Introduction to the IPEC small claims track District Judge Melissa Clarke Competition Law Association meeting 18 May 2015

Who we are The only small claims track in the High Court A fast, cheap, accessible forum to hear certain IP claims with a value of £10,000 or less which will take no more than a day at trial Three District Judges with two deputies

What we can hear Copyright of any type UK and Community registered trade marks Passing off UK and Community unregistered design rights Confidential information

What we can’t hear Patents Registered designs Semiconductor topography Plant varieties

What we actually hear Across PCC and IPEC small claims track since October 2012: 80-85% copyright 13-15% trade mark and passing off 1-2% other (unregistered design and confidential information)

Our levels of work Issued claims rising from About 35/40% go to final hearing About 3 DJ days/month currently listed for applications and final hearings

What we might hear in future UK and Community registered designs?

Available remedies Any remedy that could be obtained in IPEC multi-track EXCEPT Interim and pre-action remedies Interim injunctions Orders for pre-action disclosure Freezing orders Search and seizure orders

Tip #1 – don’t discount IPEC small claims for larger claimants Can be used as a cheap, fast route to achieve a practical result in appropriate cases where: the claimant is more concerned with obtaining injunctive relief to prevent future infringement than in seeking high-value damages the defendant is unlikely to satisfy a damages award but the claimant would like delivery up/destruction of e.g. counterfeit goods

Issuing a claim

Procedure CPR 63 (IP) and PD 63 apply to the extent only as set out in CPR 63.28 –in particular CPR 63.27 (allocation) and 63.20 (statements of case) CPR 27 (small claims) and PD 27 also apply except re interim remedies CPR 45 (scale costs for IPEC) does not apply

Tip #2 – Follow the right Guidance Guide to the IPEC Small Claims Track (July 2014) is available on www.justice.gov.uk... …but not in the 2015 edition of the White Book… …which has instead decided to print the old guide to the Patents County Court small claims track (abolished October 2013). To be corrected in next supplement.

Tip #3 – Check your court location The IPEC small claims track is split between the Rolls Building, Fetter Lane and the Thomas More Building, RCJ To issue claims and applications and pay fees – Rolls Building To file documents, correspond with DJ clerks, attend hearings and trials – Thomas More

Tip #4 – Clearly mark claim form On issue please write “IPEC SMALL CLAIMS TRACK” on the face of the claim form Not a procedural requirement (needs only to be in Particulars of Claim) BUT Will assist staff in issuing properly and so avoid delay

Service of claim Claimants are responsible for service of claim form (together with Response Pack) and particulars of claim. Time for filing of a defence does not run until both are served. PD Pre-Action Conduct – IF C has complied and IF C states in particulars of claim that it has done so, time for D to file defence reduced from 70 to 42 days from deemed service of PoC.

Tip #5 – File certificate of service No request for default judgment can be granted without it.

Case Management

If undefended Judgment in default provided certificate of service of claim is filed and time for service of defence is past Usually provides for damages and costs to be assessed by the court Hearing or on paper

If defended Generally, no allocation questionnaires unless dispute over use of SCT Generally no CMC/directions hearing Standard form directions sent out from court (standard to the IPEC SCT and not those in PD 27) together with final hearing date in 6-8 weeks time Disclosure, witness evidence tied to issues in the case. No experts without permission (in practice none granted – proceed to IPEC) Parties provided with details of small claims mediation service - telephone based.

The final hearing Note CPR 27.9 - either party may give 7 days notice of intention not to attend final hearing and request court to consider his case on the relevant statement of case and documents. Failure to attend without such notice may result in strike-out

The final hearing CPR 27.9 gives judge basically unfettered ability to run proceedings however she thinks is fair. Evidence not under oath Cross examination only to the extent permitted by the judge Judge may question any witness Formality or otherwise depends on presence of legal representatives, level of understanding of legal concepts by those attending, quality of documentary evidence, etc.

Judgment and costs Judgment usually ex tempore, sometimes reserved. Small claims costs Court fees Witness loss of earnings max £90 each plus travel Solicitors costs where injunction sought - £26O Experts fees limited to £750

Issues encountered by parties Understanding court procedure Serving documents and filing evidence Deemed dates of service Compliance with directions How to seek default judgment How to notify and document settlement/discontinuance of claims VAT – understanding the difference between debt claims and damages

Appeals Appeal from a decision in the IPEC small claims track has moved from Court of Appeal to HHJ Hacon