Earlier posts on IPcopy have discussed the Patents County Court of England and Wales and the recently introduced small claims track for certain IP actions.
Now, in Scotland, a new Act of Sederunt before the Court of Session (the supreme civil court of Scotland) has introduced a number of procedural reforms relating to intellectual property disputes in Scotland.
Among the changes are an early compulsory preliminary hearing (two weeks after defences are lodged as opposed to three months under the old procedure), much wider powers for judges to direct procedure and the inclusion of “passing off” as a type of action that can be heard.
Although there are no current plans to introduce a PCC style small claims track, the recent changes to the Rules of the Court of Session appear to be promoting Scotland as a venue for resolving IP disputes.
This is a very positive development. The new rules follow the well-established and successful commercial court rules and have been used informally for the best part of a year, to great effect. This will make the IP Court in the Court of Session an even more attractive forum for swift and cost-effective determination of IP rights.
These are substantive revisals to the rules for dealing with Intellectual Property Disputes in the Court of Session which have in large part stemmed from a keen interest by the designated Scottish IP Judges to improve the IP enforcement regime and thus enhance Scotland as a suitable forum for resolving IP disputes. In short they provide huge scope for the exercise of the flexible discretion of the IP judges and in particular they provide for much earlier judge-led case management and intervention. At the heart of the reforms is the clear wish to provide a flexible, efficient, commercial and more user-friendly IP dispute resolution procedure in Scotland, both for local businesses and those based outside of Scotland which have IP interests here to defend or protect. The new regime could be viewed as a hybrid of the procedures available and adopted for resolution of IP disputes in the High Court and the Patents County Court in London. These rules are flexible enough to cover both complex high-value disputes as well as more run of the mill disputes and all types of parties whatever their status or means.
The new rules came into effect on 19 November and as a regular user of the Court of Session to resolve IP disputes I am my team look forward to seeing the practical benefits that they offer.
What conditions must a company based in England or abroad meet before it can bring an action in Scotland? I presume the infringer (or the IP rights holder) needs to have a place of business in Scotland.
A further question, say a company is registered in England and has a place of business in Scotland (or vice versa) ?
Also, are there any firm views on the relative merits of an action either north or south of the border?
To date, my team’s experience of the new rules has been very positive. We are seeing an increased amount of active case management by the court, at an early stage in proceedings.
In answer to Keith’s queries, jurisdiction is a complex area and has to be considered on a case-by-case basis (a typical lawyer response!). However, generally speaking, in order to bring an infringement action in the Scottish courts, there would need to be some connection to Scotland. Often, the Scottish courts’ jurisdiction to hear a dispute is based on the defender being based in Scotland, but that is not always necessary, provided some of the infringing acts are taking place in Scotland.
As regards validity actions, it is not always necessary for either party to have a connection to Scotland. The Court of Session has jurisdiction to hear validity disputes relating to UK and European trade marks, registered designs and patents, just as the English courts do.
There seems to be an extra delay once serving has occured. The normal response time of 28 days is longer but I cannot find how much longer.