The IPKat has received a request from a damsel in distress who wants to bring a claim for unregistered design right infringement and passing off. Her questions are simple, but the answers are somewhat elusive: (i) is it possible to bring a passing off or unregistered design claim before an English small claims court and (ii) if so, how on earth does one get started? If you know the answer, please let the IPKat know by email, which will be forwarded to our anxious damsel. Alternatively, just post your comment below.
DOES ANYBODY KNOW?
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Friday, July 23, 2004
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I haven't looked into this in detail but I suspect that the answer may lie in either (or both) the availability of injunctive relief in the small claims track (no longer, I think, the small claims court) and the judge's discretion to assign a case to a particular track. A county court judge would also recognise that the case was properly one for the Patents County Court under CPR Part 63: all Patents Court and Patent County Court business is multi-track, so there's no small claims jurisdiction once you get into the PCC. I did advise a client who began as a litigant in person and issued proceedings for infringement of UDR in the Barnet County Court, and we concluded that the court should not have let him do so!
ReplyDeleteThanks for your comment, Peter -- helpful and informative as ever. Does anyone else out there have similar, or conflicting, experiences?
ReplyDeleteAllocation (rule 63.13 CPR) states "Any of the following claims must be brought in the Chancery Division, a Patents County Court or a county court where there is also a Chancery district registry (Birmingham, Bristol, Cardiff, Leeds, Liverpool, manchester, Newcastle) -
ReplyDelete(4) design right
(5) Community design right
(13) passing off
as per your previous 'poster' all IP claims are allocated to the mutli-track and so the small claims track would appear to be barred
There is now no strict bar on passing off or design right cases being allocated to the small claims track (unlike with patent or registered design cases). However, judges do not generally regard ip cases as suitable for the small claims track due to the perceived complexities of their subject matter. Consequently,when deciding which track to adopt as required by Part 26 CPR, they are very unlikely to choose the small claims track.
ReplyDeleteThe problem mentioned by a previous poster regarding injunctions is illusory: once a case has been allocated to the small claims track, a district judge has jurisdiction and can grant any injunction needed - see Practice direction 2B CPR paras 8.1 and 11.1.
There is only one procedure for starting off passing off or design right claims: issue a Part 7 Claim Form in the Chancery Division, the Patents County Court or a county court where there is a Chancery District registry - see Para. 18.1 PD63 CPR.