Our IP Christmas Wish List This Year... 

With the Christmas adverts taking over our TVs and the office parties well underway, there’s no escaping that the festive season is upon us. Now that we’ve met Buster the Boxer and sourced those all important Christmas Jumpers, the IP team here at Burness Paull has been busy writing their own Christmas wish lists. So, as we put out our mince pies for Santa and carrots for Rudolph, here’s what our team would like to find in their stockings....

Top of Neeraj Thomas’ list was .........an IPEC style expenses cap

When considering whether to enforce IP rights being infringed across the UK, a big plus for clients is the limited exposure to an adverse costs award available in IPEC cases. IPEC orders for costs must be proportionate to the nature of the dispute and the amount which a winning party can recover is subject to a cap of £50,000.

The introduction of such a cap (although not necessarily at the same level) in the IP Court in Scotland would most probably have the effect of encouraging certain rights holders to enforce their rights north of the border. Whilst we always advise our clients of the downside of losing a court action, few seriously expect to be faced with losing and paying out as much as £50,000 to a party we have advised is infringing their rights! That’s likely to be about as welcome as a lump of coal in their stocking.

David Scott’s request to Santa was...abolishing the new £100,000 privative jurisdiction of the Sheriff Court

One of the most significant changes introduced by The Court Reform (Scotland) Act 2014 was the increase of the privative jurisdiction of the Sheriff Court to £100,000. This means that certain damages claims for less than £100,000 cannot be taken to the IP Court. In theory therefore, copyright and passing off claims for up to the value of that sum must now be taken to the Sheriff Court. This can be avoided if the claim is not for a specified amount of damages but for an account of profits (even if those profits are considerably less than £100,000).

Not unlike a stretched Father Christmas on Christmas Eve, the aim of this reform was to ease pressures in the overworked Court of Session to ensure that the court has sufficient judicial resources to deal with the most complex and novel cases. There are certainly benefits to the rule change as the IP Court now has better availability to consider the bigger and more important cases. However, the value of a copyright or passing off claim ought not to be the determinative factor as to what court the dispute is heard. This rule doesn’t affect actions concerning registered IP and any actions for interdict which can still be taken into the IP Court, no matter what the value.

Rebecca Ablett is hoping for...the addition of Confidential Information and Trade Secrets to the remit of the IP court

Whilst many IP practitioners would consider confidential information and trade secrets disputes as falling within the IP sack, under the current Court of Session IP Court rules, proceedings relating to confidential information or trade secrets are not included.

Given the ever increasing number of actions being raised in respect of confidential information and trade secret disputes, it is clear that the issue of IP scope is one which should be addressed by the court. If both were included in the remit of the IP procedure, this would ensure that such actions would be held in front of specialised IP judges who have appropriate expertise.

However, often an action seeking to protect confidential information or trade secrets will include a copyright claim, and as such we can get it into the IP Court under the current system.

Megan Briggs is dreaming of...introduction of a disclosure of documents procedure

In Scotland, we do not have a direct equivalent to the discovery process in England.

Although the Scottish courts have certain powers to grant a document recovery process, these powers have been exercised very cautiously.

Despite the fact that the English document discovery process can be a costly and burdensome process, the introduction of a similar process in Scotland would provide parties with a better understanding of the other side’s claim. Knowing the strengths and weaknesses of their respective claims could ultimately lead to an increased chance of settlement without further recourse to the court.

We think in certain cases if wider document disclosure process could be ordered that would serve the interests of justice.

Colin Hulme’s Christmas wish is for...increased recovery of expenses

The general rule of expenses following success applies equally in Scotland, with typical recovery of around 50% of actual legal spend.

The issues surrounding recovery rate have not gone unrecognised – the Taylor Review was commissioned in 2011 following recommendations by the then Lord Justice Clerk, Lord Gill, in his report of the Review of the Scottish Civil Courts.

The review was published in 2014 and provides wide ranging recommendations including that a realistic recovery level should be around 80%. We think this would be more in line with the ethos of the Enforcement Directive which suggests that the level of recoverable court expenses should reflect a “significant and appropriate part of the reasonable costs actually incurred”. This would significantly reduce the barrier currently facing parties when pursuing or defending litigation in court and would encourage parties to seek protection of their IP rights from the court.

