Call for evidence outcome

Additional: Inclusion of registered designs within the scope of the small claims track (SCT) of the Intellectual Property Enterprise Court (IPEC).

Updated 1 July 2021

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This publication is available at https://www.gov.uk/government/calls-for-evidence/review-of-the-ip-enforcement-framework-call-for-evidence/additional-inclusion-of-registered-designs-within-the-scope-of-the-small-claims-track-sct-of-the-intellectual-property-enterprise-court-ipec

1. Background

The Intellectual Property Enterprise Court (IPEC) is a specialist court. It provides an alternative to the High Court in England and Wales for intellectual property litigation. IPEC aims to provide a speedier and less costly route than the High Court. It aims to ensure that parties without large financial resources are not deterred from seeking access to justice because of the high cost of litigation. Examples of parties without large financial resources could be SMEs or individuals.

The IPEC has two sets of procedures or “tracks”. They are:

The Small Claims Track (SCT) was introduced into IPEC in 2012. This followed recommendations in both Lord Justice Jackson’s Review of Civil Litigation Costs (2010) and the Hargreaves’ Review, Digital Opportunity: A Review of Intellectual Property and Growth (2011). The SCT deals with cases of a simpler nature with a claim for a lower level of damages.

For a claim to be accepted by the SCT, it must meet certain conditions:

  • It must relate to copyright, UK or EU registered trademarks, passing off, UK or EU unregistered design rights.
  • The amount in dispute must be less than £10,000.
  • The remedy sought must be damages for infringement, an account of profits, delivery up or destruction of infringing items, and/or a final injunction to prevent infringement in the future.

Claims relating to patents, registered designs, plant varieties and semiconductor topographies cannot be heard in the SCT. Claims that exceed £10,000, or which seek remedies other than those listed above also cannot be heard in the SCT. These claims might be suitable for IPEC multi-track. If not, then they must be heard in the Chancery Division of the High Court.

Registered designs were not included when the SCT was established. The reason for this was because it was thought that the cases were more complex. There were also concerns about the potential level of evidence filed in registered design cases, as well as the use of expert witnesses. However, there has been a long-held view by stakeholders that registered designs should now be included in the SCT. The reasons given for this include:

  • That in the current system unregistered and registered design protection for the same product need to be enforced separately.
  • That IP rights holders who cannot afford to enforce a registered design right in the multi-track are excluded from seeking legal redress in a legal dispute.
  • The additional financial burden on rights holders who are currently required to use the multi-track for registered designs.
  • That the registered design system is promoted to designers as being better than relying upon unregistered rights in particular for SMEs, yet once those registered designs are secured, they are excluded from the SCT.

1.1 How can you help us

We are seeking your views to help assess the feasibility of including registered designs in the IPEC small claims track.

We need to understand stakeholder experiences of the Intellectual Property Enterprise Court in relation to registered and unregistered designs. This call for views asks about your experience of enforcing your designs and any issues you have experienced. Please provide as much detail and evidence as you can of your experience. This will help the government understand the issues and will help inform the next steps.

An example of a registered and unregistered design right case in IPEC in the design for a beer glass - Utopia Tableware Ltd v BBP Marketing Ltd: s [2013] EWHC 3483 (IPEC); [2014] ECC 34.

To help us assess the issues and decide on next steps we would like you to answer the following questions. Please provide as much information as possible.

  1. Have you previously used the small claims track to enforce an unregistered design? If so, please provide details of your experience.
  2. Have you been involved in a dispute over a registered design that would have been suitable to be heard in the IPEC small claims track? If so, please provide details of your experience and the approximate damages sought.
  3. Have the costs associated with legal action in IPEC’s multi-track prevented you from enforcing your registered designs? If so, please provide details and costs.
  4. If registered design cases could be heard in the small claims track, would you use this route to enforce your design? Why would you use/not use it?
  5. Do you have any concerns about including registered designs in the small claims track? If so, what are they?
  6. Do you think there would be any impact on the court system in the UK if registered design cases were heard in the IPEC small claims track? If so, what would that be?

Please include any additional comments or examples, if you have them.

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

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