We want to see if there are any gaps in the accessibility and effectiveness of the judicial process. We also want to identify which parts of the system work well and those that do not work as well.

A well-known British Fashion designer had their trade mark used without their permission. This was by a trader selling fashion clothing. The claimant said the defendant had been deliberately misleading customers into thinking they were buying the claimant’s genuine designer goods rather than the defendant’s goods. This case was taken through the Patent County Court (now IPEC). The case was efficiently handled and the same judge saw the case through. The court ordered a telephone hearing a few days before the trial to address issues which would have otherwise taken up time at the trial. When the timetable was set, equal time was given to the both parties and the trial concluded in a single day. The action was successful. The defendant was found to have engaged in passing off, trade mark infringement and had in some cases infringed the claimant’s copyright.

Please answer the below questions when responding to the Call for Evidence, if you have experience of using the judicial process.

1. Do you have experience of the judicial process? If you do, please provide details of your specific IP case. Please include whether you found the system easy to understand and use.

2. Were you aware of the different routes available to take to pursue the alleged infringement?

3. When your product or creation was being infringed, did you feel there was easy access to the court system? Was there easy access to information on which route would be the most suitable? Please explain what happened in your case.

1.2 Preliminary and out of court solutions available

Some businesses find successful solutions to infringement outside of the court process. These include using alternative dispute resolutions such as mediation and arbitration.

We would like to hear about your experiences of using other methods outside of the court process to resolve allegations of infringement.

A couple started a new business from their home selling protective face coverings designed specifically for cyclists. As the business grew, they applied for a registered trade mark and secured the corresponding domain name.

After the trade mark application was published, a major clothing outlet opposed the application. This was on the grounds that it was similar to one of its own trade marks. This trade mark was already registered for belts and scarves. The couple could not afford to lose the trade mark and the domain name. This would have meant starting again with a new brand, so they proposed mediation. The clothing outlet was advised by its attorney that there could be a costs penalty at the end of the litigation if they rejected the offer of mediation, so they agreed. At the mediation, the clothing outlet agreed to pay the rebranding costs of the new business. This was for commercial reasons.

They were so impressed with the innovative design and quality of the cycle masks, that the settlement agreement also included terms for a distribution licence.

Please answer the below questions when responding to the Call for Evidence, if you have found alternative means to settle disputes outside of court.

1. Have you stopped infringement of your rights without taking the infringer to court?

2. Did you use an alternative dispute resolution (such as mediation or arbitration)? If so, please provide details of which service you used, your experience and the outcome.

3. How did you find out what route to take to enforcement?

4. What was your experience of using the chosen method?

2. Suggested remedies

Members of the working group have provided some ideas for improving access to timely and cost-effective enforcement of IP for rights holders. The ideas suggested are based on the issues identified above. We would like your views on these suggestions as outlined below.

2.1 Improvements to processes at Small Claims Track (SCT) at the Intellectual Property Enterprise Court (IPEC)

Simplified and effective guidance and online forms

It has been suggested that the guidance available may not be easy to understand without seeking legal advice. This may be a deterrent to embarking on action against infringement or defence.

There have also been suggestions that there could be easier ways to submit claims online. These could be similar to the ‘Money Claim Online’ service provided by HM Courts and Tribunals service. The Ministry of Justice is in the process of rolling out an online application process to make it easier to submit claims. The online form submission and case management service (CE file) is currently available for IPEC and Patent Court cases. It is also available at the regional courts that hear SCT cases.

A photographer followed the available guidance and submitted an application via the small claims track, this form was rejected. The applicant was not able to find out the reason it was rejected and could see nothing wrong with the application. They were unable to find out this information through the court and had to seek legal advice before resubmitting the application that was then accepted.

Please answer these questions when responding to the Call for Evidence if you would like to give us your opinion on the current system.

1. Have you used the small claims track? If you have, please describe what happened in your case? Did you find the available guidance easy to understand without the need to seek legal advice?

2. Have you looked into using the small claims track and decided not to use it? If so please provide details of what happened and your reason for not using the service.

3. Would providing examples of cases have helped when considering whether to use the small claims track and your understanding of the process?

4. If you have used the small claims track would you use it again for a future infringement case? Please explain your reasons for your decision not/to use the small claims track again?

5. Have you had experience of using the CE file application service to submit an IP claim? If so, please provide details of your experience, including whether it was submitted to one of the regional courts hearing SCT cases.

2.2 Introduction of a statutory damages regime

Damages refer to the monetary award that can be awarded by the court to the successful claimant in a case. Such an award is intended to put the claimant in the position it would have been in had the infringing act not taken place.

Currently, a right holder (the claimant) is asked to choose between these options:

• An award of damages. This puts the claimant in the position it would have been in without the infringing act by settling losses arising from the infringement.

• An account of profits enjoyed by the defendant as a result of the infringement.

The introduction of statutory damages could be another option. These may help users make an informed choice. They could help understanding of the likely level of potential damages that could be awarded before they initiate court proceedings.

Statutory damages are currently an option in some other countries that have a common law system like the UK. These are countries such as Canada, Israel, Malaysia and Singapore. When this option is chosen the right holder doesn’t usually need to provide details of loss. These damages are usually awarded per work and have a set maximum amount that can be awarded. For example, in Canada, there is a fixed minimum and maximum amount ($500-$20,000) for each work for commercial matters. They are used mainly for copyright infringement cases, but some countries also provide this option for cases of trade mark or design infringement.

S38.1(1) of the Copyright Act (R.S.C., 1985, c. C-42) in Canada provides for a low and high value with respect for all for infringements involved in the proceedings for each work. It also provides for a low and high value for other subject matter, if for commercial purposes.

A copyright owner can choose an award of statutory damages at any time before the final judgement. This is instead of the option of establishing the actual amount of damages suffered.

Please answer these questions when responding for the Call for Evidence if you have had a case that resulted in damages.

1. Have you had a case that resulted in damages being awarded? If You have, please explain on what basis the damages were awarded?

2. Do you think the introduction of a system such as statutory damages would help reduce barriers (if you believe there are any) for pursuing or defending legal action?

3. Do you consider that this could have a negative impact on the system? For example, an increase in false claims?

4. Do you think that there is a way that any negative impact of the implementation of statutory damages could be reduced? For example, the inclusion of an anti abuse clause. We welcome suggestions on what that might look like?

Respond to the Call for Evidence by filling in the response template on the landing page. Email the template to [email protected].