If only Christmas expenses could be recovered this way...

With the Christmas adverts taking over our TVs and the office parties well underway, there’s no escaping that the festive season is upon us. Now that we’ve met Buster the Boxer and sourced those all important Christmas Jumpers, the IP team here at Burness Paull has been busy writing their own Christmas wish lists. So, as we put out our mince pies for Santa and carrots for Rudolph, here’s what our team would like to find in their stockings....

Top of Neeraj Thomas’ list was .........an IPEC style expenses cap

When considering whether to enforce IP rights being infringed across the UK, a big plus for clients is the limited exposure to an adverse costs award available in IPEC cases. IPEC orders for costs must be proportionate to the nature of the dispute and the amount which a winning party can recover is subject to a cap of £50,000.

The introduction of such a cap (although not necessarily at the same level) in the IP Court in Scotland would most probably have the effect of encouraging certain rights holders to enforce their rights north of the border. Whilst we always advise our clients of the downside of losing a court action, few seriously expect to be faced with losing and paying out as much as £50,000 to a party we have advised is infringing their rights! That’s likely to be about as welcome as a lump of coal in their stocking.

David Scott’s request to Santa was...abolishing the new £100,000 privative jurisdiction of the Sheriff Court

One of the most significant changes introduced by The Court Reform (Scotland) Act 2014 was the increase of the privative jurisdiction of the Sheriff Court to £100,000. This means that certain damages claims for less than £100,000 cannot be taken to the IP Court. In theory therefore, copyright and passing off claims for up to the value of that sum must now be taken to the Sheriff Court. This can be avoided if the claim is not for a specified amount of damages but for an account of profits (even if those profits are considerably less than £100,000).

Not unlike a stretched Father Christmas on Christmas Eve, the aim of this reform was to ease pressures in the overworked Court of Session to ensure that the court has sufficient judicial resources to deal with the most complex and novel cases. There are certainly benefits to the rule change as the IP Court now has better availability to consider the bigger and more important cases. However, the value of a copyright or passing off claim ought not to be the determinative factor as to what court the dispute is heard. This rule doesn’t affect actions concerning registered IP and any actions for interdict which can still be taken into the IP Court, no matter what the value.

Rebecca Ablett is hoping for...the addition of Confidential Information and Trade Secrets to the remit of the IP court

Whilst many IP practitioners would consider confidential information and trade secrets disputes as falling within the IP sack, under the current Court of Session IP Court rules, proceedings relating to confidential information or trade secrets are not included.

Given the ever increasing number of actions being raised in respect of confidential information and trade secret disputes, it is clear that the issue of IP scope is one which should be addressed by the court. If both were included in the remit of the IP procedure, this would ensure that such actions would be held in front of specialised IP judges who have appropriate expertise.

However, often an action seeking to protect confidential information or trade secrets will include a copyright claim, and as such we can get it into the IP Court under the current system.

Megan Briggs is dreaming of...introduction of a disclosure of documents procedure

In Scotland, we do not have a direct equivalent to the discovery process in England.

Although the Scottish courts have certain powers to grant a document recovery process, these powers have been exercised very cautiously.

Despite the fact that the English document discovery process can be a costly and burdensome process, the introduction of a similar process in Scotland would provide parties with a better understanding of the other side’s claim. Knowing the strengths and weaknesses of their respective claims could ultimately lead to an increased chance of settlement without further recourse to the court.

We think in certain cases if wider document disclosure process could be ordered that would serve the interests of justice.

Colin Hulme’s Christmas wish is for...increased recovery of expenses

The general rule of expenses following success applies equally in Scotland, with typical recovery of around 50% of actual legal spend.

The issues surrounding recovery rate have not gone unrecognised – the Taylor Review was commissioned in 2011 following recommendations by the then Lord Justice Clerk, Lord Gill, in his report of the Review of the Scottish Civil Courts.

The review was published in 2014 and provides wide ranging recommendations including that a realistic recovery level should be around 80%. We think this would be more in line with the ethos of the Enforcement Directive which suggests that the level of recoverable court expenses should reflect a “significant and appropriate part of the reasonable costs actually incurred”. This would significantly reduce the barrier currently facing parties when pursuing or defending litigation in court and would encourage parties to seek protection of their IP rights from the court.

If only Christmas expenses could be recovered this way...