A couple of weeks ago we wrote an article about bringing intellectual property (IP) actions in front of the Intellectual Property Enterprise Court (IPEC). Like the High Court in England and Wales, the IPEC can handle a range of IP disputes. As a result of its streamlined process however the IPEC provides a less expensive option for parties who feel the need to go to court.

For cases with a Scottish angle however there is another option, namely to bring a claim before the Court of Session in Edinburgh. This post provides an overview of Scottish IP disputes and the similarities and differences with the High Court and IPEC in England and Wales.

IPcopy is grateful to have received input from Susan Snedden at Maclay Murray & Spens LLP in the preparation of this post. Any insights may be attributed to Susan while IPcopy claims ownership of any errors that the reader may find!

The Court of Session has exclusive jurisdiction over most IP disputes (the Sheriff Court also has jurisdiction over some passing off disputes and a very limited number of trade mark and copyright cases).  In practice, almost all IP disputes are heard in the Court of Session.

As a Designated Court in patent, design and trade mark legislation, the Court of Session is on the same footing as the High Court and IPEC.  Actions start within the Outer House of the Court of Session with appeals progressing to the Inner House and eventually to the Supreme Court of the UK.

Court Structure in Scotland

As far as IP infringement actions in the Court of Session are concerned, some connection with Scotland is required, e.g. the defender needs to be based in Scotland, harm must have been suffered in Scotland or some infringing acts need to have occurred in Scotland.

If the defender is based in Scotland, suing the defender in Scotland maximises the range of remedies that can be granted by the court.

In contrast, if a defender based in Scotland is sued in England, the injunction will only take effect in England.  This was illustrated by the recent celebrity injunction case, in which a Scottish newspaper’s print edition has already named the parties in question.

As far as revocation actions are concerned, however, there does not need to be any connection with Scotland.

There are a number of potential advantages to litigating in Scotland.  The Court of Session has designated IP judges, and specific IP court rules which allow for flexible and efficient case management.

Interim interdicts (interim injunctions) are generally more readily available than in England and Wales and can be granted without notice to the alleged infringer.

Companies are recommended to put in place caveats in the Court of Session and relevant sheriff courts, so they receive advance notice of any applications for interim interdict made against them and avoid orders being granted without notice.

In addition, cases brought in the Scottish courts tend to receive less publicity than those brought in England, which can be an advantage in some situations.

(¹) A preliminary hearing will be held fairly early (2 weeks after defences filed), during which the issues may be whittled down. Cases can proceed fairly differently depending on if the case is complex or simple.

Mark Richardson 21 April 2016