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

2. 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

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

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

5. 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)

6. 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

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

8. 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

9. 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

10. Issuing a claim

11. Procedure
CPR 63 (IP) and PD 63 apply to the extent only as set out in CPR –in particular CPR (allocation) and (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

12. Tip #2 – Follow the right Guidance
Guide to the IPEC Small Claims Track (July 2014) is available on
…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.

13. 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

14. 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

15. 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.

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

17. Case Management

18. 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

19. 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.

20. The final hearing
Note CPR 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

21. 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.

22. 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

23. 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

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